WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. David Mark
Case No. D2019-1540
1. The Parties
Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
Respondent is David Mark, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <ambiencost.com> is registered with Crazy Domains FZ-LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2019. On July 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 3, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details and contact information for the disputed domain name.
The Center verified that 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 July 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 28, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 29, 2019.
The Center appointed Roberto Bianchi as the sole panelist in this matter on August 14, 2019. 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 is a leading multinational pharmaceutical company with headquarters in Paris. In 2004, the company was formed as Sanofi-Aventis by the merger of Aventis and Sanofi-Synthélabo. In May 2011, it changed its name to Sanofi.
Complainant developed a drug for the treatment of insomnia. The drug is marketed under the trademark AMBIEN.
Complainant owns, inter alia, the following registrations:
AMBIEN, French Trademark Registration No. 93456039, registered on February 19, 1993, duly renewed, covering pharmaceutical products in class 5.
AMBIEN, European Union Trademark Registration No. 003991999, registered on November 28, 2005, filed on August 17, 2004, covering pharmaceutical preparations in class 5.
AMBIEN, International Trademark Registration No. 605762 (based on French Trademark No. 93456039), registered on August 10, 1993, covering pharmaceutical products in class 5, duly renewed, designating Algeria, Belarus, Benelux, Bulgaria, China, Croatia, Czech Republic, Egypt, Germany, Hungary, Italy, Kazakhstan, Liechtenstein, Monaco, Montenegro, Morocco, Poland, Portugal, Romania, Russian Federation, San Marino, Serbia, Slovakia, Slovenia, Spain, Sudan, Switzerland, Ukraine, Uzbekistan and Viet Nam.
AMBIEN, United States Trademark Registration N° 1808770, registered on December 7, 1993, filed on January 5, 1993, duly renewed, covering pharmaceutical preparations for the treatment of sleep disorders in class 5. First use in commerce: September 16, 1992.
Between 2000 and 2006, Complainant registered the following domain names: <ambien.com>, <ambien.eu>, <ambien.fr>, <ambien.us>, <ambien.net>, <ambien.info>, <ambien.org>, <ambien.mobi>, and <ambien.us>.
The record for the disputed domain name was created on December 24, 2018.
Presently, the disputed domain name does not resolve to an active website. According to evidence submitted by Complainant, the disputed domain name used to resolve to a website selling Complainant’s AMBIEN-branded drug as well as Complainant’s competitors’ drugs.
5. Parties’ Contentions
Complainant contends as follows:
The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Firstly, the disputed domain name reproduces the AMBIEN trademarks and domain names in their entirety, bearing in mind that these identifiers do not have any particular meaning and are therefore highly distinctive. Secondly, in the disputed domain name, Complainant’s trademarks are the dominant part. Therefore, the disputed domain name is confusingly similar to the mark AMBIEN despite the addition of the generic term “cost” and the generic Top-Level Domain (“gTLD”) “.com”. The generic word “cost” refers to pricing details and is insufficient to avoid confusing similarity, and rather increases the inherent risk of confusion.
Respondent has no rights or legitimate interests in respect of the disputed domain name. The name “David Mark” does not bear any resemblance with the word “Ambien”, which has no meaning and is highly distinctive. Complainant has never licensed or otherwise authorized Respondent to use its trademarks in any domain name. There is no relationship whatsoever between the Parties.
Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The website at the disputed domain name is used as a bait and switch, only for unfairly attracting Complainant’s consumers. The disputed domain name was registered for the sole purpose of misleadingly diverting consumers into thinking that Respondent is in some way connected to, sponsored by or affiliated with Complainant and its business, or that Respondent’s activities are approved or endorsed by Complainant.
The disputed domain name resolves to a blog dealing with AMBIEN drugs. The page contains a number of articles and “Ambien” links. By clicking on each of the links, the Internet user is redirected to websites through which Internet users can buy pharmaceutical products at a discounted price.
Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use activity, despite the fact that Respondent’s website apparently connects to competition websites. Respondent has not made a noncommercial or fair use of the disputed domain name as the blog page contains a number of hypertext listings, including links to websites advertising, inter alia, pharmaceutical products. Respondent is more likely than not generating click-through revenue from such listings, in addition to commission revenue from sites through links on its homepage.
The disputed domain name was registered and is being used in bad faith.
Respondent does not have any legitimate interest in the disputed domain name. Complainant is a leading pharmaceutical company, ranking first in Europe and fourth in the world. SANOFI is one of the most cybersquatted trademarks. Furthermore, Complainant is the owner of AMBIEN trademarks that are well known and famous worldwide, and of domain names reproducing this mark. Given the distinctive nature of the mark AMBIEN, Respondent is likely to have had, at least, constructive, if not actual notice, as to the existence of Complainant’s marks at the time it registered the disputed domain name. This suggests that Respondent acted with opportunistic bad faith in registering the disputed domain name in order to make an illegitimate use of it.
The disputed domain name has been registered for attracting Internet users to Respondent’s website by creating a likelihood of confusion with the AMBIEN trademarks and domain names, constantly used in combination with mother brand SANOFI.
Where the well-known status of a complainant’s trademarks is well established, numerous panel decisions constantly acknowledge that this consideration is, in itself, indicative of bad faith registration and use. Numerous panel decisions have recognized the reputation of the AMBIEN trademarks. Thus, Respondent must have been aware of the risk of deception and confusion that would inevitably arise from the registration of the disputed domain name since it could lead Internet users searching for official AMBIEN websites to the website at the disputed domain name. This knowledge characterizes Respondent’s bad faith registration.
The disputed domain name is being used in bad faith. Given the famous and distinctive nature of the marks AMBIEN, Respondent is likely to have had at least constructive if not actual notice of Complainant’s marks at the time he registered the disputed domain name. This suggests that Respondent acted with opportunistic bad faith in registering the name in order to make an illegitimate use of it. This is sufficient to characterize bad faith use under paragraph 4(b)(i) of the Policy.
Respondent has registered the disputed domain name primarily for the purpose to gain unfair benefit of Complainant’s goodwill and reputation by creating a likelihood of confusion with Complainant’s trademarks and domain names as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and the products displayed/advertised for sale on it. Respondent also has registered and used the disputed domain name for disrupting Complainant’s business, by displaying commercial links that redirect Internet users to a competing website selling pharmaceutical goods. This constitutes further evidence of bad faith.
Complainant sent to the registrant of the disputed domain name a cease and desist letter, explaining that the use of the disputed domain name constituted a breach of Complainant’s prior rights in the trademarks AMBIEN, and requesting the immediate transfer of the disputed domain name. Respondent did not reply to this letter. Respondent’s failure to express any denial or explanation reinforces the inference of bad faith registration and bad faith use.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has submitted printouts from various official trademark databases for its registrations for AMBIEN. See section 4 above. Therefore, the Panel is satisfied that Complainant has rights in this mark for purposes of Policy paragraph 4(a)(i).
The Panel notes that in the disputed domain name Complainant’s trademark AMBIEN is incorporated in its entirety, with the addition of the dictionary term “cost” as a suffix and the - technically necessary - gTLD “.com”. It is well established that such kind of additions would not prevent a finding of confusing similarity under Policy paragraph 4(a)(i). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark AMBIEN.
B. Rights or Legitimate Interests
The Panel notes that according to the relevant WhoIs data for the disputed domain name, Respondent`s name is “David Mark”, and that there is no evidence that Respondent is known - commonly or otherwise - by the disputed domain name. Therefore, Policy paragraph 4(c)(ii) does not apply. Nor is there evidence of any relationship, authorization or license between Complainant and Respondent.
