The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is Ambien Pharma, India. 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 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 21, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the Respondent 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 November 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on Decision 16, 2019. The Center appointed Colin T. O’Brien as the sole panelist in this matter on December 19, 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. 4. Factual Background The Complainant is a French multinational pharmaceutical company headquartered in Paris, France and is the world’s 4th largest multinational pharmaceutical company by prescription sales. The Complainant developed and sells throughout the world a drug under the trademark AMBIEN for the treatment of insomnia. The Complainant owns trademark registrations for its AMBIEN mark in the following jurisdictions: France (Registration No. 93 456 039 registered on February 19, 1993); The Complainant is the owner of the following domain names: The disputed domain name was registered on August 11, 2019. 5. Parties’ Contentions A. Complainant The disputed domain name reproduces the highly distinctive AMBIEN trademark in its entirety. The disputed domain name is confusingly similar to the AMBIEN trademark despite the addition of the generic term “pharma” and the extension “.com”. The addition of the widespread generic word “pharma”, to the disputed domain name, which obviously refers to pharmaceutical field, remains insufficient to avoid confusing similarity. On the contrary, it increases the likelihood of confusion. The Respondent does not have any legitimate interests in using the disputed domain name since the name of the Respondent indicated in the WHOIS details is nothing more but a reproduction of the disputed domain name “ambienpharma”. The Respondent has neither prior rights nor legitimate interests to justify the use of the world-wide known AMBIEN trademark. The Complainant has never licensed or otherwise authorized the Respondent to use its AMBIEN trademark or to register any domain name incorporating the AMBIEN trademark. The Respondent has clearly modified the Complainant’s trademarks and domain names for its own use and incorporated them into the disputed domain name without the Complainant’s authorization. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, given that the litigious domain site is clearly used as a bait and switch. The disputed domain name has been registered only for the purpose unfairly attracting the Complainant’s consumers, as it is clearly revealed on the Respondent’s webpage. It demonstrates that it was registered for the sole 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 disputed domain name leads to a blog dealing with Ambien drugs. The page contains a number of articles and “Ambien” links. By clicking on each of hypertext links, the Internet user is redirected to websites, through which Internet users can buy pharmaceutical products at a discounted price. The Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use activity, despite the fact that the Respondent’s website apparently connects to competition websites. The Respondent has not made a non-commercial or fair use of the disputed domain name as the blog page contains a number of hypertext listings, including links to websites advertising, inter alia, pharmaceutical products. 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. It is obvious the Respondent does not have any legitimate interests in using the disputed domain name since the Respondent’s alleged name “Ambien pharma” merely accounts for the sequence “ambienpharm” in the disputed domain name. Indeed, the performance of a basic Google search would have led the Respondent to see that the mark AMBIEN is exclusively linked to Complainant. Given the famous and distinctive nature of the mark AMBIEN, the Respondent is likely to have had, at least, constructive, if not actual notice, as to the existence of the Complainant’s marks at the time it registered the disputed domain name. The Respondent acted with opportunistic bad faith in registering the disputed domain name in order to make an illegitimate use of it. 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 with the AMBIEN trademarks and domain names and the Complainant. It is inconceivable that the Respondent registered the disputed domain name unaware of the Complainant’s rights and reputation, making unfair benefit of the Complainant’s trademarks’ reputation. The disputed domain name directs Internet users to a website, which is not the official website of the Complainant’s products. The Respondent uses the disputed domain name for the purpose of disrupting the Complainant’s business, by displaying commercial links which redirect Internet users to a competing website selling pharmaceutical goods, which constitutes further evidence of its bad faith. The Respondent also refused to acknowledge the cease and desist letter sent by the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has demonstrated it owns registered trademark rights in the AMBIEN trademark throughout the world. The addition of the descriptive term “pharma” does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Accordingly, the disputed domain name is confusingly similar to a mark in which the Complainant has rights. B. Rights or Legitimate Interests The Complainant has presented a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and has not at any time been commonly known by the disputed domain name. The disputed domain name resolves to a website that claims to offer AMBIEN products for sale in addition to other pharmaceuticals. This use does not satisfy the “Oki Data test” for legitimate interests in the disputed domain name because the Respondent does not appear to be selling real AMBIEN products; the Respondent is offering for sale on the website other trademarked products not owned by the Complainant; the Respondent’s website does not disclose any relationship with the Complainant; and the Respondent has prevented the Complainant from using the disputed domain name. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. The evidence indicates the Respondent obtained the disputed domain name years after Complainant had begun using the AMBIEN mark on a worldwide basis, indicating that the Respondent sought to piggy-back on the AMBIEN mark in order to sell both counterfeit AMBIEN products as well as possible counterfeit products of Complainant’s competitors. After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Here, the Respondent has provided no evidence of any rights or legitimate interests in the disputed domain name, rather the evidence suggests that it was registered to make an undue profit based on the Complainant’s rights. See, e.g., Bottega Veneta SA v. ZhaoJiafeiWIPO Case No. D2013-1556. In the absence of any evidence rebutting the Complainant’s prima facie case indicating the Respondent’s lack of rights or legitimate interests in respect of the disputed domain name, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The disputed domain name was registered many years after the Complainant first registered and used its AMBIEN trademark on a worldwide basis. There is no non-benign reason for the Respondent to have registered a domain name containing AMBIEN and the term "pharma". Further, the use of the disputed domain name by the Respondent is clearly in bad faith. The disputed domain name resolves to a website that claims to offer for sale AMBIEN as well as other prescription drugs including Adderall and Tramadol. Such use by the Respondent potentially puts the public at risk by attempting to sell counterfeit prescription drugs that do not meet the manufacturing standards of the Complainant and other legitimate pharmaceutical manufacturers. The actions of the Respondent in attempting to sell the Complainant’s products as well as other prescription drugs could result in the public being misled as to the accuracy of the information provided or the origin, sponsorship, or association of the products offered or sold on the Respondent’s website; this is clearly use in bad faith. See Pfizer Inc. v. jg a/k/a Josh Green WIPO Case No. D2004-0784. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith. 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 Colin T. O’Brien
European Union (Registration No. 003 991 999 registered on November 28, 2005);
Algeria, Germany, Belarus, Benelux, Bulgaria, China, Croatia, Egypt, Spain, Russian Federation, Hungary, Kazakhstan, Lichtenstein, Morocco, Monaco, Uzbekistan, Poland, Portugal, Czech Republic, Romania, Saint Marin, Slovakia, Slovenia, Sudan, Switzerland, Ukrainian, Viet Nam, Montenegro, Italy, and
Serbia (International Registration No. 605 762 registered on August 10, 1993); and
United States (Registration No. 1808770 registered on December 7, 1993).
Sole Panelist
Date: January 1, 2020
Full & Egal Universal Law Academy