WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi v. Domain Admin, Privacy Protect, LLC / Martin Anthony Santiago

Case No. D2020-1780

1. The Parties

The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.

The Respondent is Domain Admin, Privacy Protect, LLC, United States of America / Martin Anthony Santiago, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <ambien-medication.com> is registered with Shinjiru Technology Sdn Bhd (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2020. On July 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 9, 2020, 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 July 13, 2020, 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 July 13, 2020.

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 July 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2020.

On August 6, 2020, the Complainant requested the suspension of the proceeding. Pursuant to paragraph 17 of the Rules, on August 7, 2020, the proceedings were suspended until September 6, 2020, for purposes of settlement discussions. On September 8, 2020, the Complainant requested the reinstitution of the proceeding. On September 9, 2020, the proceeding was reinstituted and the Response due date was recalculated as September 13, 2020.

The Respondent did not submit any response. Accordingly, the Center sent notification of the Respondent’s default on September 15, 2020.

The Center appointed Petra Pecar as the sole panelist in this matter on September 23, 2020. 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 with its headquarters in Paris, France and operational in more than 100 countries, employs around 100,000 employees. It is ranked as the world’s fourth largest multinational pharmaceutical company by prescription sales. The Complainant was formed as Sanofi-Aventis in 2004 by the merger of Aventis and Sanofi- Synthélabo. Since 2011 the Complainant has traded as Sanofi.

The Complainant offers a wide range of patented prescription drugs to treat patients with serious diseases and has leading positions in seven major therapeutic areas, namely cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine and vaccines. Among other pharmaceutical products in the field of treatment of the central nervous system, the Complainant developed and sells throughout the world a drug with demonstrated utilities for the treatment of insomnia under the trademark AMBIEN.

The Respondent is an individual based in London, United Kingdom.

The disputed domain name was registered on February 23, 2020 and resolves to an online store, where AMBIEN branded medication is purportedly offered for sale online. The website also contains a number of articles on AMBIEN and its purchase through the website.

5. Parties’ Contentions

A. Complainant

The Complainant is the proprietor of the trademark AMBIEN, registered in connection with pharmaceutical products in Class 5 of the international classification. The AMBIEN trademark is registered in many jurisdictions throughout the world, including French national trademark registration AMBIEN No. 93 456 039, registered on February 19, 1993; the European Union trademark registration AMBIEN No. 003 991 999, registered on February 18, 2018; International trademark registration AMBIEN No. 605 762, registered on September 10, 1993, designating a number of jurisdiction and the United States AMBIEN No. 74345754 registered on December 7, 1993.

The Complainant is also the owner of a number of domain names reflecting its AMBIEN trademark, such as <ambien.com> registered on April 12, 2000, <ambien.eu> registered on July 2, 2006, <ambien.fr> registered on May 30, 2002, <ambien.us> registered on April 19, 2002, <ambien.net> registered on April 12, 2000, <ambien.info> registered on August 24, 2001, <ambien.org> registered on April 12, 2000, <ambien.mobi> registered on August 2, 2006, <ambien.us> registered on April 19, 2002. Most of the domain names are registered and used by the Complainant in connection with AMBIEN pharmaceutical products.

