1.1The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France (the “Complainant”).
1.2 The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / onlinestore, willam jhonson, India (the “Respondent”).
2.1 The disputed domain name <ambienforsale.com> (the “Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2019. On November 20, 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 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 November 28, 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 November 29, 2019.
3.2 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”).
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 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 2, 2020.
3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on January 17, 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.
4.1 The Complainant in this Complaint is Sanofi, a France based multinational pharmaceutical company with its corporate head office in Paris. The Complainant is said to rank as the 4th largest pharmaceutical company by prescription of sales. The Complainant is also said to engage in research and development, manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market and also develops over-the-counter medication. The Complainant is said to be a full member of the European Federation of Pharmaceutical Industries and Associations (EFPIA). The Complainant is also said to be settled in more than 100 countries and employing 100,000 people and does benefit from a large portfolio of high-growth drugs. Also, the Complainant’s Research & Development investment is said to have amounted to EUR 5.9 billion in 2018 with a portfolio including 83 projects in clinical development of which 35 are said to be at advanced stages. The Complainant also offers a wide range of patented prescription drugs necessary for the treatment of major therapeutic areas such as cardiovascular, thrombosis, metabolic disorders and central nervous system etc. With regards to the treatment of the central nervous system, the Complainant is said to have developed and sells throughout the world a drug with demonstrated utilities for the treatment of insomnia under the trademark AMBIEN.
4.2 The Respondent is online store, william jhonson of India and according to the WhoIs database registered the Disputed Domain Name <ambienforsale.com> on July 12, 2019. According to the Complainant, the Disputed Domain Name resolves to a website purporting for sales of AMBIEN pharmaceutical products, with “AMBIEN FOR SALE” displaying prominently on the top of the website. The website also includes commercial links, which redirect Internet users to a competing website selling pharmaceutical goods.
5.1 The Complainant contends that the Disputed Domain Name <ambienforsale.com> is identical or confusingly similar to the Complainant’s trademark AMBIEN in which the Complainant has rights. In support of the contention the Complainant asserts 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 registered on November 28, 2005 in class 5;
- International trademark AMBIEN No. 605762 registered on August 10, 1993 in class 5 duly renewed and designating multiple jurisdictions; and
- United States trademark AMBIEN No. 74345754 registered on December 7, 1993 in class 5 and duly renewed.
The Complainant also asserts that it is the rightful owner of the following domain names amongst others such as:
<ambien.com>, <ambien.eu>, <ambien.fr>, <ambien.net>, <ambien.info>, <ambien.org>, <ambien.mobi>, and <ambien.us> which are used by the Complainant in connection with its AMBIEN pharmaceutical products. The Complainant further emphasises the fact that all of the above-mentioned trademarks and domain names containing the words “ambien” were all registered well before the Respondent registered the Disputed Domain Name <ambienforsale.com>.
5.2 In further support of the confusing similarity requirement the Complainant argues as follows. Firstly, that the Disputed Domain Name completely reproduces the Complainant’s AMBIEN trademark in its entirety, considering that the word “ambien” is highly distinctive and bears no particular meaning. Secondly, that the confusing similarity requirement is established despite the addition of the words “for sale” and the generic Top-Level Domain (“gTLD”) extension “.com” as held in Oki Data Americas Inc. v. ASD Inc., WIPO Case No. D2001-0903. Thirdly, that the addition of the words “for sale” remains insufficient to avoid a confusing similarity finding and on the contrary, will merely suggest to Internet users that the Disputed Domain Name resolves to a website that sells the Complainant’s AMBIEN goods following Sanofi v. Roslyn Blowem/Blowem Inc., WIPO Case No. D2016-2081. Fourthly, considering that the Complainant’s AMBIEN pharmaceutical product is a well-established sleeping aid which is known by that name and trademark in the United States, the likelihood of confusion is further heightened by the reputation and goodwill of the Complainant’s trade name, trademarks and domain names.
5.3 The Complainant also contends that the Respondent has no rights or legitimate interests regarding the Disputed Domain Name on the basis that firstly, the Complainant has never licensed or otherwise authorised the Respondent to use its trademarks or to register any domain name including the Complainant’s trademarks. Secondly, the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods and services, so as to confer a right or legitimate interest in it, in accordance with paragraph 4(c)(i) of the Policy given that the Disputed Domain Name resolves to a website clearly used as bait and switch. Fourthly, the Disputed Domain Name has been registered for the sole purpose of misleadingly diverting consumers into believing that the Respondent is in someway 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. Fifthly, the Disputed Domain Name also resolves to a website which offers Internet users fake AMBIEN drugs for sale and to a page where other pharmaceutical products can be purchased at discounted prices.