With Annex 12 to the Complaint, Complainant has shown that the website at the disputed domain name displayed links entitled “Buy Tramadol Online”, “Buy Xanax Online”, “Buy Soma Online”, “Buy Ambien Online”, “Buy Cialis Online”, “Buy Viagra Online”, “Buy Ultram Online” et cetera. The Panel also notes that several of such links are offerings to sell well-known pharmaceutical products from sources other than Complainant, including from competitors.
Since these offerings were made on a website at a domain name confusingly similar to Complainant’s mark, the Panel considers that Respondent was trying to obtain commercial gain from a false association with Complainant, without disclosing the nature of its relationship with Complainant (or the absence of any such relationship), mainly by selling goods from competitors of Complainant. Respondent’s offerings on the website at the disputed domain name clearly do not fulfill the requirements of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, as reflected in the WIPO Overview 3.0, section 2.8.
Clearly, the use of the disputed domain name as shown cannot be a bona fide use pursuant to Policy paragraph 4(c)(i), or a fair or legitimate noncommercial use, without intent for commercial gain misleadingly to divert consumers, according to Policy paragraph 4(c)(iii).
Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. For its part, Respondent failed to provide the Panel with any explanation or reasons whatsoever for having registered and used the disputed domain name as shown. Presently, the disputed domain name does not resolve to any active website.
For all the above reasons, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel notes that Complainant’s registrations and use of its mark AMBIEN predate the registration of the disputed domain name by well over two decades, including in the United States, the country of residence of Respondent, where the AMBIEN mark was registered in 1993.
The Panel shares the view of prior UDRP panels that the AMBIEN trademark is well known or famous. See e.g., Sanofi-Aventis, Aventis Inc. v. Searchology, Domain Registrant, WIPO Case No. D2007-0889 (“AMBIEN is a leading prescription sleep aid”); Sanofi-Aventis v. Domain Guru, WIPO Case No. D2005-1359 (“AMBIEN corresponds to the Complainant’s trademark and products, and certainly […] corresponds to the leading prescription sleep aid in the United States, where the Respondent is located.”); Sanofi-Aventis v. Davie Kearney, WIPO Case No. D2006-0861 (“Apart from the famous nature of the Complainant’s marks, the domain names are both confusingly similar to the Complainant’s mark AMBIEN”).
These facts lead the Panel to conclude that Respondent perfectly knew of Complainant, its AMBIEN mark and product, and targeted them at the time of registering the disputed domain name. Given the circumstances of this case, the Panel finds that the registration of the disputed domain name was in bad faith.
As shown above, the website at the disputed domain name was used to market the AMBIEN drug, together with pharmaceutical products from providers other than Complainant, i.e., competitors, and without any license or authorization from Complainant. By using the disputed domain name as shown, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant’s mark AMBIEN as to the source, sponsorship, affiliation, or endorsement of its website or location or of the products or services on its website or location. This is a circumstance of registration and use in bad faith pursuant to Policy paragraph 4(b)(iv).
Presently, the disputed domain name does not resolve to any active website. The Panel is of the view that the passive holding of the disputed domain name will not prevent a finding of bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In the instant case, the following circumstances are further indicators of Respondent’s bad faith:
(i) the website at the disputed domain name was deactivated following the filling of the Complaint;
(ii) Complainant’s AMBIEN trademark has a strong reputation and is widely known in the United States, the country of residence of Respondent;
(iii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name;
(iv) the courier entrusted with the delivery of the Written Notice reported that the recipient’s (i.e., Respondent’s) address was incorrect, which prevented the delivery of the Written Notice. It is reasonable to conclude that Respondent at least has failed to correct false or outdated contact details, in breach of its registration agreement;
(v) considering the present lack of any active use of the disputed domain name and its previous use, it is not possible to conceive of any plausible actual or contemplated good faith use by Respondent; and
vi) Respondent failed to reply to the Complaint.
The Panel concludes that the disputed domain name was registered and is being used in bad faith.
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 <ambiencost.com> be cancelled.
Date: August 28, 2019