WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. WhoisGuard Protected, WhoisGuard, Inc. / Vladimir Talko
Case No. D2018-0410
1. The Parties
Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Vladimir Talko of Zhytomyr, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <genericambien.club> is registered with NameCheap, Inc. (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 Complainant on March 1, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on March 2, 2018.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on March 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 27, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 28, 2018.
The Center appointed Michael A. Albert as the sole panelist in this matter on April 13, 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
Complainant Sanofi is a French multinational pharmaceutical company headquartered in Paris, France. It is ranked among the world’s largest multinational pharmaceutical companies by prescription sales. Sanofi engages in research and development, manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market, though it also develops over-the-counter medication.
The company was originally formed as Sanofi-Aventis in 2004 by the merger of Aventis and Sanofi-Synthélabo. It changed its name to Sanofi in May 2011.
Complainant is a multinational company with locations in more than 100 countries and employing approximately 100,000 people. It made EUR 5.2 billion of research and development investment in 2016, which includes 47 projects in clinical development, 13 of which are at advanced stages. 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.
Complainant’s worldwide recognition was further established in the annual “L2 Digital IQ Index: Pharmabrand & Healthcare Providers” worldwide brand survey issued April 18, 2011 in which it appeared in the “Flash of Genius” section in reference to its promoting patient resources.
In the field of treatment of the central nervous system, Complainant developed and sells throughout the world a drug for the treatment of insomnia under the trademark AMBIEN.
Complainant is the registered owner of the following trademark registrations:
- French trademark number 93456039, for AMBIEN, registered on February 19, 1993 in class 5;
- European Union trademark number 003991999, for AMBIEN, filed on August 17, 2004 and registered on November 28, 2005 in class 5;
- International trademark number 605762, for AMBIEN, registered on August 10, 1993 in class 5, duly renewed and designating Algeria, Germany, Belarus, Benelux, Bulgaria, China, Croatia, Egypt, Spain, Russian Federation, Hungary, Kazakhstan, Lichtenstein, Morocco, Monaco, Uzbekistan, Poland, Portugal, Czech Republic, Romania, San Marino, Slovakia, Slovenia, Sudan, Switzerland, Ukraine, Viet Nam, Montenegro, Italy and Serbia; and
- United States of America trademark number 74345754, for AMBIEN, filed on January 5, 1993 and registered on December 7, 1993 in class 5.
Complainant is also the owner of the following domain names:
- <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; and
- <ambien.us> registered on April 19, 2002.
Complainant notes that the above-mentioned trademarks and domain names were registered prior to November 8, 2017, the registration date of the disputed domain name. According to the evidence provided by Complainant the disputed domain name redirects to a website at “www.toprxonlinemeds24.com” purporting to offer AMBIEN products for sale alongside those of Complainant’s competitors.
5. Parties’ Contentions
Complainant contends that the disputed domain name is confusingly similar to Complainant’s registered trademarks and domain names. The product Complainant sells under the AMBIEN mark is a well-established sleeping aid. The addition of the term “generic” placed before AMBIEN in the disputed domain name, and the generic Top-Level Domain (“gTLD”) extension “.club,” is insufficient to alleviate the confusing similarity between Complainant’s trademarks, its domain names and the disputed domain name; indeed, Complainant contends that the addition of the term “generic” only increases the risk of confusion.
Complainant contends that Respondent does not have any rights or legitimate interests regarding the disputed domain name. Complainant has never licensed or otherwise authorized Respondent to use its marks. Complainant contends that “WhoisGuard Protected” or “WhoisGuard, Inc.,” the registrant of the disputed domain name as indicated on the WhoIs database, is not the real registrant. WhoisGuard, Inc. is a service provided by the Registrar which allows its clients to register domain names in its name and on behalf of third parties in order to keep the true identity of the registrant secret. Therefore, Respondent does not have any legitimate interest in using the disputed domain name since the name “WhoisGuard, Inc.” does not bear any resemblance to the word “AMBIEN”. Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, so as to confer a right or legitimate interest in it in accordance with paragraph 4(c)(i) of the Policy. Rather, the disputed domain name leads to a competing website, providing inaccurate information about Complainant, and giving the misleading impression of a relationship between Complainant and Respondent.
