WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Che Macdulf
Case No. D2018-2414
1. The Parties
The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Che Macdulf of Bamenda, Cameroon.
2. The Domain Name and Registrar
The disputed domain name <buyambienonline.org> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2018. On October 25, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 25, 2018, 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 October 25, 2018 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 October 26, 2018.
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 November 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2018.
The Center appointed Jacques de Werra as the sole panelist in this matter on December 10, 2018. 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), ranking as one of the world’s largest multinational pharmaceutical companies by prescription sales. It engages in research and development, manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market, but the firm also develops over-the-counter medication.
In the field of treatment of the central nervous system, the Complainant developed and sells throughout the world a drug with demonstrated utilities for the treatment of insomnia under the trademark AMBIEN.
The Complainant is the owner of many trademarks, including the following ones (“the Trademark”):
- French trademark AMBIEN no. 93456039 registered on February 19, 1993 in class 5 and duly renewed;
- European Union Trade Mark AMBIEN no. 003991999 filed on August 17, 2004 and 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 Algeria, Germany, Belarus, Benelux, Bulgaria, China, Croatia, Egypt, Spain, Russian Federation, Hungary, Kazakhstan, Liechtenstein, Morocco, Monaco, Uzbekistan, Poland, Portugal, Czechoslovakia, Romania, San Marino, Slovakia, Slovenia, Sudan, Switzerland, Ukraine, Viet Nam, Montenegro, Italy and Serbia;
- United States of America (“United States”) trademark AMBIEN no. 74345754 filed on January 5, 1993 and registered on December 7, 1993 in class 5 and duly renewed.
The Complainant further owns many domain names reflecting the Trademark including the following ones (“the Domain Names”):
<ambien.com> registered on April 12, 2000;
<ambien.eu> registered on July 2, 2006;
<ambien.fr> registered on May 30, 2002;
<ambien.us> registered on April 19, 2002;
<ambien.net> registered on April 12, 2000;
<ambien.info> registered on August 24, 2001;
<ambien.org> registered on April 12, 2000;
<ambien.mobi> registered on August 2, 2006;
<ambien.us> registered on April 19, 2002.
The Disputed Domain Name was registered on October 16, 2018. It points to the website of a so-called “Brightway Pharmacy” which is described as the “Best place to buy Ambien online”, whereby it does not indicate that AMBIEN is a prescription drug.
5. Parties’ Contentions
With respect to the first condition of the identity or confusing similarity, the Complainant claims that the Disputed Domain Name reproduces the Trademark and the Domain Names in their entirety, bearing in mind they do not, as themselves, have any particular meaning and are therefore highly distinctive. It further claims that the reproduction of the Complainant’s Trademark and Domain Names as the central and dominant part of the Disputed Domain Name is confusingly similar to the Trademark, regardless of the adjunction of the generic terms “buy”, “online”, and the generic Top-Level Domain (“gTLD”) extension “.com”. The adjunction of these terms placed before and after the Trademark in the Disputed Domain Name and the gTLD extension “.com” are undoubtedly insufficient to alleviate the likelihood of confusion between the Complainant’s Trademark and Domain Names and the Disputed Domain Name registered by the Respondent. On the contrary, it must be considered that the adjunction of these generic terms increases the inherent risk of confusion. Finally, it must be taken into account that the likelihood of confusion is ascertained by the notoriety of the Complainant’s trade name, trademarks, domain names and more generally speaking goodwill. Indeed, the product “AMBIEN” is a very well established sleeping aid which is known by that name and by the Trademark in the United States, as recalled in various previous decisions rendered by other UDRP panels.
With respect to the second condition of the rights or legitimate interests of the Respondent in the Disputed Domain Name, the Complainant claims that it is obvious that the Respondent does not have any legitimate interests in using the Disputed Domain Name since the Respondent did not even indicate its identity. Indeed, the details provided on the identity of the Registrant are non-existing. The Complainant has further never licensed or otherwise authorized the Respondent to use the Trademark or to register any domain name including the Trademark. Consequently, there is no relationship whatsoever between the parties and the Respondent has clearly modified the Complainant’s Trademark and Domain Names for its own use and incorporated them into the Disputed Domain Name without the Complainant’s authorization.
The Respondent is further not using the Disputed Domain Name in connection with a bona fide offering of goods or 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 site is clearly used as a bait and switch. Indeed, the Disputed Domain Name has been registered only for the purpose of unfairly attracting 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. It is indeed misleadingly displayed that “BRIGHTWAY PHARMACY” is the “Best place to buy Ambien online”, when in fact it is not considering AMBIEN is a prescription drug.
