The Complainant is Sanofi of Gentilly, France, represented by Selarl Marchais & Associés, France.
The Respondent is Roslyn Blowem / Blowem Inc of Amsterdam, Netherlands; and of New York, New York, United States of America (“United States”). 2. The Domain Names and Registrars
The disputed domain name is registered with Gransy, s.r.o. d/b/a .
The disputed domain names , , , , , , , , , , , , , , , , , , and are registered with Mesh Digital Limited. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2016. On October 12 and October 13, 2016, the Center transmitted respectively by email to Mesh Digital Limited and Gransy, s.r.o. d/b/a a request for registrar verification in connection with the disputed domain names. On October 12 and October 13, 2016, Mesh Digital Limited and Gransy, s.r.o. d/b/a transmitted respectively by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 19, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 11, 2016.
The Center appointed Marilena Comănescu as the sole panelist in this matter on November 18, 2016. 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 a French multinational pharmaceutical company established in more than 100 countries on all five continents, employing 110,000 people. The Complainant engages in research and development, manufacturing and marketing of pharmaceutical products for sale in the prescription market, and it develops over-the-counter medication.
The Complainant holds registrations for AMBIEN trademark in many countries and jurisdictions, including the European Union Trademark No. 003991999 for AMBIEN (word mark), filed on August 17, 2004 and registered on November 28, 2005; the United States Trademark No. 74345754 for AMBIEN (word mark) filed on January 5, 1993 and registered on December 7, 1993, both protected for pharmaceutical products in international class 5.
The Complainant holds various domain names containing the mark AMBIEN, such as , and .
The Complainant’s trademark AMBIEN is used worldwide in the field of treatment of the central nervous system, in particular for an insomnia drug and has become widely known, as confirmed by previous UDRP decisions, see for example Sanofi v. Domain Administrator, PrivacyG / Aqif Kapartoni,WIPO Case No. D2016-1136; Sanofi-Aventis v. Marie Birtel,WIPO Case No. D2011-0694 and Sanofi-Aventis v. Max Egozin,WIPO Case No. D2010-1514.
The disputed domain names were registered by the Respondent as follows:
- on May 2, 2016 the disputed domain name ;
- on May 5, 2016 the disputed domain name ;
- on June 9, 2016 the disputed domain names and ;
- on July 3, 2016 the disputed domain names , , and ;
- on August 12, 2016 the disputed domain names , , and ;
- on September 5, 2016 the disputed domain names , , , , , , , and .
At the time of filing the Complaint, the disputed domain names were all used for an online pharmacy website apparently named “Canadian Pharmacy” promoting pharmaceutical goods, including products competing with the Complainant’s goods and counterfeit products and also displayed inaccurate information on the Complainant’s Ambien products. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are confusingly similar to its famous trademark AMBIEN, the Respondent has no rights or legitimate interests in the disputed domain names and the Respondent registered and is using the disputed domain names in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant holds worldwide trademark registrations for AMBIEN. The disputed domain names , , , , , , , , , , , , , , , , , , , and include the Complainant’s trademark easily recognizable together with generic non-distinctive words, numbers and letters, as follows: “buy”, “online”, “cost”, “for sale”, “generic”, “name”, “pill”, “price”, “sleeping pill”, “without prescription”, “get”, “order”, “med”, “10 mg”, “5mg”, “legally”, “5” or “10”.
Numerous UDRP panels have considered that the addition of generic or descriptive words to trademarks in a domain name is not sufficient to escape the finding of confusing similarity and does not change the overall impression of the domain name as being connected to the complainant’s trademark. See paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP questions, Second Edition (“WIPO Overview 2.0”).
Further, it is well established in decisions under the UDRP that the presence or absence of spaces or characters (e.g., hyphens, dots) in a domain name and indicators for country code Top-Level Domains (“ccTLDs”) or generic Top-Level Domains (“gTLDs”) (e.g., “.ro”, “.it”, “.com”, “.org”) are typically irrelevant to the consideration of confusing similarity between a trademark and a domain name.
Given the above, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark AMBIEN, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Complainant asserts that it has given no authorization or other right to use or register its trademark in a domain name to the Respondent and that the Respondent has no rights or legitimate interests to register and use the disputed domain names. In line with the previous UDRP decisions, the Panel accepts that the Complainant has provided a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain names, and the burden of production shifts to the Respondent.
The Respondent chose not to challenge the Complainant’s allegations. There is no evidence before the Panel to support the contrary, and therefore the Panel accepts these arguments as facts.
Further, according to the evidence provided in the Complaint, all the disputed domain names were used by the Respondent in relation to an online pharmacy website, providing goods of Complainant’s competitors and counterfeit goods, as well as false information on Complainant’s genuine Ambien products. Such use definitely does not fall within the bona fide use principles where such websites seek to take unfair advantage of the value of a trademark and exploit its goodwill for the Respondent’s financial gain.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Complainant holds trademark registrations for AMBIEN worldwide since at least 1993, including in the United States and the Netherlands, where the Respondent is apparently located. Further the Complainant’s trademark is distinctive and well known worldwide particularly in the pharmaceutical field.
The disputed domain names were created in 2016 and incorporate the AMBIEN trademark together with the non-distinctive terms related to the online commerce and pharmaceutical field: “buy”, “online”, “cost”, “for sale”, “generic”, “name”, “pill”, “price”, “sleeping pill”, “without prescription”, “get”, “order”, “med”, “10 mg”, “5mg”, “legally”, “5” or “10”.
Having in mind the reputation of the Complainant and the fame of its Ambien goods, it is extremely unlikely to believe that someone would randomly register 21 disputed domain names containing the common
non-dictionary word “ambien” and generic terms in pharmaceutical industry and marketing. In fact, it is very clear for this Panel that the Respondent has registered the disputed domain names knowing the Complainant and targeting its trademark in order to create confusion between the Complainant’s mark and the Respondent’s disputed domain names.
At the time of filing the Complaint, the disputed domain names resolved to a website for an online pharmacy, selling third parties’ competing goods and counterfeit goods.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site or location or of a product or service on its web site or location.”
The Respondent is using without permission the Complainant’s widely-known trademark in order to redirect Internet users looking for the Complainant’s goods to get traffic to its web portal and to obtain commercial gain from the false impression created for the Internet users with regard to a potential affiliation or connection with the Complainant. At the same time such use is likely to damage the Complainant’s business and reputation and furthermore, to harm the health of the potential buyers of counterfeit goods. Such facts constitute bad faith under paragraph 4(b)(iv) of the Policy.
The Respondent did not respond to the Complainant’s cease-and-desist letters sent before commencing the present proceeding or to the present Complaint. Given the other circumstances of the case, such behavior may be considered as further evidence of bad faith in registering and using the disputed domain names.
For the above, the Panel finds that the Respondent has registered and is using the disputed domain names in bad faith, pursuant to the Policy, paragraph 4(a)(iii). 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 names , , , , , , , , , , , , , , , , , , , and be cancelled.
Marilena Comănescu
Sole Panelist
Date: November 29, 2016
Full & Egal Universal Law Academy