WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi v. / Kathleen Fasone

Case No. D2018-0412

1. The Parties

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

The Respondent is Kathleen Fasone, Massachusetts, United States of America (“United States”).

2. The Domain Name and Registrar

The Disputed Domain Name <yourambiencheap.com> is registered with Registrar of Domain Names REG.RU 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 26, 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 Complaint and amendment to the Complaint were submitted in the English language. The language of the Registration Agreement for the Disputed Domain Name is Russian. On February 26, 2018, the Center sent an email communication to the Parties in both English and Russian regarding the language of the proceeding. The Complainant filed a request that English be the language of the proceeding. The Respondent did not reply to the Center’s communication regarding the language of the proceeding, nor did it reply to the Complainant’s submission.

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 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2018.

The Center appointed Mariya Koval as the sole panelist in this matter on April 10, 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 French multinational pharmaceutical company having its headquarter in Paris (France), located in more than 100 countries and ranking fourth (4) world’s largest multinational pharmaceutical company by prescription sales (consolidated net sales amounted 33.82 billion EUR in 2016). The Complaint engages in research and development, manufacturing and marketing of varied pharmaceutical products, mainly in the prescription market, having leading positions in seven major therapeutic areas (cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine and vaccines). 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 AMBIEN Trademark.

The Complainant is the owner of the following registrations for the Trademark AMBIEN:

Trademark

Jurisdiction

Registration No.

Registration Date

IC class

AMBIEN

France

93 456 039

February 19, 1993

5

AMBIEN

European Union

003 991 999

August 17, 2004

5

AMBIEN

Algeria, Germany, Belarus, Benelux, Bulgaria, China, Croatia, Egypt, Spain, Hungary, Kazakhstan, Lichtenstein, Morocco, Monaco, Uzbekistan, Poland, Portugal, Czech Republic, Romania, Russian Federation, Saint Marin, Slovakia, Slovenia, Sudan, Switzerland, Ukraine, Vietnam, Yugoslavia, Montenegro, Italia, Serbia

International

Reg. No. 605 762

August 10, 1993

5

AMBIEN

United States

1808770

January 5, 1993

5

The Complainant operates, among others, eight domain names comprising its AMBIEN Trademark beginning from the year 2000:

- <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

The Disputed Domain Name <yourambiencheap.com> was registered on June 8, 2015.

At the date of this decision, the Disputed Domain Name is resolving to an active website, which redirects Internet users to the competing website selling pharmaceutical preparation under the AMBIEN Trademark at a discount rate.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it is a major player on the worldwide pharmaceutical market, including in the Russian Federation.

The Complainant asserts that the Disputed Domain Name is confusingly similar to the Complainant’s AMBIEN Trademark since it reproduces AMBIEN Trademark and the Complainant’s domain names in their entirety. The Complainant notes that addition of the words “your” and “cheap” to the Disputed Domain Name, and the generic Top-Level Domain (“gTLD”) extension “.com,” remains insufficient for avoiding confusing similarity.

The Complainant further contends that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name for the following reasons:

- the Respondent has never been licensed or otherwise authorized by the Complainant to use the Complainant’s trademarks or to register any domain name;

- the Respondent has not used the Disputed Domain Name in connection with a legitimate noncommercial or fair use; and

- the Respondent registered and use the Disputed Domain Name for the sole purpose of misleadingly diverting consumers into thinking that the Respondent is connected to, sponsored by or affiliated with the Complainant.

The Complainant also claims that the Respondent has registered and is using the Disputed Domain Name in bad faith that evidences by the following factors:

- since the Complainant’s AMBIEN Trademark is famous and is highly distinctive the Respondent must have had a notice as to the existence of the Complainant’s marks at the time of registering the Disputed Domain Name;

- the Disputed Domain Name was obviously registered for attracting Internet users to a website redirecting them to a competing website selling pharmaceutical goods;

- the Respondent registered and used the Disputed Domain Name for the purpose of disrupting the Complainant’s business by displaying commercial links to competing website; and

- the Respondent did not file any response to the cease and desist letter sent by the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Language of Proceedings

Paragraph 11 of the Rules states that the language of the proceeding shall be the language of the Registration Agreement unless the Panel determines otherwise. The Registrar has confirmed that the language of the Registration Agreement is Russian. The Complainant submitted the Complaint in English and further submitted a request that English be the language of proceeding referring to the reasons, that the Disputed Domain Name is comprised of Latin characters, that the Respondent lives in an English speaking country, that the website under the Disputed Domain Name is entirely in English and that the proceeding in Russian language would unduly burden the Complainant to pay for translation.

The evidence also shows that the Center provided the Respondent with an opportunity to comment on or object to the Complainants’ language request by forwarding English and Russian communications, but the Respondent failed to do so. According to the Paragraph 10(c) of the Rules “The Panel shall ensure that the administrative proceeding takes place with due expedition”. In view of the above and that the Respondent in no way is participating in this proceeding, and also taking into consideration that imposing a requirement on the Complainant to translate all the documents and evidences into Russian would unduly burden the Complainant to incur additional expenses and would delay the proceeding, the Panel accepts the Complaint as filed and concludes that it is appropriate that the language of the proceeding should be English.

B. Identical or Confusingly Similar

The Complainant is the owner of several trademark registrations for AMBIEN, including International registration, in respect of goods in International class 5 (pharmaceutical products) which are dated long before the Disputed Domain Name had been registered. The Complainant also operates huge number of domain names incorporating its AMBIEN Trademark.

Furthermore the Complainant’s AMBIEN Trademark is undoubtedly well-known that is also supported by the previous UDRP decisions, see, e.g., Sanofi-aventis v. Home, WIPO Case No.D2005-1040; SANOFI-AVENTIS v. Health Care Marketing Company, WIPO Case No. D2007-0475.