The Complainant contends that the disputed domain name <ambien-medication.com> is confusingly similar to its AMBIEN trademarks, as it directly incorporates its registered trademark AMBIEN, for which the Complainant claims to be well-known, in its entirety coupled with the generic word “medication” which is a term closely associated with the Complainant’s line of business. The Complainant argues that the addition of the descriptive term “medication” does not eliminate any confusing similarity, and in support of that argument, quotes the decision of the previous UDRP panel in Oki Data Americas Inc v. ASD Inc,WIPO Case No. D2001-0903, in which the panel states when a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words. Complainant further quotes several decisions of previous UDRP panels as a confirmation of its standpoint. In the decision Sanofi v. Delcy Roy Conrad, GMG International Limited, WIPO Case No. D2018-0407, the panel states that the disputed domain name is confusingly similar to the Complainant’s trademark because it incorporates in its entirety the trademark AMBIEN and that the addition of the word “medication”, which is generic or descriptive for pharmaceutical products, does not dispel confusing similarity. Similarly, in the decision F. Hoffmann-La Roche AG v. Eduardo Gomes,WIPO Case No. D2016-1533, the panel found that the addition of the generic word “medication” does not detract from the distinctiveness of the VALIUM mark, and accordingly, the panel found that the domain name is confusingly similar to a mark in which the complainant has rights. Also, in the decision Rockefeller & Co., Inc. v. All Value Network a/k/a AVN, WIPO Case No. D2011-1957, the panel states that the addition of descriptive or generic wording (in this case the addition of “financial solutions”) to a trademark owned by a complainant to create a domain name consisting of multiple words that implies a relationship between the words can and, actually does increase rather than decrease the confusing similarity. Further, the Complainant contends that the addition of the generic Top Level Domain (“gTLD”) “.com” does not add any distinctiveness to the disputed domain name.

The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the disputed domain name has been registered only for the purpose of unfairly attracting the Complainant’s consumers, as it is clearly revealed on the Respondent’s webpage to which the disputed domain name resolves. It demonstrates that it was registered for the sole purpose of misleadingly diverting consumers into thinking that the Respondent is, in some way, connected to, sponsored by or affiliated with the Complainant and its business or that the Respondent’s activities are approved or endorsed by the Complainant. The Complainant alleges that the Respondent has not made a noncommercial or fair use of the disputed domain name as the same resolves to a blog page that contains a number of hypertext listings, including links to websites advertising, inter alia, pharmaceutical products. The Respondent is more than likely generating click-through revenue from such listings, in addition to commission revenue from websites through links on its homepage, which does not account for a noncommercial or fair use of the disputed domain name in any respect.

Further, the Complainant adds that it has never granted permission or a license to the Respondent to use its AMBIEN trademark and that the Respondent deliberately opted to choose the disputed domain name which fully incorporates the Complainant’s trademark in combination with the closely related term “medication”. The Complainant concludes that the absence of an identifiable connection between the Respondent and the disputed domain name that consists of the trademark AMBIEN and the word “medication” indicates a complete lack of any rights or legitimate interests in the disputed domain name.

The Complainant also argues that the disputed domain name has been registered and used in bad faith. Particularly, opportunistic bad faith is evident from the fact that the contested domain name appears to be confusingly similar to the Complainant’s trademark in order to make illegitimate use of it. In particular, the Complainant contends that the addition of the generic term “medication” gives the impression that the Respondent’s website to which the disputed domain name resolves is run or at least approved by the Complainant as an online store where Internet users can purchase goods from the Complainant. In addition, the Complainant argues that the Respondent’s website is used for fraudulent purposes, i.e., to sell drugs at a discounted price to Internet users who mistakenly believe they are shopping for the Complainant’s goods. According to the Complainant, this represents a strong indication of the Respondent’s bad faith when registering the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:

i) the disputed domain name is identical or confusingly similar to a 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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A trademark registration provides a clear indication that the rights in the trademark belong to the Complainant (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.1).

The Complainant has provided detailed evidence of its rights in the trademark AMBIEN on the basis of its multiple trademark registrations for the same in various jurisdictions around the world, including French national trademark registration AMBIEN No. 93 456 039, the European Union trademark registration AMBIEN No. 003 991 999, International registration AMBIEN No. 605 762 designating a number of jurisdictions and the United States registration AMBIEN No. 74345754. All of these AMBIEN trademarks were duly registered before the Respondent registered the disputed domain name on February 23, 2020. Likewise, the Panel notes that the Complainant is also the registrant of several domain names, comprised of its registered trademark AMBIEN, the earliest of which goes back to 2000.

