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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi v. Anna Bogdanova

Case No. D2019-2832

1. The Parties

1.1 The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France (the “Complainant”).

1.2 The Respondent is Anna Bogdanova, Russian Federation (the “Respondent”).

2. The Domain Name and Registrar

2.1 The disputed domain name <ambienoral.com> (the “Disputed Domain Name”) is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2019. On November 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 20, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

3.2 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”).

3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2019.

3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on January 15, 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

4.1 The Complainant in this administrative proceeding is Sanofi, a French multinational pharmaceutical company with its head office in Paris, France. The Complainant is said to also engage in research and development, manufacturing, and marketing of pharmaceutical products for sale in the prescription market and for over-the-counter medication. The Complainant is said to be a full member of the European Federation of Pharmaceutical Industries and Associations (EFPIA) and benefits from a large portfolio of high-growth drugs. The Complainant is also said to be based in more than 100 countries on five continents employing 100,000 people. The Complainant offers a wide range of patented prescription drugs necessary for the treatment of 7 major therapeutic areas namely cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine, and vaccines. The Complainant’s worldwide recognition is acknowledged in the annual: “L2 Digital IQ Index: Pharmabrand & Healthcare Providers” worldwide brand survey issued on April 18, 2011 wherein the Complainant is referred to in reference to its activities engaged in promoting patient resources. The Complainant is therefore described as a major player in the worldwide pharmaceutical market.

4.2 The Respondent is Anna Bogdanova said to be based in Russia and according to the WhoIs database registered the Disputed Domain Name <ambienoral.com> on February 20, 2018. The disputed domain names resolves to a website apparently offering the Complainant’s drugs for sale.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant asserts that the Disputed Domain Name <ambienoral.com> is identical or confusingly similar to the Complainant’s trademark AMBIEN. In support of the assertion the Complainant states that it is the rightful owner of the following trademarks among others, namely:

- French trademark AMBIEN No. 93456039 registered on February 19, 1993, in class 5 and duly renewed;

- European Union trademark AMBIEN No. 003991999 filed on August 17, 2004, and registered on November 28, 2005 in class 5;

- International trademark AMBIEN No. 605762 registered on August 10, 1993, in class 5 and duly renewed; and

- United States of America trademark AMBIEN No. 1808770 registered on December 7, 1993, in class 5 and duly renewed.

The Complainant also states that it is the owner of the following domain names amongst others used by the Complainant in connection with its AMBIEN pharmaceutical products namely: <ambien.com>, <ambien.eu>, <ambien.fr>, <ambien.us>, <ambien.net>, <ambien.info>, <ambien.org>, and <ambien.mobi>. The Complainant alludes to the fact that all the above-mentioned trademarks and domain names containing the distinctive term AMBIEN were all registered before the Respondent registered the Disputed Domain Name.

5.2 The Complainant in further support of the confusing similarity requirement advances further submissions as follows. That the Disputed Domain Name <ambienoral.com> reproduces the Complainant’s trademark AMBIEN in its entirety considering that the trademark has no particular meaning and is highly distinctive. That the confusing similarity requirement is established regardless of the addition of the term “oral” and the gTLD extension “.com”, following the decision in Oki Data Americas Inc. v. ASD Inc., WIPO Case No. D2001-0903 where the Panel held as follows: “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”. That the addition of the generic word “oral” remains insufficient to prevent a finding of confusing similarity, but rather will suggest to Internet users that the Disputed Domain Name resolves to a website that sells the Complainant’s pharmaceutical products. The Complainant in this regard refers to several previous decisions including a previous decision in Sanofi v. Roslyn Blowem / Blowem Inc, WIPO Case No. D2016-2081. That the likelihood of confusion is ascertained by the reputation of the Complainant’s trade name, trademarks, domain names and more generally speaking its goodwill.

5.3 The Complainant also contends that the Respondent has no rights or legitimate interests regarding the Disputed Domain Name on the following grounds. Firstly, the Respondent’s name bears no resemblance to the Complainant’s trademark AMBIEN. Secondly, the Complainant has never licensed or otherwise authorised the Respondent to register any domain name with the Complainant’s trademark. Thirdly, the 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 accordance with paragraph 4(c)(i) of the Policy. Furthermore in this regard, the Complainant submits that the Respondent has registered the Disputed Domain Name solely for the purpose of misleadingly diverting consumers into thinking that the Respondent is in some way or another 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 states further that the Disputed Domain Name resolves to a blog dealing with the Complainant’s drugs. The blog is said to contain a number of articles and “Ambien Links” and by clicking on the hypertext links, the Internet user is redirected to websites through which pharmaceutical products can be purchased at a discount. Therefore it is further submitted that the Respondent is more than likely generating click-through revenue from such listings in addition to commission revenue from sites through links on its homepage which does not account for a noncommercial or fair use of the Disputed Domain Name in any respect.