The Disputed Domain Name completely reproduces the Complainant’s AMBIEN trademark, preceding by the word “your” and followed by the word “cheap” and the gTLD “.com”. At the same time the Complainant’s AMBIEN Trademark is recognizable in the Disputed Domain Name. The Panel finds that addition of generic words to the Disputed Domain Name such as “your” and “cheap” does not prevent the finding of confusing similarity between the Complainant’s AMBIEN Trademark and the Disputed Domain Name. Moreover, the Panel considers that in this case the words “your” and “cheap” even strengthens the overall impression that the Disputed Domain Name is connected with the Complainant’s Trademark and business. Accessing the Disputed Domain Name the Internet users would most likely presume that it refers to the special price propositions for purchasing the Complainant’s famous pharmaceutical preparation under the AMBIEN Trademark.

As previous UDRP panels have acknowledged, the incorporation of a trademark in its entirety is typically sufficient to establish that a domain name is confusingly similar to the complainant’s registered mark. See e.g., See Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (“The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark”).

Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s AMBIEN Trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. Therefore paragraph 4(a)(i) of the Policy has been satisfied.

C. Rights or Legitimate Interests

The Complainant claims that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. The Complainant has established the rights in the AMBIEN Trademark and states that it has never licensed or authorized the Respondent to use its Trademark in any way.

Paragraphs 4(c)(i)(iii) of the Policy determines a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interest in a domain name. The circumstances are: (i) using the domain name in connection with a bona fide offering of goods and services; (ii) being commonly known by the domain name; or (iii) making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert to consumers.

The Panel finds that according to the information on website under the Disputed Domain Name it is obvious that the Respondent registered and used the Disputed Domain Name with the only intent of commercial gain by attracting the consumers to its online drugstore. In view of this the Panel concludes that the Respondent should definitely have been aware of the Complainant and of its famous insomnia aid under the AMBIEN Trademark. Also in accordance with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5.1, even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. Therefore the addition of the generic terms “your” and “cheap” to the Complainant’s Trademark in the Disputed Domain Name also evidences that the Respondent was well familiar with the AMBIEN Trademark when he registered the Disputed Domain Name and has done so for the only purpose of association and relation with the well-known Complainant’s AMBIEN Trademark.

Therefore the Panel accepts the incontrovertible fact that nothing indicates the use of the Disputed Domain Name by the Respondent in connection with a bona fide offering of goods or services prior to the Complainant’s use and registration of the AMBIEN Trademark. Moreover the registration and use of the Disputed Domain Name for redirecting Internet users to the competing website obviously cannot constitute bona fide offering goods that also have been considered by the previous UDRP panels, see e.g., Abbott Laboratories v. United Worldwide Express Co., Ltd., WIPO Case No. D2004-0088.

Furthermore the Panel ascertains that the Respondent, being a natural person, is not commonly known by the Disputed Domain Name that demonstrates a lack of rights or legitimate interests in accordance with paragraph 4(c)(ii) of the Policy.

Finally, Respondent did not reply to Complainant’s cease and desist letter as well as to the Complainant’s arguments and does not take part in the administrative proceedings. This is also an indication of the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name.

In view of the foregoing, the Panel considers that the Complainant has satisfied the second element of the Policy.

D. Registered and Used in Bad Faith

As stated above, it is obvious that the Respondent registered the Disputed Domain Name in full knowledge of the Complainant’s AMBIEN Trademark and of the Complainant’s business.

Further, on the date of this Decision, the Panel finds that the Disputed Domain Name is resolving to an active website, which redirects Internet users to the competing website selling pharmaceutical preparation under the AMBIEN Trademark. Moreover the website contains the statement that the consumers are able to “buy ambien online at the cheapest rates”. According to the WIPO Overview 3.0, section 3.1.3 panels have applied the notion of a “competitor” beyond the concept of an ordinary commercial or business competitor to also include the concept of “a person who acts in opposition to another” for some means of commercial gain, direct or otherwise. Therefore the Panel comes to the conclusion that the Respondent has registered and has been using the Disputed Domain Name primarily to take advantage of the Complainant’s goodwill and reputation and to disrupt the Complainant’s business.

The Panel also notes that the well-known Complainant’s AMBIEN Trademark has been completely incorporated in the Disputed Domain Name and this Trademark is clearly recognizable as such in the Disputed Domain Name. Addition of the terms “your” and “cheap” to the AMBIEN Trademark does not influence over an impression of strong association of the Disputed Domain Name with the Complainant’s Trademark. Previous UDRP panels have concluded that in appropriate circumstances, bad faith is established where the Complainant’s Trademark has been well-known or in wide use at the time of registering a domain name, see, e.g., CHANEL, INC. v. ESTCO TECHNOLOGY GROUP, WIPO Case No. D2000-0413.

The Respondent’s bad faith is also clearly demonstrated by the fact that the Complainant has informed the Respondent about its established rights in the AMBIEN Trademark by cease and desist letter requesting the immediate transferring of the Disputed Domain Name. The Respondent ignored not only the above cease and desist letter but also the Center’s written notice which does not suggest on the part of the Respondent’s good faith.

Further on the date of initial filing the Complaint the Respondent used privacy service registration for a clear purpose of hiding its identity which further supports a finding of the Respondent’s bad faith.

In view of the foregoing the Panel concludes that the Disputed Domain Name was registered and is being used in bad faith.

Respectively, the Panel concludes that the third element of the Policy has been 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 <yourambiencheap.com> be transferred to the Complainant.

Mariya Koval
Sole Panelist
Date: April 23, 2018