The Complainant is Sanofi of Paris, France, represented by Selarl Marchais De Cande, France.
The Respondent is ContactP of Nobby Beach, Queensland, Australia / Viktor Konin of Ekaterinburg, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with Domain Context, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2012. On August 9, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 14, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 22, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 22, 2012
The Center verified that the Complaint together with the amendment to the Complaint…. satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the ”Policy” or ”UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the ”Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the ”Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 17, 2012.
The Center appointed Lorenz Ehrler as the sole panelist in this matter on October 18, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is the parent company of the Sanofi group which is active in the pharmaceutical industry. With its 110,000 employees, it is one of the biggest pharmaceutical groups worldwide and is present in more than 100 countries.
The trademark AMBIEN was registered in France in 1993 for pharmaceutical products in International class 5. The French national trademark was extended via the Madrid system to numerous countries, including in particular the Russian Federation. In 1993, it was also registered in the United States of America and in 2004 as a Community trademark. Besides the aforementioned trademarks, the Complainant also registered AMBIEN in domain names under TLDs such as .com, .eu, .fr, .us, .net, .biz, etc. All of the above-mentioned trademarks and domain names were registered prior to the disputed domain name.
The disputed domain name was registered on August 25, 2012. Currently, the disputed domain name does not resolve to any website. The Complainant has however shown that when typing the domain name into the web browser, the visitors were automatically redirected to another website which advertises and offers for sale non-genuine AMBIEN sleeping aids without prescription. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its AMBIEN trademarks. It stresses the fact that the disputed domain name entirely comprises the trademarks AMBIEN and that the addition of the words “order” and “online” does not avert the confusing similarity between the signs in question, but rather increases the risk of confusion.
Furthermore, the Complainant states that the Respondent is not affiliated or related to it in any way, and that he did not authorise the Respondent to use the trademarks in question. The Complainant also states that the Respondent is not generally known by the disputed domain name and that it has not acquired any trademark or service mark rights in it.
At last, the Complainant contends that Respondent generates revenue by redirecting consumers to a website offering sleeping aids of third parties, which in its view constitutes bad faith, all the more that the sleeping aids are offered for sale without prescription. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, Complainant must prove that:
A. The disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
B. Respondent has no rights or legitimate interests in respect of the disputed domain name; and
C. The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant holds several trademarks for AMBIEN. These trademarks are registered in International class 5 (pharmaceutical products) in many countries, in particular in the European Union, the United States and in the Russian Federation, where the Respondent resides. The trademarks put forward by the Complainant are sufficient to found the Complaint.
Under the UDRP, the identity or confusing similarity requirement under paragraph 4(a) of the Policy requires identity or confusing similarity between complainant’s trademarks and respondent’s domain name. There is no requirement of similarity of goods and/or services (e.g., AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc. / Corporation Texas v. Guillermo Lozada, Jr.,WIPO Case No. D2005-0485 ().
The existence of a confusing similarity within the meaning of paragraph 4(a) of the Policy makes no doubt in the present case, given that the distinctive element in the disputed domain name, i.e. ”ambien”, is identical with Complainant’s trademark AMBIEN. Taking into account that the trademark AMBIEN is distinctive, the other elements of the disputed domain name, i.e. the generic words “order” and “online”, are not sufficient to avoid confusing similarity. As the Complainant rightly points out, the word string “order ambien online” actually constitutes an indication that the sleeping aid AMBIEN can be purchased on or through the Respondent’s website, and therefore even increases the risk of confusion (Rockefeller & Co., Inc. v. All Value Network,WIPO Case No. D2011-1957, ).
The Panel finds that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The Complainant contends that Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has shown that it owns the AMBIEN trademark, and it has explicitly contested having granted the Respondent any right to use its trademark.
Furthermore, the Complainant has also made a prima facie showing that the Respondent did not use the domain name in connection with a bona fide offering of goods or services. On the one hand, the Respondent is not a reseller of genuine Ambien sleeping aids. The page on “”, to which the Internet user is redirected when visiting “www.” contains an offer for what is explicitly designated as generics of the Complainant’s AMBIEN product, which implies that the goods offered for sale are not genuine AMBIEN products (annexes 12 and 13 of the Complaint). Accordingly, the Respondent is not a reseller or licensee of AMBIEN which could claim legitimate use under the Oki Data criteria. If the goods offered for sale through the Complainant’s website are generics which are manufactured by a third party that is unrelated to the Complainant, then the use of the trademark AMBIEN as distinctive element of the litigious domain name, and to designate the generics in question, is likely to amount to a trademark infringement, which in any case excludes a good faith offering of goods under the circumstances (Red Bull GmbH vs. Reinhard Birnhuber, WIPO Case No. D2005-0862, ; Bettinger, Handbuch des Domain rechts, Köln/München 2008, p. 1265 n. 371). It should also be noted that the facts of the case show that the Respondent was necessarily aware of the Complainant’s trademark, as he would otherwise not have redirected the Internet users to a website that sells AMBIEN generics. Actually, by choosing the disputed domain name, the Respondent’s intention was quite obviously to divert traffic from the Complainant’s websites to a website that sells AMBIEN generics and numerous other products.
Therefore, the Complainant made a prima facie showing that the Respondent knew about the Complainant’s trademark when registering the disputed domain name, and that his intention was to infringe, and to take advantage from, the AMBIEN trademark, at least indirectly, by redirecting the Internet users to a website that offers for sale AMBIEN generics, besides numerous other products, including of the Complainant’s competitors. It seems very likely that the Respondent receives commercial revenue from the redirecting of Internet users.
The Panel finds this use, under the circumstances, does not provide the Respondent with a right or legitimate interest in the disputed domain name.
The Panel finds that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
As mentioned above, it is more than likely that the Respondent was aware of the Complainant’s trademark AMBIEN when registering the disputed domain name (e.g., Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574, in which the panel found it “inevitable that Respondent registered the domain names in full knowledge of Complainant’s rights and interests”).
The website to which the Internet user is redirected when typing “www.” into the web browser only contains a link to a website, where AMBIEN generics and other third party products are offered for sale.
The Panel finds that by using Complainant’s trademark as the distinctive element of the disputed domain name, the Respondent creates a risk of confusion, at least in the sense that the visitors to the website will, at least initially, expect a website operated by the Complainant or by one of its retailers. In any case, the visitor will have the initial impression that the website to which the disputed domain name resolves is associated with, or endorsed by, the owner of the AMBIEN trademark, i.e. the Complainant. The fact that the link displayed on the website to which the visitor is redirected leads to an offer of unrelated products of third party providers, shows bad faith conduct on the Respondent’s part (e.g. deceuninck NV v. William Vaughan, smtm investments ltd,WIPO Case No. D2007-1911 (), all the more that the Respondent likely derives commercial revenue from his behavior as described above.
The Panel thus finds that the Respondent registered and is using the disputed domain name to intentionally divert, for commercial gain, Internet users to a third party website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website (paragraph 4(b)(iv) of the Policy).
The Panel finds that paragraph 4(a)(iii) of the Policy is satisfied. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be cancelled.
Lorenz Ehrler
Sole Panelist
Dated: October 29, 2012
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