Sanofi-Aventis v. 24-7-Commerce.com
Claim Number: FA0510000571951
PARTIES
Complainant is Sanofi-Aventis
(“Complainant”), represented by Baila H.
Celedonia of Cowan, Liebowitz &
Latman, P.C., 1133 Avenue of the
Americas, New York, NY, 10036.
Respondent is 24-7-Commerce.com
(“Respondent”), 1140 Highland Avenue, #219, Manhattan
Beach, CA, 90266.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheap-ambien.us>,
registered with Wild West Domains, Inc.
PANEL
The undersigned certifies that she 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 October 3, 2005; the Forum received a hard copy of
the Complaint October 5, 2005.
On October 4, 2005, Wild West Domains, Inc. confirmed by e-mail to the
Forum that the domain name <cheap-ambien.us>
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 October 11, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”) setting a deadline
of October 31, 2005, 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 November 7, 2005, 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 assertions:
1. The domain name that Respondent registered, <cheap-ambien.us>, is confusingly similar to Complainant’s AMBIEN mark.
2.
Respondent has no rights to or
legitimate interests in the <cheap-ambien.us> domain name.
3.
Respondent registered or used the <cheap-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, with a business presence in more
than fifty countries worldwide. AMBIEN
is one of Complainant’s three flagship products and is used for the short-term
treatment of insomnia. Complainant
holds a trademark registration with the United States Patent and Trademark
Office (“USPTO”) for the AMBIEN mark (Reg. No.1,808,770, issued December 7,
1993).
Respondent registered the <cheap-ambien.us> domain
name December 8, 2003. Respondent is using
the disputed domain name to redirect Internet users to a commercial website
that offers pharmaceutical products, including Complainant’s AMBIEN product.
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 Complainant's undisputed representations pursuant to paragraphs 5(e),
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 accepts 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 that 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.
Using extrinsic
proof in this proceeding, Complainant established rights in the AMBIEN mark,
showing registration of the mark 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 and have acquired secondary
meaning.”); see also Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the United States Patent and
Trademark Office creates a presumption of rights in a mark).
The domain name that Respondent
registered, <cheap-ambien.us>, is confusingly similar to
Complainant’s AMBIEN mark. The disputed
domain name incorporates Complainant’s mark in its entirety and adds the common
term “cheap,” a hyphen and the country code top-level domain “.us.” Such minor additions are insufficient to
negate a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd.
v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing
similarity where the domain name in dispute contains the identical mark of the
complainant combined with a generic word or term); see also Quixtar Inv., Inc. v. Smithberger,
D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name
<quixtar-sign-up.com> incorporates in its entirety the complainant’s
distinctive mark, QUIXTAR, the domain name is confusingly similar); see also
Health Devices Corp. v.
Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks
such as hyphens is irrelevant in the determination of confusing similarity
pursuant to Policy ¶ 4(a)(i).”); 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); see also Gardline Surveys Ltd. v.
Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition
of a top-level domain is irrelevant when establishing whether or not a mark is
identical or confusingly similar, because top-level domains are a required
element of every domain name.”).
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 to or legitimate interests in Complainant’s protected mark or the domain name containing that mark, <cheap-ambien.us>. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).
Respondent failed to respond to the Complaint and the Panel assumes, as a result, that Respondent has no rights to or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Further, Respondent is using the confusingly similar domain name to operate a website that purports to sell Complainant’s AMBIEN products. Such use is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent, a reseller of the complainant’s products, did not have rights or legitimate interests in a domain name that was confusingly similar to the complainant’s mark); see also G.D. Searle & Co. v. Mahoney, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from the complainant does not constitute a bona fide offering of goods or services).
Moreover, Respondent offered no
evidence and no evidence in the record suggests that Respondent is the owner or
beneficiary of a trade or service mark that is identical to the <cheap-ambien.us>
domain name or that Respondent is commonly known by the disputed domain
name. Thus, Respondent has not established rights or legitimate interests
in the <cheap-ambien.us> domain name pursuant to Policy
¶¶ 4(c)(i) and (iii). See Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interests where the respondent was not commonly known by the mark and never
applied for a license or permission from the complainant to use the trademarked
name); see also Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark); see also Broadcom
Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001)
(finding no rights or legitimate interests because the respondent was not
commonly known by the disputed domain name and was not using the domain name in
connection with a legitimate or fair use).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(ii).
Registration or Use in Bad Faith
Complainant also alleged that Respondent acted in bad faith. The disputed domain name, <cheap-ambien.us>, is confusingly similar to Complainant’s AMBIEN mark. Consumers accessing Respondent’s domain name may become confused as to a suggested affiliation between the disputed domain name and website and Complainant. Thus, Respondent’s use of the disputed domain name to sell Complainant’s AMBIEN product is evidence of bad faith registration or use pursuant to Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Serv., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated UDRP ¶ 4(b)(iv) by selling used Fanuc parts and robots on website <fanuc.com> because customers visiting the site were confused as to the relationship between the respondent and the complainant); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where the respondent attracted users to a website sponsored by the respondent and created confusion with the complainant’s mark as to the source, sponsorship, or affiliation of that website).
Additionally,
Respondent’s use of the confusingly similar domain name to sell Complainant’s
AMBIEN products constitutes disruption and is evidence that Respondent
registered and used the <cheap-ambien.us> domain name in bad faith pursuant to
Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2
Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of
Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith
use under Policy ¶ 4(b)(iii).”); see also Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent
registered each of the disputed domain names in order to gain customers and to
disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR
equipment.”).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cheap-ambien.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: November 18, 2005.
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