The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is Harjan Singh, India.
The disputed domain name <buyambienonline.net> (the “Disputed Domain Name”) is registered with Domainshype.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2019. On the same day, 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.
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 the Respondent of the Complaint, and the proceedings commenced on December 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 26, 2019.
The Center appointed Nicholas Weston as the sole panelist in this matter on January 16, 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.
The Complainant is a French multinational pharmaceutical company that operates a life sciences business in more than 100 countries with consolidated net sales in 2018 of more than EUR 34 billion. The Complainant holds registrations for the trademark AMBIEN in a number of countries, which it uses to designate an insomnia medication, including, for example, French registration No. 93456039 in class 5 that has been registered since February 19, 1993.
The Complainant owns numerous domain names that comprise of, or contain, the trademark AMBIEN, including the domain name <ambien.com>, which was registered on April 12, 2000.
The Disputed Domain Name <buyambienonline.net> was registered on August 10, 2019 and resolved to a website where purported AMBIEN branded medication was offered for sale online.
The Complainant cites its trademark registrations for AMBIEN in various countries as prima facie evidence of ownership.
The Complainant submits that the trademark AMBIEN is well known and that its rights in that trademark predate the Respondent’s registration of the Disputed Domain Name <buyambienonline.net>. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the AMBIEN trademark and that the similarity is not removed by the addition of the words “buy” and “online”, and addition of the generic Top-Level Domain (“gTLD”) “.net”. In support of that contention, the Complainant cites Sanofi v. Che Macdulf, WIPO Case No. D2018-2414, a decision that involved a disputed domain name <buyambienonline.org> that resulted in its transfer to the Complainant and Sanofi v. Domain Administrator, See PrivacyGuardian.org / SEO, Erik Bilevic, WIPO Case No. D2019-0574, a decision that involved a disputed domain name <buyingambienonline.com> that also resulted in its transfer to the Complainant.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is being used to divert Internet users to “a website dealing with Ambien drugs. The page contains a presentation of the Ambien products with a reference to the Complainant” and asserts that the Complainant “has never licensed or otherwise authorized the Respondent to use its trademarks or to register any domain name including the above-mentioned trademarks”.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the fame and long standing prior use of the Complainant’s trademark, and that it was being used in “an effort to create a likelihood of confusion with the Complainant’s trademarks and domain names” as part of a scheme aimed at “disrupting the Complainant’s business”.
The Respondent did not reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark AMBIEN. The propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the AMBIEN trademark, the Panel observes that the Disputed Domain Name comprises: (a) the word “buy”; (b) followed by an exact reproduction of the Complainant’s AMBIEN trademark; (c) followed by the word “online”; and (d) followed by the gTLD “.net”.
It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “buyambienonline”.
It is also well-established that where a domain name incorporates a complainant’s trademark in its entirety, it may be confusingly similar to that mark despite the addition of a descriptive word such as, in this case, “buy” or “online” (see Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033; Hoffmann-La Roche Inc. v. Andrew Miller, supra).
In line with numerous previous UDRP panels decisions, this Panel accepts that the addition of the words “buy” and “online” do nothing to dispel the confusing similarity (see: Sanofi v. Che Macdulf,supra (“A comparison between the Disputed Domain Name and the Trademark shows that the Disputed Domain Name can be considered as confusingly similar to the Trademark, because the Trademark is clearly recognizable within the Disputed Domain Name to which descriptive elements have been added (i.e. ‘buy’ and ‘online’).”); F. Hoffmann-La Roche AG v. Globex International, WIPO Case No. D2006-1008 (“The mere addition of the two generic words ‘buy’ and ‘online’ preceding the trademark does not eliminate the similarity between the Complainant’s marks and the Domain Name, as ‘buyonline’ is a descriptive component of the disputed domain name without any significance.”); Roche Products Limited v. PrivacyProtect.org / Stas Chernov,
WIPO Case No. D2011-2096 (“the descriptive suffix ‘buyonline’ as used in the disputed domain name cannot save the domain name”); F. Hoffmann-La Roche AG v. Ivan Varypaev, WIPO Case No. D2014-0112, (“The only difference between the Domain Name and the trademark of the Complainant is the addition of the words ‘buy’ and ‘online’. The addition of the mentioned words does not add a distinctive element to the Domain Name and does not render it dissimilar to the trademark of the Complainant.”).
