The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Delcy Roy Conrad, GMG International Limited of Belize City, Belize. 2. The Domain Name and Registrar
The disputed domain name is registered with NameSilo, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 22, 2018. On February 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 23, 2018, 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 February 26, 2018 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 February 27, 2018.
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 March 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 23, 2018.
The Center appointed Andrea Mondini as the sole panelist in this matter on April 4, 2018. 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 multinational pharmaceutical company, offering in particular a medication against insomnia under the trademark AMBIEN.
The Complainant is the owner of several registrations for the trademark AMBIEN (word mark), in international class 5, including the European Union trademark AMBIEN no. 003 991 999 filed on August 17, 2004 and the International trademark AMBIEN no. 605 762 registered on August 10, 1993 which designates numerous countries.
The disputed domain name was registered on October 31, 2017. The disputed domain name resolves to a competing website which offers for sale pharmaceutical products and delivers inaccurate information on the Complainant's products. 5. Parties' Contentions A. Complainant
The Complainant contends in essence:
- That the disputed domain name is confusingly similar to its trademark AMBIEN because it incorporates this trademark in its entirety, whereas the addition of the generic and descriptive word "medication" does not dispel but rather accentuate the likelihood of confusion;
- That the Respondent has no rights or legitimate interests in respect of the disputed domain name, because the disputed domain name does not correspond to the Respondent's name, and because there is no relationship whatsoever between the parties;
- That the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, because the disputed domain name leads to a competing website which offers pharmaceutical products and delivers inaccurate information on the Complainant's products and creates the incorrect impression that Respondent's activities are approved or endorsed by the Complainant;
- That the Respondent registered the disputed domain name in opportunistic bad faith because it must have been aware of the Complainant's well-known trademark AMBIEN;
- That the Respondent is using the disputed domain name in bad faith to direct Internet users to a website which is not the official website of the Complainant;
That the Complainant sent a cease and desist letter to the Respondent on December 8, 2017 but that the Respondent did not answer, which reinforces the inference of bad faith. B. Respondent
The Respondent did not respond to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of 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 has shown that it owns several registrations for the trademark AMBIEN in international class 5, including the European Union trademark AMBIEN no. 003 991 999 filed on August 17, 2004 and the International trademark AMBIEN no. 605 762 registered on August 10, 1993 and designating numerous countries
The Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark, because it incorporates in its entirety the trademark AMBIEN. The addition of the word "medication", which is generic or descriptive for pharmaceutical products, does not dispel confusing similarity.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant contends, credibly, that it has not authorized the Respondent to use the disputed domain name, and that there is no relationship whatsoever between the parties. In the absence of any Response, the Panel concludes that the Respondent was not authorized or licensed to use the Complainant's trademark in the disputed domain name.
The Panel notes that the disputed domain name is directed to a website offering numerous different pharmaceutical products, including the Complainant's AMBIEN product. Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant's trademark to undertake sales or repairs related to the complainant's goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name, if the following cumulative requirements are met (so-called "Oki-Data test" with reference to Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903):
(i) the Respondent must actually be offering the goods or services at issue;
(ii) the Respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant's relationship with the trademark holder; and
(iv) the Respondent must not try to "corner the market" in domain names that reflect the trademark.
In the present case, the second condition of the Oki-Data test is not met because the site is used to also sell many other pharmaceutical products. The third condition is not met either, because the site does not accurately and prominently disclose the (non-existing) relationship with the trademark holder.
Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Considering that the Complainant's AMBIEN trademark is well-known and that the addition of the word "medication" obviously refers to this pharmaceutical product, the Panel concludes that the Respondent must have been aware of the Complainant's trademark and that it registered the disputed domain name in bad faith.
The Panel also holds that the Respondent is using the disputed domain name in bad faith by directing Internet users to a website which offers a vast number of other pharmaceutical products. The fact that the Respondent failed to answer to the Complainant's cease and desist letter of December 8, 2017 reinforces the inference of bad faith.
The Panel therefore finds that the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy. 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 transferred to the Complainant.
Andrea Mondini
Sole Panelist
Date: April 11, 2018
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