The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Domain Administrator, PrivacyGuardian.org of Phoenix, Arizona, United States of America / Aqif Kapartoni of Elbasan, Albania.
The disputed domain name <ambienforless.com> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2016. On June 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 7, 2016, 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 June 8, 2016 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 June 9, 2016.
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 June 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2016. On June 23, 2016, the Respondent submitted informal email communications to the Center asking for an explanation of the proceeding and then suggesting he could delete the domain name to resolve the proceeding. The Center acknowledged receipt of the Respondent’s communications on the same day and provided information to the Parties regarding suspension of the proceeding. On June 28, 2016, the Complainant requested a 30-day suspension of the proceeding, and the Center confirmed the proceeding would be suspended until July 28, 2016.
On July 28, 2016, the Complainant asked that the proceeding be reinstituted, and the Center confirmed reinstitution of the proceeding. The Respondent was given until August 12, 2016 to submit a formal Response. A formal response was not received, and on August 15, 2016, the Center informed the parties that it would proceed with panel appointment. The Respondent submitted a further email communication on August 15, 2016, and the Center acknowledged receipt on the same day. The Center appointed Mathias Lilleengen as the sole panelist in this matter on August 19, 2016. 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. The Complainant engages in research and development, manufacturing and marketing of pharmaceutical products for sale in the prescription market, and it develops over-the-counter medication. The Complainant is established in more than 100 countries, employing 110,000 people.
The Complainant holds several trademark registrations in many countries and jurisdictions, including International Trademark No. 605762 for AMBIEN, registered on August 10, 1993, and European Union Trade Mark No. 003991999 for AMBIEN, registered on November 28, 2005.
The Respondent registered the disputed domain name on March 15, 2014.
The Complainant has documented its trademark registrations in the Complaint. The Complainant argues, with reference to former WIPO UDRP decisions, that AMBIEN is a well-known trademark, that the disputed domain name is confusingly similar to the Complainant’s trademarks and domain names regardless of the added “forless”, and that the Complainant’s registrations precede the registration of the disputed domain name.
The Complainant argues that the Respondent has not been commonly known by the domain name, and that the Respondent has no history of using the domain name in connection with a bona fide offering of goods and services. There is no relationship whatsoever between the parties and the Complainant argues that the Respondent has modified the Complainant’s trademark for its own use and incorporated them into his domain name without the Complainant’s authorization. The Complainant argues that the fact that the domain name points to a parking page does not provide a legitimate interest under the Policy.
Finally, the Complainant repeats that the Complainant is well-known, and that the domain name has been registered for the purpose of attracting Internet users to the Respondent’s website by creating an impression of association with the AMBIEN trademarks and domain names. The Respondent must have been aware of the risk of deception and confusion that would arise from the registration. This indicates bad faith. The parking of a registration identical to a well-known trademark also points to bad faith. It has been established in many UDRP cases that passive holding under the appropriate circumstances falls within the concept of the domain name being used in bad faith.
The Respondent replied to the Complaint through emails to the Center on June 23, 2016, in which the Respondent states, among other things:
Can you please tell me in a few words what is this all about? My English is not that good and I dont have time to read all this pages.
This is an expired domain I bought before 2-3 weeks and still has the old nameservers. (just changed to namesilo default nameservers)”
So this domain I bought is a trademark?
Can I just delete this domain and everything solved. Is this ok?”
The case was suspended, but as the Respondent never signed the settlement form, the case was reinstituted and forwarded for the Panel to decide.
The Complainant has established that it has rights in the trademark AMBIEN.
The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name consists of the Complainant’s trademark with the addition of “forless”. The addition of the prefix adds to the confusion rather than reducing the risk of confusion. As stated in Hoffman-La Roche Inc. v. PrivacyProtect.org / Korolev Oleg, WIPO Case No. D2010-0938, “the expression “for less” used together with the trademark… does not add any distinctive pattern to the domain name. In fact, the expression “for less” has a generic meaning among the marketing and promotion strategies linked to the saving of money for consumers….”.
For the purposes of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
The Respondent does not have registered trademarks or trade names corresponding to the Domain Name. Nor is there any evidence suggesting that the Respondent has been using “AMBIEN” in a way that would give it legitimate rights in the Domain Name. The Complainant has not granted any authorization to the Respondent.
The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. It seems that the Respondent has chosen the Domain Name based on the Complainant’s trademark value.
The Panel finds that the Complainant has made out an unrebutted case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
The Respondent must have been aware of the Complainant’s trademark and its business when he registered the Domain Name. The Complainant has used its trademark long before the registration of the Domain Name. The trademark is well established. The Panel finds registration in bad faith.
The Panel also finds use of the Domain Name in bad faith. The parking of a registration identical to a widely-known trademark, and the lack of any explanation from the Respondent, indicate bad faith.
The Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of the 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 <ambienforless.com> be cancelled.
Date: August 22, 2016
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