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the trademark AMBIEN is not a dictionary word but rather a highly distinctive name and well-known brand. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark. The Complainant submits that the Respondent “has therefore clearly adopted the Complainant’s trademarks and domain name for its own use and incorporated them into his domain name in order to confuse Internet users into believing Respondent is linked to Complainant, which in any case does not constitute a bona fide offering of goods and services”.
In F. Hoffmann-La Roche AG v. Veselko Dragic, Wuntux Trade Ltd., WIPO Case No. D2017-0034, involving an online pharmacy, the Panel stated:
“A respondent can also show that it was using a domain name in connection with a bona fide offering of goods or services. However, it is difficult to accept that an online pharmacy, selling or purporting to sell ‘brand and generic mediciations [sic] ...’ from a variety of ‘legit manufacturers ...’, to which a confusingly similar domain name resolves, (particularly one that is confusingly similar because it incorporates a widely‑known mark of one particular pharmaceutical manufacturer out of many mentioned on the website concerned), could amount to a bona fide offering of goods or services. […] There is no evidence before this Panel that suggests that the Respondent has rights or legitimate interests in the Domain Name or that there would be anything inappropriate in a finding that reflects this. Accordingly, this Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.”
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a Complainant’s mark, and there is no disclaimer on the website at the Disputed Domain Name, therefore it cannot meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name.
This Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is engaging in an illegitimate commercial use of the Disputed Domain Name by pretending to be associated with the Complainant for the purpose of misleading consumers based on the wide recognition of the Complainants’ mark AMBIEN. It could therefore be inferred that the Respondent is opportunistically using the Complainant’s well-known mark in order to attract Internet users to its website and has been using the Disputed Domain Name to divert Internet traffic to its web pages.
The Panel finds for the Complainant on the second element of the Policy.
The third element of the Policy that a complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
The evidence that the Respondent registered and has used the Disputed Domain Name in bad faith is overwhelming. The trademark AMBIEN is so famous a mark that it would be inconceivable that the Respondent might have registered the Disputed Domain Name without knowing of it (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Sanofi-Aventis v. N/A, WIPO Case No. D2009-0705 (“the Complainant’s trademark AMBIEN itself has no dictionary meaning and therefore is highly distinctive, and the Complainant’s widely-known trademark has been registered in numerous jurisdictions for some long time”); Sanofi-Aventis v. Max Egozin, WIPO Case No. D2010-1514 (“the mark AMBIEN is an invented word with a high degree of individuality and distinctiveness, and also that the said mark is widely known by reason of its extensive use and registration around the world”); Sanofi v. WhoisGuard Protected, WhoisGuard, Inc. / Vladimir Talko, WIPO Case No. D2018-0411 (“Complainant’s well-known marks”); Sanofi v. Margarita Pilan, WIPO Case No. D2019-0572 (“the Complainant’s trademark is distinctive and well known worldwide particularly in the pharmaceutical field”).
Further, a gap of more than 20 years between registration of the Complainant’s trademark and the Respondent’s registration of the Disputed Domain Name (containing the trademark) can in certain circumstances be an indicator of bad faith. (See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Complainant’s rights in its trademark predate any rights that could possibly flow from the Respondent’s registration by more than 26 years.
The Panel finds that the trademark AMBIEN is so well known internationally that it is inconceivable that the Respondent might have registered a domain name similar to or incorporating the mark without knowing of it.
On the issue of use, the Panel notes that the Disputed Domain Name used to resolve to an online website that purportedly offers AMBIEN branded medications for sale. The Complainant has supplied evidence that labelling on an AMBIEN branded product offered for sale by the Respondent states “Warning: May cause racism”. The Complainant submits that “displaying false information relating to medical field which [is] incorrect […] constitutes further evidence of [Respondent’s] bad faith”.
In line with prior UDRP panel decisions, the Panel finds that the obvious danger of online consumers being afforded inaccurate, incomplete or misleading information about medical products, services and applications and the probable diversion of actual sales reinforces the Respondent’s bad faith (see: Lilly ICOS LLC v. Tudor Burden, Burden Marketing, WIPO Case No. D2004-0794, Roche Products Inc. v. Michael Robert, WIPO Case No. D2008-1155; Parrot S.A. v Whois Service, Belize Domain WHOIS Service, WIPO Case No. D2007-0779; Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474).
This Panel finds that the Respondent has taken the Complainant’s trademark AMBIEN and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users for commercial gain.
Accordingly, the Panel finds that the 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 <buyambienonline.net> be cancelled.
Nicholas Weston
Sole Panelist
Date: January 28, 2020