A recent decision of a WIPO panel under the Uniform Domain Name Dispute Resolution Policy (the "Policy") shows that the application of the Policy is not as broad as an action in the courts.
The respondent in this case registered 12 domain names that contained the word AMBIEN. Sanofi-Aventis commenced a complaint under the Policy to require the transfer of the domain names to it. All of the domain names were ordered to be transferred with the exception of ambienisdangerous.com.
The Policy requires that the complainant prove the following elements in order to obtain an order that a domain name be transferred:
- the domain name registered by the respondent is identical or confusingly similar to a trade mark in which the complainant has rights;
- the respondent has no rights or legitimate interest in the domain name; and
- the domain name has been registered and is being used in bad faith.
The panel observed that the test for confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trade mark in issue.
For the domain names that comprised the complainant's trade mark AMBIEN followed by "sex" and "rape," with and without inconsequential hyphens, and "watch," it was found that none of these descriptive words sufficiently distinguished the domain names from the trade mark so as to avoid likely confusion.
The domain name conveyed a message that was highly critical of the drug. The panel referred to existing cases and said that common sense and a reading of the plain language of the Policy suggest that a domain name combining a trade mark with language clearly indicating the domain name is not affiliated with the trade mark owner cannot be considered confusingly similar to the trade mark.
As the meaning of the words "is dangerous" was plain, it was inconceivable that people would wonder whether the complainant's AMBIEN drug was associated with the domain name. As a result the complainant failed to establish that this domain name was confusingly similar with its AMBIEN mark and the complaint concerning it was denied.
The result in this case is consistent with other cases decided under the Policy. However, in an action for trade mark infringement, a court would take a different approach, since in this context the words "is dangerous" would likely be considered irrelevant. In addition, there are other potential claims, such as defamation, that a court could consider.