The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Pavel Bubnov of Moscow, Russian Federation.
The disputed domain name <buyambien.net> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2019. On March 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 18, 2019, 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 March 18, 2019 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 March 21, 2019.
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 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 15, 2019.
The Center appointed Torsten Bettinger as the sole panelist in this matter on April 30, 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.
The Complainant is a French multinational pharmaceutical company and established in more than 100 countries on all five continents, employing 100,000 people. The Complainant engages in research and development, manufacturing and marketing of pharmaceutical products for sale in the prescription market, and it develops over-the-counter medication.
The Complainant holds registrations for AMBIEN trademark in many jurisdictions, including the European Union Trademark No. 003991999 for AMBIEN (word mark), filed on August 17, 2004 and registered on November 28, 2005; the United States of America Trademark No. 1808770 for AMBIEN (word mark) filed on January 5, 1993 and registered on December 7, 1993, and International trademark No. 605762 registered on August 10, 1993 designating among various other countries including the Russian Federation. All of these trademarks are protected for pharmaceutical products in international class 5.
The Complainant holds various domain names containing the mark AMBIEN, such as <ambien.com>, <ambien.eu> and <ambien.us>.
The Complainant’s trademark AMBIEN is used worldwide in the field of treatment of the central nervous system, in particular for an insomnia drug and has become widely known, as confirmed by previous UDRP decisions, see for example Sanofi v. Roslyn Blowem / Blowem Inc, WIPO Case No. D2016-2081; Sanofi v. Domain Administrator, PrivacyGuardian.org / Aqif Kapartoni, WIPO Case No. D2016-1136; Sanofi-Aventis v. Marie Birtel, WIPO Case No. D2011-0694 and Sanofi-Aventis v. Max Egozin, WIPO Case No. D2010-1514.
The disputed domain name was registered by the Respondent on January 5, 2016.
At the time of filing the Complaint, the disputed domain name was used for a website promoting what appears to be counterfeit products of the Complainant’s drug sold under the brand name Ambien.
The Complainant sent a cease-and-desist letter to the Respondent by email on April 16, 2018 alleging that the registration and use of the disputed domain name was infringing its trademark rights in the mark AMBIEN. The Respondent did not reply to this email.
The Complainant contends that the disputed domain name is confusingly similar to its famous trademark AMBIEN, the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent registered and is using the disputed domain name in bad faith.
With regard to the requirement of identity or confusing similarity between the trademark and the domain name pursuant to paragraph 4(a)(i) of the Policy, the Complainant submits that the disputed domain name is confusingly similar to a trademark in which it has rights as it incorporates the Complainant’s AMBIEN trademark in its entirety and only differs from the Complainant’s trademark by the addition of the descriptive term “buy”.
With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the Complainant submitted that:
- it has never permitted the Respondent to use the disputed domain name;
- the disputed domain name resolves to a website which supposedly offers counterfeit products of the Complainant’s famous Ambien products and contains false, inaccurate and misleading information which causes damage to the Complainant’s reputation:
- there is no indication that the Respondent has the intention to make a legitimate noncommercial or fair use of the disputed domain name;
Finally, with regard to the disputed domain name having been registered and being used in bad faith, the Complainant argues that:
- the trademark AMBIEN is distinctive and was internationally famous at the time of registration of <buyambien.net> and
- the registration of a domain name consisting of a famous trademark is itself sufficient evidence of bad faith registration of a domain name;
- the Respondent registered the disputed domain name knowing the Complainant’s famous AMBIEN trademark and with the intent to create confusion between the Complainant’s mark and the Respondent’s disputed domain name;
- the Respondent chose and registered the disputed domain name for the purpose of gaining unfair benefits of the Complainant’s goodwill and reputation in its AMBIEN trademark;
- the Respondent’s use of the disputed domain name for a website offering for sale counterfeit products disrupts the Complainant’s business.
The Respondent did not reply to the Complainant’s contentions.
The Complainant holds worldwide trademark registrations for AMBIEN. The disputed domain name <buyambien.net> includes the Complainant’s trademark together with the descriptive word “buy”.