5.4 As regards the question of bad faith registration and use, the Complainant advances the following submissions. First is that considering the famous and distinctive nature of the Complainant’s trademark AMBIEN the Respondent must have had at least constructive if not actual notice of the existence of the Complainant’s trademark at the time the Respondent decided to register the Disputed Domain Name. Secondly, the Complainant asserts that the Disputed Domain Name has obviously been registered for the purpose of attracting Internet users to the Respondent’s website by creating a likelihood of confusion between the Complainant’s AMBIEN trademark and domain names, constantly used in combination with the mother brand SANOFI. Thirdly, as the Disputed Domain Name redirects Internet users to a website that is not the official website of the Complainant’s products, it is evident that the circumstances indicate that the Respondent has registered the Disputed Domain Name for the purpose of trying to gain unfair benefit of the Complainant’s goodwill and reputation. Fourthly, the Respondent has clearly registered the Disputed Domain Name for the purpose of disrupting the Complainant’s business by displaying commercial links which redirect Internet users to competing websites selling pharmaceutical goods.

B. Respondent

5.5 The Respondent did not reply to the Complainant’s contentions, in the circumstances, the Panel shall draw such adverse inferences from the failure of the Respondent to reply as it considers appropriate.

6. Discussion and Findings

6.1 Under paragraph 4(a) of the Policy, to succeed in the administrative proceeding the Complainant must prove that:

i) the Disputed Domain Name is identical and confusingly similar to the trademark or service mark of the Complainant;

ii) the Complainant 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.

6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in any administrative proceeding.

A. Identical or Confusingly Similar

6.3 This Panel finds and accepts that the Complainant is a well-known multinational pharmaceutical company and owns several trademark registrations of the AMBIEN trademark in a considerable number of countries in Europe, North Africa, Asia, and in the United States of America. The Complainant is also the registrant of several domain names incorporating the AMBIEN trademark. Accordingly, the Panel finds that upon a visual examination of the Disputed Domain Name <ambienoral.com> the Disputed Domain Name is undoubtedly confusingly similar to the Complainant’s AMBIEN trademark. In essence, the Disputed Domain Name wholly incorporates the Complainant’s trademark. The Panel further accepts that the mere addition of the dictionary term “oral” and the gTLD extension “.com” does absolutely nothing to prevent a finding of confusing similarity when a Panel is engaged in a confusing similarity test. In this regard, the Panel relies first on the decision in Oki Data Americas Inc. v. ASD Inc, supra where the Panel held as follows: “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”. Secondly, the Panel relies on the detailed discussion on the test for confusing similarity as appears in sections 1.7, 1.8, and 1.11 of the WIPO Overview of WIPO Panel views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

6.4 Therefore the Panel is satisfied that the Complainant has established that the Disputed Domain Name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

6.5 The Panel is also satisfied that the Respondent has no rights or legitimate interests in the Disputed Domain Name within the ambit of paragraph 4(c) of the Policy. The Respondent has failed to adduce any evidence of engaging in any actual bona fide offering of goods or services, nor a legitimate non-commercial or fair use of the Disputed Domain Name within the ambit of paragraph 4(c) of the Policy. As argued by the Complainant the Panel is indeed satisfied that the Respondent has no affiliation whatsoever with the Complainant and has not been authorised or licensed by the Complainant to register the Disputed Domain Name and neither has the Respondent provided any evidence to establish that the Respondent has commonly been known by the Disputed Domain Name. On the contrary, what the evidence advanced by the Complainant establishes, is that the Disputed Domain Name resolves to a blog that redirects Internet users to competing websites that advertise pharmaceutical products, including the Complainant’s Ambien drugs, for sale at a discounted price. The Panel finds that such conduct by the Respondent can by no means be described as legitimate noncommercial or fair use activity within the ambit of the Policy.

6.6 In the circumstances the, Panel finds that the Complainant has established that the Respondent does not possess any rights or legitimate interests in the Disputed Domain Name as specified in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.7 Turning to the question of bad faith registration and use, the Panel has taken into account a number of undisputed factors to conclude that the Respondent undoubtedly registered the Disputed Domain Name in bad faith with a view to exploiting the worldwide reputation of the Complainant’s profile and trademarks.

6.8 In the first instance, the Panel finds that it is inconceivable that the Respondent was not aware of the Complainant’s extensive worldwide activity in the pharmaceutical industry at the time of registering the Disputed Domain Name on February 20, 2018. Secondly, the Panel finds that the Respondent undoubtedly created the Disputed Domain Name solely for the purpose of exploiting the Complainant’s goodwill and reputation; which is further demonstrated by the creation of a likelihood of confusion with the Complainant’s trademarks and domain names as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and the products advertised for sale thereat. Thirdly, the Panel has no hesitation in finding that the Respondent registered the Disputed Domain Name for the purpose of disrupting the Complainant’s business by displaying links which redirect Internet users to a competing website selling pharmaceutical goods. Fourthly, the Panel finds that the fact that of the Respondent’s use of a privacy protection shield in the past taken together with all the other undisputed factors above goes further to establish the Respondent’s bad faith registration and use of the Disputed Domain Name. Fifthly as indicated in paragraph 5.5 above, the Panel has drawn adverse inferences from the failure of the Respondent to reply to the contentions of the Complainant in this proceedings.

6.9 Accordingly, the Panel is equally satisfied that the Respondent registered the Disputed Domain Name in bad faith.

7. Decision

7.1 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 <ambienoral.com> be cancelled.

Ike Ehiribe
Sole Panelist
Date: February 10, 2019

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