Furthermore, the Respondent has not used the Disputed Domain Name in connection with a legitimate noncommercial or fair use activity, 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, which does not account for a noncommercial or fair use of the Disputed Domain Name in any respect. Under these circumstances, the absence of any authorization by the Complainant and the lack of legitimate reason in the use of the Disputed Domain Name both prove that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant notes with respect to the condition of the registration and use in bad faith of the Disputed Domain Name that it must be borne in mind that Panel decisions regularly recognize opportunistic bad faith in cases in which the contested domain name appears confusingly similar to a Complainant’s well-known trademark. The Complainant makes various arguments in this context. In essence, the Complainant claims that it is first of all obvious that the Respondent does not have any legitimate interests in using the Disputed Domain Name since the Respondent did not even indicate its identity. Indeed, the details provided on the identity of the Registrant are non-existing. Such incomplete details serves as an indicator of bad faith registration and use. Secondly, it should be considered that, given the famous and distinctive nature of the Trademark, the Respondent is likely to have had, at least, constructive, if not actual notice, as to the existence of the Complainant’s Trademark at the time he registered the Disputed Domain Name. This suggests that the Respondent acted with opportunistic bad faith in registering the Disputed Domain Name in order to make an illegitimate use of it. Thirdly, 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 between the Trademark and the Domain Names, constantly used in combination with the mother brand SANOFI, and the Disputed Domain Name. The Complainant claims, given that the Disputed Domain Name directs Internet users to a website which is not the official website of Complainant’s products, that it is evident that the circumstances indicate that the Respondent has registered the Disputed Domain Name primarily for the purpose of trying to gain unfair benefit of the Complainant’s goodwill and reputation by using the Disputed Domain Name, which suggests an effort to create a likelihood of confusion with the Complainant’s Trademark and Domain Names as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the products displayed/advertised for sale on it. The Respondent has clearly registered and used 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 counterfeited pharmaceutical goods, which constitutes further evidence of its bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the complainant must prove each of the following three elements in order to succeed in a UDRP proceeding:
(i) the respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the respondent’s domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights to a trademark or service mark as reflected in the Trademark.
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”). See by analogy Sanofi v. Zhuhai Yingxun Keji Limited / Jastin Morientes, WIPO Case No. D2018-0409.
As a result, based on the rights of the Complainant in the Trademark and on the confusing similarity between the Trademark and the Disputed Domain Name, the Panel finds that the condition of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests, and once such prima facie case is made the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in the domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the Panel’s opinion, the Complainant has made a prima facie case against the Respondent. The Respondent indeed registered the Disputed Domain Name which features the Trademark owned by the Complainant as its distinctive element without the authorization of the Complainant, in a way which can only reasonably be explained as a reference to the pharmaceutical products sold by the Complainant’s under the Trademark. This is confirmed and reinforced by the use of the generic terms “buy” and “online” in the Disputed Domain Name.
The Complainant has thus established without being contradicted that the Respondent has no rights or legitimate interests in the Disputed Domain Name, that the Respondent has not been commonly known by the Disputed Domain Name and that the Respondent’s use of the Disputed Domain Name is not in connection with a bona fide attempt to offer goods and services. The Panel notes that the identity of the Respondent has been revealed only in the course of the proceedings so that the argument raised by the Complainant that the Respondent would not have any legitimate interest in using the Disputed Domain Name since the Respondent did not even indicate his/her/its identity does not seem applicable. This however does not affect the reasoning and the finding made by the Panel based on the other arguments developed by the Complainant.
On this basis, the Panel accepts the Complainant’s prima facie showing and it was consequently up to the Respondent to come forward with evidence of rights to or legitimate interests in the Disputed Domain Name, which has not been done given the Respondent’s default in this proceeding.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant (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;
(ii) circumstances indicating that the respondent 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;
(iii) circumstances indicating that the respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the disputed domain name in an attempt to attract, for commercial gain, Internet users to its website or other online 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
In this case, the Panel holds that the Respondent registered the Disputed Domain Name in bad faith because the Trademark distinctively identifies the Complainant and the Complainant’s pharmaceutical products so that the choice of the Disputed Domain Name cannot be reasonably explained otherwise than as a reference to the Trademark owned by the Complainant. The nature of the website to which the Disputed Domain Name is associated which points to an online “pharmacy” (“Brightway Pharmacy”) does not leave any doubt about this. The Panel further notes that the Trademark’s brand recognition on a global basis has been duly established and recognized by many other UDRP panels. See, e.g., Sanofi v. WhoisGuard Protected, WhoisGuard, Inc. / Vladimir Talko, WIPO Case No. D2018-0410 with further references.
The Panel holds that the Respondent is using the Disputed Domain Name in bad faith because the Complainant has established that the Respondent is using without permission the Complainant’s widely-known Trademark in order to redirect Internet users looking for the Complainant’s goods to get traffic to its web site and to obtain commercial gain from the false impression created for the Internet users with regard to a potential affiliation or connection with the Complainant. The Complainant has also established (without being contradicted by the Respondent who has not participated in the proceedings) that the Respondent is using the Disputed Domain Name to display commercial links which redirect Internet users to a competing website selling counterfeited pharmaceutical goods. Such use is likely to damage the Complainant’s business and reputation and furthermore to harm the health of the potential buyers of counterfeit goods. Such facts constitute bad faith under paragraph 4(b)(iv) of the Policy. See Sanofi v. Roslyn Blowem / Blowem Inc., WIPO Case No. D2016-2081.
On this basis, the Panel finds that the Respondent registered and uses the Disputed Domain Name in bad faith pursuant to paragraph 4(b) of the Policy, so that the conditions of paragraph 4(a)(iii) of the Policy are met.
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.org> be transferred to the Complainant.
Jacques de Werra
Date: December 22, 2018