Lastly, Complainant contends that Respondent was clearly aware of Complainant’s distinctive and well-known AMBIEN mark when registering the disputed domain name. The disputed domain name leads to a website offering AMBIEN products for sale. By clicking on the “AMBIEN” products listed in “Bestsellers” section, the Internet user is redirected to a page through which it can buy AMBIEN products. Respondent has intentionally attempted to attract, for commercial gain, Internet users to a competing website, by creating a likelihood of confusion with Complainant’s mark and company name as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or other location, constituting evidence of bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant’s rights in its AMBIEN marks are clearly established by their registration and continued use. The disputed domain name is confusingly similar to Complainant’s distinctive marks.
Neither the addition of the term “generic” placed before “ambien” in the disputed domain name, nor the gTLD extension “.club” are sufficient to alleviate the confusing similarity.
Accordingly, the Panel finds Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Respondent has no rights or legitimate interests in the disputed domain name. There is no relationship between the Parties that would grant such rights. Respondent has modified Complainant’s trademarks for its own use and incorporated them into its domain name without Complainant’s authorization.
In addition, nothing in the record reflects Respondent’s use of the disputed domain name in connection with any bona fide offering of goods or services. Rather, the website to which the disputed domain name redirects contains no disclaimer, creating the misleading impression that Respondent is somehow associated with Complainant, while at the same time, offering products of Complainant’s competitors.
Accordingly, the Panel finds Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Complainant’s AMBIEN marks are well known worldwide. The product sold under the AMBIEN mark is a well-established sleeping aid. Numerous prior UDRP panel decisions have acknowledged its name recognition, including:
- Sanofi v. Domain Administrator, PrivacyGuardian.org / Aqif Kapartoni, WIPO Case No. D2016-1136;
- Sanofi v. ContactPrivacy.org / Viktor Konin, WIPO Case No. D2012-1602;
- Sanofi-Aventis v. Marie Birtel, WIPO Case No. D2011-0694;
- Sanofi-Aventis v. Brian Nagele, WIPO Case No. D2011-0669;
- Sanofi-Aventis v. Max Egozin, WIPO Case No. D2010-1514;
- Sanofi-Aventis v. Marek Cernevic, WIPO Case No. D2010-1331;
- Sanofi-Aventis v. N/A, WIPO Case No. D2009-0705;
- Sanofi-Aventis v. Bobik Marley, Levitra Online Shop Inc, WIPO Case No. D2007-0652;
- Sanofi-Aventis v. Davie Kearney, WIPO Case No. D2006-0861;
- Sanofi-Aventis v. WhoisGuard Protected, WIPO Case No. D2005-1267;
- Sanofi-aventis v. Home, WIPO Case No. D2005-1040.
The Panel finds that is highly implausible that Respondent registered the disputed domain name unaware of Complainant’s rights and reputation. The similarity between the disputed domain name and Complainant’s well-known marks makes it unlikely that Respondent’s registration of a confusingly similar domain name was anything other than an intentional effort to capitalize on, or otherwise take advantage of, the likely confusion with Complainant’s trademark rights.
Moreover, on December 8, 2017, Complainant, through counsel, sent a letter to Respondent by email at the email address listed in the WhoIs details for the disputed domain name, advising Respondent of Complainant’s rights in its AMBIEN marks and demanding that Respondent cease and desist from all use of Complainant’s AMBIEN marks and immediately transfer the disputed domain name to Complainant. Respondent never responded to Complainant’s letter. The fact that Respondent failed to respond to the referenced notice and cease and desist demand provides further support suggesting that the disputed domain name has been registered and is being used in bad faith. See, America Online, Inc. v. Viper, WIPO Case No. D2000-1198; America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460.
Finally, the Panel considers that the use to which the disputed domain name has been put by Respondent, as set out in the section above, falls clearly within the meaning of registration and use of the disputed domain name in bad faith provided in paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <genericambien.club> be transferred to Complainant.
Michael A. Albert
Date: April 20, 2018