DECISION

 

Sanofi-Aventis v. Bill Walton

Claim Number: FA0607000756893

 

PARTIES

Complainant is Sanofi-Aventis (“Complainant”) represented by Baila H. Celedonia, of Cowan, Liebowitz & Latman, P.C., 174 Avenue de France, 75013 Paris, France.  Respondent is Bill Walton (“Respondent”), 400 West 15^th Street, Austin, TX 76052.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ambien-online.us>, registered with @Com Technology, Llc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 21, 2006; the Forum received a hard copy of the Complaint on July 24, 2006.

 

On August 3, 2006, @Com Technology, Llc confirmed by e-mail to the Forum that the <ambien-online.us> domain name is registered with @Com Technology, Llc and that Respondent is the current registrant of the name.  @Com Technology, Llc has verified that Respondent is bound by the @Com Technology, Llc registration agreement and has thereby 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 August 4, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 24, 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 30, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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

 

1.      Respondent’s <ambien-online.us> domain name is confusingly similar to Complainant’s AMBIEN mark.

 

2.      Respondent does not have any rights or legitimate interests in the <ambien-online.us> domain name.

 

3.      Respondent registered and used the <ambien-online.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 a drug used for the short-term treatment of insomnia, Ambien.  Complainant first sold the product in the United States in 1993, and 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 <ambien-online.us> domain name on October 20, 2003.  Respondent’s disputed domain name resolves to a website that displays advertisements for Internet users to purchase Ambien from Respondent. 

 

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 draw such inferences it 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 that the Complainant must 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) the 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.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the AMBIEN mark through registration of the mark with the USPTO.  See 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.”); see also 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.”). 

 

Respondent has registered a domain name confusingly similar to Complainant’s AMBIEN mark as the <ambien-online.us> domain name contains Complainant’s mark in its entirety with the addition of a hyphen and the generic term “online.”  The Panel finds that such additions to Complainant’s mark do not negate the confusing similarity between Complainant’s mark and Respondent’s disputed domain name under Policy ¶ 4(a)(i).  See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark). 

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.   

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the <ambien-online.us> domain name.  Complainant must first make a prima facie case in support of its allegations, and the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  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 Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests). 

 

Respondent’s failure to answer the Complaint raises a presumption that Respondent lacks rights and legitimate interests in the disputed domain name.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint).  However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c). 

 

As Complainant has established rights to the AMBIEN mark and Respondent has not come forward with any evidence showing it is the owner or beneficiary of a mark identical to <ambien-online.us> domain name, Complainant has satisfied Policy ¶ 4(c)(i).  See Meow Media Inc. v. John Basil a/k/a American Software Factory Corp., Inc., FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v Becky a/k/a Joe Cutroni, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.cus> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).

 

Complainant asserts that Respondent is not authorized to use Complainant’s AMBIEN mark and that Respondent is not associated with Complainant in any way.  Furthermore, Respondent’s WHOIS information does not suggest that Respondent is commonly known by the <ambien-online.us> domain name, and there is no other evidence in the record to suggest that Respondent is or has ever been known by the disputed domain name.  The Panel thus finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(iii).  See 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 Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).

 

Furthermore, Respondent’s <ambien-online.us> domain name, which is confusingly similar to Complainant’s AMBIEN mark, resolves to a website that claims to sell Complainant’s Ambien product.  In G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002), the panel found that the respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from the complainant did not constitute a bona fide offering of goods or services.  See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).  Accordingly, the Panel finds that Respondent is not using the <ambien-online.us> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). 

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.    

 

Registration and Use in Bad Faith

 

The Panel finds that Respondent is using the disputed domain name in an attempt to lead Internet users looking for information on, or to purchase, Complainant’s product to Respondent’s own website.  Such use constitutes disruption and is evidence of bad faith registration and use under 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.”).   

 

Respondent is using the <ambien-online.us> domain name to operate a commercial website selling Complainant’s products, without permission or authorization from Complainant.  Additionally, Respondent’s disputed domain name is capable of creating confusion as to the source and affiliation of the website with Complainant.  The Panel finds that such commercial use of the website constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). 

 

DECISION

Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED. 

 

Accordingly, it is Ordered that the <ambien-online.us> domain name be TRANSFERRED from Respondent to Complainant. 

 

 

 

Sandra J. Franklin, Panelist

Dated: September 12, 2006

 

 

 

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