It is well established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the disputed domain name is used or other marketing and use factors usually considered in trademark infringement cases. (See section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
There is consensus among the Panelist that the addition of merely descriptive wording to a trademark in a domain name does not prevent a finding of confusing similarity between a domain name and a complainant’s trademark under the first element of the UDRP. (See, for instance, Facebook, Inc. v. Sleek Names, SL Names, VSAUDHA, WIPO Case No. D2015-0547 (“The disputed domain names contain as a first and/or dominant element the Complainant’s famous trademark FACEBOOK, combined with a variety of descriptive terms, for example, ‘account’, ‘password’, ‘hacker’, ‘analytics’, ‘survey’ et cetera. The addition of these terms do not serve to distinguish the disputed domain names in any material way.”); see also, for instance, Dropbox, Inc. v. Mohd Shariq, Techinspire, WIPO Case No. D2016-1194 (“The domain name <dropbox‑support-number.com> consists of the Complainant’s registered mark DROPBOX plus the generic words ‘support’ and ‘number’ separated by hyphens. The addition of these generic words and hyphens do not serve to distinguish the domain names from the Complainant’s DROPBOX marks and the Panel finds that the domain names are confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.”); see also section 1.8 of WIPO Overview 3.0).
Finally, it has been long established under the UDRP that the specific generic Top-Level Domain (“gTLD”) “.net” is typically not to be taken into account when assessing the issue of identity or confusing similarity, except in certain cases where the applicable gTLD suffix may itself form part of the relevant trademark (see section 1.11 of WIPO Overview 3.0).
For the foregoing reasons, the Panel concludes that the disputed domain name <buyambien.net> is confusingly similar to the Complainant’s trademark AMBIEN in which the Complainant has exclusive rights.
A respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [the Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Complainant has asserted that it never permitted the Respondent to use its AMBIEN trademark and that the Respondent has no rights or legitimate interests to register and use the disputed domain name. Furthermore, the Complainant asserted that the disputed domain name resolves to a website which presumably offers counterfeit products of the Complainant’s products sold under the brand Ambien.
These assertions are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
The Respondent chose not to contest the Complainant’s allegations and has failed to come forward with any evidence to refute the Complainant’s prima facie showing that the Respondent lacks rights or legitimate interests. As there is also no evidence before the Panel that support the contrary to the Complainant’s allegation, the Panel therefore accepts the Complainant’s allegations as undisputed facts and concludes that the Complainant has satisfied the second element of the Policy set forth by paragraph 4(a)(ii).
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or
(ii) The Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed 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.
The Complainant holds trademark registrations for AMBIEN worldwide since at least 1993, including in the Russian Federation, where the Respondent is apparently located. Further the Complainant’s trademark is distinctive and well known worldwide particularly in the pharmaceutical field.
This and the fact that the disputed domain name comprises the Complainant’s trademark AMBIEN in its entirety with the addition of the term “buy” make it inconceivable that that the Respondent coincidentally selected the disputed domain name without any knowledge of the Complainant and its AMBIEN trademarks.
The Panel therefore concludes that the Respondent registered the disputed domain name in bad faith.
The Respondent has used the disputed domain name for a website that allegedly offers for sale counterfeit products of the Complainant’s products sold under the AMBIEN trademark. The Respondent did not contest these allegation and failed to submit a response or to provide any evidence of actual or contemplated good-faith use. The Respondent did also not reply to the Complainant’s correspondence prior to the filing of the Complainant.
The Panel therefore concludes that the Respondent, for commercial gain, has used the Complainant’s widely-known trademark as part of the disputed domain name in order to redirect Internet users looking for the Complainant’s goods to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Such use is also likely to damage the Complainant’s business and reputation and furthermore, to harm the health of the potential buyers of what appears to be counterfeit goods.
The Panel therefore finds that this is a classic case of cybersquatting and that the Complainant has also satisfied its burden on 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 <buyambien.net> be transferred to the Complainant.
Torsten Bettinger
Sole Panelist
Date: May 14, 2019