5.4 With regard to the question of bad faith registration and use, the Complainant submits as follows. Firstly it is obvious that the Respondent does not have any legitimate interests in using the Disputed Domain Name since the name “Domain administrator/ See PrivacyGuardian.org” does not bear any resemblance to the Complainant’s name or products. Secondly, considering the fame and distinctive nature of the Complainant’s AMBIEN trademark, the Respondent is likely to have had at least constructive, if not actual notice of the Complainant’s trademarks at the time of registration of the Disputed Domain Name. Thirdly, as the Disputed Domain Name resolves to websites other than the Complainant’s official website, it is obvious that the Respondent registered the Disputed Domain Name primarily for the purpose of trying to gain unfair benefit of the Complainant’s goodwill and reputation. Fourthly, the Respondent’s has 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 that sell pharmaceutical goods at discounted prices. Fifthly, the Respondent failed to respond to a cease and desist letter sent by the Complainant by email on July 29, 2019 which further reinforces the inference of bad faith registration and bad faith use following Sanofi-Aventis v. Above.com Domain Privacy/Transure Enterprise Ltd Host Master, WIPO Case No. D2009-1634.
5.5 The Respondent did not reply to the Complainant’s contentions, in the circumstances, the Panel shall draw such adverse inferences from the absence of the Respondent’s reply as it considers appropriate in the circumstances.
6.1 Under paragraph 4(a) of the Policy, to succeed in the administrative proceeding the Complainant must prove that:
(i) The Dispute 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.
6.3 This Panel accepts that the Complainant is a well-established multinational pharmaceutical company who rightfully owns several trademark registrations of the AMBIEN trademark in a substantial number of countries worldwide; including domain names also incorporating the AMBIEN trademark. Accordingly, the Panel finds that on a visual examination of the Disputed Domain Name <ambienforsale.com> it is clearly evident that it is confusingly similar to the Complainant’s AMBIEN trademark. Undoubtedly, the Disputed Domain Name wholly incorporates the Complainant’s trademark. As argued by the Complainant the mere addition of the dictionary words “for sale” and the gTLD extension “.com” does absolutely nothing to preclude a finding of confusing similarity. In support of these findings, the Panel relies 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, and in further support, 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 The Panel is therefore satisfied that the Complainant has established that the Disputed Domain Name is confusingly similar to the Complainant’s trademark.
6.5 The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name, and the Respondent has failed to adduce any evidence that it has rights or legitimate interests in the Disputed Domain Name within paragraph 4(c) of the Policy. The Respondent has equally failed to adduce any evidence of engaging in any actual bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Disputed Domain Name within paragraph 4(c) of the Policy. There is no evidence to show that the Respondent is affiliated to the Complainant nor has it been authorised or licensed by the Complainant to register the Disputed Domain Name or any entity containing the Complainant’s trademark. The totality of the evidence adduced by the Complainant demonstrates that the Disputed Domain Name resolves to a website that advertises pharmaceutical products that can be purchased at discounted prices. The Panel finds that such conduct by the Respondent cannot be described as legitimate noncommercial or fair use activity within the Policy.
6.6 Accordingly, the Panel finds that the Complainant has established that the Respondent does not own any rights or legitimate interests in the Disputed Domain Name as specified in paragraph 4(a)(ii) of the Policy.
6.7 With particular reference to the issue of bad faith registration and use, the Panel has taken into account quite a number of undeniable factors to conclude that the Respondent registered the Disputed Domain Name in bad faith and further embarked on bad faith use.
6.8 First of all the Panel finds that it is inconceivable that the Respondent was unaware of the Complainant’s extensive world-wide activities in the pharmaceutical industry at the time of registering the Disputed Domain Name on July 12, 2019. Secondly, the Panel further accepts that the addition of the dictionary words “for sale” does actually heighten the incidence of confusing similarity as Internet visitors would be misled to believe that the Disputed Domain Name resolves to a website that sells the Complainant’s pharmaceutical goods. Therefore, the Panel has arrived at the irresistible conclusion that the Respondent registered the Disputed Domain Name for the sole purpose of exploiting the Complainant’s well-established goodwill and reputation which is evidenced by an attempt to create the likelihood of confusion with the Complainant’s trademarks and domain names as to source, sponsorship, affiliation or endorsement of the Respondent’s website and the products advertised for sale thereat. Thirdly, the Panel is satisfied that the Respondent intentionally registered the Disputed Domain Name for the purpose of disrupting the Complainant’s business by redirecting Internet users to a website purportedly selling the Complainant’s AMBIEN pharmaceutical products and including links which sell the Complainant’s competitors’ pharmaceutical products at discounted prices. Fourthly, the Panel finds that the fact of the Respondent’s use of a privacy protection shield in the past considered together with all other facts above, further confirms that the Respondent registered the Disputed Domain Name in bad faith with the intention to engage in bad faith use. Fifthly, the Panel relies on the Respondent’s absence of response to the Complainant’s cease and desist letter dispatched by email on July 29, 2019 as further evidence of bad faith registration and use following Sanofi-Aventis v. Above.com Domain Privacy/Transure Enterprise Ltd. Host Master, supra. Finally, as alluded to 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 proceeding.
6.9 In the circumstances, the Panel is satisfied that the Respondent has registered and used the Disputed Domain Name in bad faith.
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 <ambienforsale.com> be cancelled.
Ike Ehiribe
Sole Panelist
Date: February 19, 2020