Sanofi-Aventis v. Standard Tactics, LLC
Claim Number: FA0607000756892
PARTIES
Complainant is Sanofi-Aventis,
(“Complainant”) represented by Baila H.
Celedonia of Cowan, Liebowitz &
Latman, P.C. Respondent is Standard Tactics, LLC, of 433 Paseo de
Peralta, Santa Fe, NM, 87501.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheapest-ambien.us>,
registered with Wild West Domains, Inc.
PANEL
The undersigned certifies that she has acted independently and
impartially and that to the best of her knowledge she has no known conflict in
serving as Panelist in this proceeding.
Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically July 21, 2006; the Forum received a hard copy of
the Complaint July 24, 2006.
On July 21, 2006, Wild West Domains, Inc. confirmed by e-mail to the
Forum that the <cheapest-ambien.us>
domain name is registered with Wild West Domains, Inc. and that Respondent
is the current registrant of the name. Wild
West Domains, Inc. verified that Respondent is bound by the Wild West Domains,
Inc. registration agreement and thereby has agreed to resolve domain-name
disputes brought by third parties in accordance with the U. S. Department of
Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 26, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of August 15, 2006, by which Respondent could file a Response to the Complaint,
was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules
for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On August 21, 2006, pursuant to Complainant’s request to have the
dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any
rules and principles of law that the Panel deems applicable, without the
benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following allegations in this proceeding:
1. The domain name that Respondent registered, <cheapest-ambien.us>, is confusingly similar to Complainant’s AMBIEN mark.
2.
Respondent has no rights to or legitimate interests in
the <cheapest-ambien.us> domain name.
3.
Respondent registered and used the <cheapest-ambien.us>
domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Sanofi-Aventis, is the third
largest pharmaceutical company in the world.
One of Complainant’s flagship products is Ambien, a drug that is used
for the short-term treatment of insomnia.
In connection with the production, marketing and distribution of Ambien,
Complainant holds a trademark registration for the AMBIEN mark (Reg. No.
1,808,770 issued December 7, 1993) with the United States Patent and Trademark
Office (“USPTO”).
Respondent registered the disputed domain
name December 8, 2003. The disputed
domain name resolves to a website that displays commercial links from which
Respondent presumably receives referral fees.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel
to “decide a complaint on the basis of the statements and documents submitted
in accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 14(a) and 15(a) of the Rules and
will draw such inferences as the Panel considers appropriate pursuant to
Paragraph 14(b) of the Rules. The
Panel is entitled to accept all reasonable allegations and inferences set forth
in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc.
v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(holding that the respondent’s failure to respond allows all reasonable
inferences of fact in the allegations of the complaint to be deemed true); see
also Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to prove each of the
following three elements to obtain an order that a domain name should be
cancelled or transferred:
(1) the domain name registered by the Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant has
rights; and
(2) Respondent has no rights or legitimate interests in respect of the
domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Complainant established with extrinsic proof
in this proceeding that it has legal rights in the AMBIEN mark through
registration with the USPTO. See Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive [or] have acquired secondary meaning.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Complainant asserts that the <cheapest-ambien.us> domain name is confusingly similar to its AMBIEN mark. The Panel finds the disputed domain name to be confusingly similar to Complainant’s mark because it contains the mark in its entirety, adds the generic word “cheapest” and a hyphen, and utilizes the top-level domain “.us”. See Apple Computer Inc. v. Synashko, FA 636423 (Nat. Arb. Forum Mar. 10, 2006) (finding the <appledeals.us> domain name to be confusingly similar to the complainant’s APPLE mark); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name. Complainant alleged that Respondent has no such rights. Pursuant to Policy ¶ 4(a)(ii), Complainant bears the initial burden to make a prima facie case showing that Respondent does not have rights and legitimate interests in the disputed domain name. Once Complainant successfully makes such a showing, the burden shifts to Respondent to affirmatively prove that it does have rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
The Panel finds that Complainant made a prima facie case showing that Respondent lacks rights and legitimate interests through its uncontested assertions in the Complaint.
Moreover, Respondent’s failure to reply to the Complaint raises a presumption that Respondent lacks legitimate rights and interests in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
However, the Panel
evaluates the evidence in the record to determine if Respondent has rights or
legitimate interests in the disputed domain name. Respondent has not
established that is the owner or beneficiary of a trade or service mark that is
identical to either of the disputed domain name pursuant to Policy ¶
4(c)(i). The disputed domain name
resolves to a website that displays commercial links from which Respondent
presumably receives referral fees. The
Panel finds that the use of a domain name that is confusingly similar to the
registered mark of another for the purpose of displaying commercial links is
not a bona fide offering of goods or services pursuant to Policy ¶
4(c)(ii) and it is not a legitimate noncommercial use pursuant to Policy ¶
4(c)(iv). See Tercent
Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the
respondent’s use of the disputed domain name to host a series of hyperlinks and
a banner advertisement was neither a bona fide offering of goods or
services nor a legitimate noncommercial or fair use of the domain name); see
also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that
using a domain name to direct Internet traffic to a website featuring pop-up
advertisements and links to various third-party websites is neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant
presumably receives compensation for each misdirected Internet user).
According to the WHOIS registry, the
registrant of the disputed domain name is “Standard Tactics, LLC” of Santa Fe,
New Mexico. Because no other evidence
in the record suggests otherwise, the Panel finds that Respondent is not
commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”); see also Am. Online, Inc. v.
World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13,
2002) (finding that the respondent was not commonly known by <aolcamera.com>
or <aolcameras.com> because the respondent was doing business as “Sunset
Camera” and “World Photo Video & Imaging Corp.”).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent
registered and used the disputed domain name in bad faith. Due to the confusingly similar nature of the
domain name to Complainant’s mark, it is likely that consumers will become
confused as to Complainant’s affiliation with or sponsorship of the resulting
website. Additionally, because
Respondent has not come forward with evidence to suggest otherwise, it is
reasonable for the Panel to infer that Respondent receives commercial gain as a
result of the operation of the resulting website that offers commercial links
to various third-party websites.
Accordingly, the Panel finds that Respondent’s registration and use of
the disputed domain name amounts to bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See Philip
Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the
respondent’s registration of an infringing domain name to redirect Internet
users to banner advertisements constituted bad faith use of the domain name); see also G.D. Searle & Co.
v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding
that the respondent registered and used the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar
domain name to attract Internet users to its commercial website).
The Panel finds that Complainant satisfied
Policy ¶ 4(a)(iii).
Having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the
<cheapest-ambien.us> domain name be TRANSFERRED from
Respondent to Complainant
Hon. Carolyn Marks
Johnson, Panelist
Dated: September 1, 2006.
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