The disputed domain name reproduces the AMBIEN trademarks and domain names in their entirety. The adjunction of the generic and descriptive term “medication”, which refers to the nature of the products registered and sold under AMBIEN trademarks, does not avoid confusing similarity and only suggests to Internet users that the disputed domain name leads to AMBIEN trademarks. 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.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the trademark in which Complainant has rights, meaning that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant contends, that it has not authorized the Respondent to use the disputed domain name, and that there is no relationship between the parties.

The disputed domain name leads to a website containing information about AMBIEN drugs and offering them for sale. The page contains a number of AMBIEN articles and purchase section through which Internet users can buy AMBIEN pharmaceutical products at a discounted price. The fact that disputed domain name resolves to a website, which is offering AMBIEN pharmaceutical products of unknown origin and quality cannot be observed as a noncommercial or fair use of the disputed domain name, or connected to a bona fide offering of goods or services. The Respondent has therefore adopted the Complainant’s AMBIEN trademarks for its own use and incorporated them into disputed domain name in order to confuse Internet users into believing the Respondent is linked to the Complainant, which in any case does not constitute a bona fide offering of goods and services.

The Panel notes that the disputed domain name, given its connection with products labeled with the AMBIEN trademark, seems to have been registered and used for the purpose of unfairly attracting the Complainant’s consumers, a webpage misleadingly diverting consumers into thinking that the Respondent is, in some way, connected to, sponsored by or affiliated with the Complainant and its business or that the Respondent’s activities are approved or endorsed by the Complainant.

Additionally, the Panel finds that the Respondent as a natural person does not seem to be known by the name AMBIEN or to have any particular rights in such name nor does there seem to be any legitimate interest on the Respondent’s side for use of such name.

The Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name which the Respondent has not rebutted. 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.

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

According to the Policy, bad faith is understood to occur, inter alia, where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark (see section 3.1 of the WIPO Overview 3.0). The Panel notes that section 3.1 of the WIPO Overview 3.0 states that bad faith is present when by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 website or location or of a product or service on the respondent’s website or location. In the case at hand, it seems rather obvious from the manner in which the disputed domain name is used that the Respondent had the Complainant in mind when registering the disputed domain name and that the same was registered with the clear intention of being used for the creation of a false affiliation or connection with the Complainant. The use of the Complainant’s AMBIEN trademark in combination with the word “medication” obviously refers to a particular pharmaceutical product produced by the Complainant, which is a strong indicator that the Respondent had the Complainant in mind when registering the disputed domain name. Furthermore, the Respondent could have easily found the relevant information on the Internet about the Complainant and its AMBIEN trademark through a simple web search (see section 3.2.2 of the WIPO Overview 3.0). The Complainant’s extensive use, widespread business and numerous trademark registrations worldwide, coupled with the fact that the Complainant is also carrying out operations in the United Kingdom, where the Respondent is apparently domiciled, makes it highly unlikely that the Respondent did not have knowledge of the Complainant’s rights in the trademark AMBIEN. Having in mind the above, the Panel concludes that the Respondent must have been aware of the Complainant’s trademark at the time of the registration of the disputed domain name and that the Respondent registered the disputed domain name in bad faith.

The circumstances of the case indicate that the Respondent has registered and used the disputed domain name primarily for the purpose of selling or advertising AMBIEN products of unknown origin and quality. By using the disputed domain name in such manner, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s AMBIEN trademarks. This suggests that the Respondent acted with opportunistic bad faith and made illegitimate use of the disputed domain name.

The Panel concludes that the Respondent must have been aware of the Complainant’s trademark and had registered the disputed domain name, entirely reproducing the Complainant’s trademark, in bad faith. Furthermore, the manner in which the disputed domain name is being used clearly suggests opportunistic bad faith on the Respondent’s side. According to the Panel, the Respondent has acted with bad faith in registering and using the disputed domain name.

Accordingly, the Panel holds that the Complainant has satisfied the requirements of 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 <ambien-medication.com> be transferred to the Complainant.

Petra Pecar
Sole Panelist
Date: October 7, 2020