The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is Whois Privacy Service, United States of America / Wyatt Henry, United States of America. 2. The Domain Name and Registrar
The disputed domain name 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 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 22, 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 25, 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 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 27, 2019. The Center appointed Nicholas Weston as the sole panelist in this matter on January 13, 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 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; and United States of America registration No. 74345754 in class 5 that has been registered since December 7, 1993. The Complainant owns numerous domain names that comprise of, or contain, the trademark AMBIEN, including the domain name The Disputed Domain Name 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 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 which offers Internet users to purchase fake Ambien drugs” 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”. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 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. A. Identical or Confusingly Similar 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) an exact reproduction of the Complainant’s AMBIEN trademark; (b) followed a hyphen; (c) followed by the word “shop”; and (d) followed by the gTLD “.com”. 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: “ambien-shop”. 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, “shop” (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 hyphen followed by the word “shop” does nothing to dispel the confusing similarity (see: Cartier International A.G. v. chenzhiwen/wen,WIPO Case No. D2015-0862 (“the word ‘shop’ is a generic and descriptive word which is used to designate the physical place where any person or company can sell products. The addition of ‘shop’ to the trademark … can therefore evoke the activity of the companies of the Complainant’s group”); LEGO Juris A/S v. WhoisGuard Protected, WhoisGuard, Inc. / Neckar Rhein,WIPO Case No. D2017-2276 (“the addition of the word ‘shop’ adds no distinctiveness and does not avoid a finding of confusing similarity.”) Compagnie Générale des Etablissements Michelin v. PrivacyDotLink Customer 1197652 / Alex Hvorost,WIPO Case No. D2016-1923 (“reproducing the entire trademark along with a generic term or the inclusion of a hyphen, is insufficient to distinguish the disputed domain name from the trademark”). The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests 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 Disputed 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 Complainant’s 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. C. Registered and Used in Bad Faith 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 approximately 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. In line with prior UDRP panels 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. 7. Decision 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 Nicholas Weston
Sole Panelist
Date: January 22, 2020
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