WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis v. Colman WebShop
Case No. D2007-0302
1. The Parties
The Complainant is Sanofi-Aventis, Cedex, France, represented by Bird & Bird Solicitors, France.
The Respondent is Colman WebShop, Boscawen, New Hampshire, United States of America.
2. The Domain Names and Registrar
The disputed domain names <plavix-discussion.info> and <plavix-express.info> are registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) against Whois Protection Service – ProtectFly.com on March 1, 2007. On March 6, 2007, the Center transmitted by email to RegisterFly.com a request for registrar verification in connection with the domain names at issue. On March 8, 2007, RegisterFly.com advised the Center that <plavix-discussion.info> was registered in the name of Heather Colman and Colman WebShop and <plavix-express.info> in that of another individual. The Center passed on that information to the Complainant and invited it to amend its Complaint. The Complainant duly filed an Amended Complaint joining Heather Colman, Colman WebShop and the other individual identified by the Registrar as Respondents on March 15, 2007. On March 19, 2007, a representative of the other individual identified by the Registrar protested to the Complainant and the Center that it was not, and never had been, the registrant of either disputed domain name and demanded withdrawal of the Complaint. On March 21, 2007, the Center alerted the parties to an announcement concerning RegisterFly.com on the ICANN (Internet Corporation for Assigned Names and Numbers) website of which they needed to be aware and shortly afterwards, ICANN advised the Center not to proceed with disputes concerning domain names that had been registered through that registrar.
On June 5, 2007, the Center advised the parties that the disputed domain name registrations had been transferred to the Registrar GoDaddy.com. The Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names. On June 5, 2007, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent Colman WebShop is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a further amendment to the Complaint on June 12, 2007.
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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 15, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2007.
The Center appointed John Lambert as the sole panelist in this matter on July 19, 2007. 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
With a stock market capitalization of nearly EUR 103.7 billion the Complainant is the holding company of a group of pharmaceutical companies. The group’s combined turnover was EUR 27.3 billion in 2005 and it employed 97,181 persons in 100 countries.
The group’s products include a drug for treating cardiovascular conditions known as “plavix”. That drug has been administered to over 41 million patients in more than 80 countries. The word “plavix” has been registered as a trademark for cardiovascular products in class 5 in many countries around the world. Information about the drug appears on the group’s website at “www.plavix.com”.
Very little is known about the Respondent other than it appears to be one of a number of web-based businesses run by a lady called Heather Colman from New Hampshire. The Respondent does not appear to have any connection with the Complainant, the pharmaceutical industry of healthcare. The disputed domain names have been used as URLs for a single page website headed “Plavix Resources” which contains a few sentences on the properties, uses and alleged side effects of PLAVIX and some links marked “Ads by Google”, “TAXUS® Stent – Learn More” and “Plavix Generic From a Registered Canadian Pharmacy Because Price & Quality Both Matter”.
5. Parties’ Contentions
The Complainant submits that all the requirements of Paragraph 4(a) of the Policy are satisfied and claims the transfer of the disputed domain names.
As to the first requirement, the Complainant points to its registration of PLAVIX as a trademark for cardiovascular products in class 5 in many countries around the world. It argues that the only difference between the domain names and the registered mark is the addition of the words “express” in one case and “discussion” in the other. Citing many previous cases, including in particular Pfizer Inc v. Ronald Bodet, WIPO Case No. D2004-0598 <viagra-discussion-board.com>, the Complainant submits that that is not enough to prevent a finding of confusing similarity with the Complainant’s trademarks.
As to the second requirement, the Complainant contends that the Respondent has no prior rights in the PLAVIX mark, it does not use the domain names in connection with the bona fide offering of goods or services and it has never been licensed or otherwise authorized to use that mark.
As to the third requirement, the Complainant argues that bad faith can be inferred from the absence of any prior right or authorization to use the PLAVIX mark, the Respondent’s awareness that PLAVIX corresponds to the Complainant’s trademark and the implied representation resulting from the addition of the words “discussion” and “express” that the sites identified by the disputes domain names are official websites of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that each of the following elements is present in the case of each domain name:
(i) the disputed 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 domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
U.S. trademark No. 2,042,583 is one of many registrations of PLAVIX as trademarks in which the Complainant has rights. The disputed domain names differ from the registered mark only in the addition of the word “express” in one case and “discussion” in the other. Those words are wholly descriptive and do little to distinguish the disputed domain names from the Complainant’s PLAVIX mark. Accordingly, the Panel finds that the domain names are confusingly similar to a trademark in which the Complainant has rights.
The Panel therefore finds the first element to be present.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights to the domain names. Paragraph 4(c) of the Policy sets out a number of circumstances by which rights or legitimate interests to a domain name can be demonstrated. There is no evidence that any of those circumstances apply. The Respondent is not and never has been using the disputed domain names in connection with a bona fide offering of goods or services. It is not and never has been known by such names. It is not making any non-commercial or fair use of the names. The circumstances in Paragraph 4(c) are not exhaustive and there may well be others where a right to or legitimate interest in a disputed domain name can be demonstrated, but the Respondent does not contend that that is the case here and there is no evidence from which such a right or interest could reasonably be discerned.
The Panel therefore finds the second element also to be present.
C. Registered and Used in Bad Faith
Lastly, the Panel finds the third element to be present but not without hesitation. This is the only issue that has given rise to any difficulty and it is one upon which argument from the Respondent and more focused argument and evidence from the Complainant would have been appreciated.
The difficulty is that paragraph 4(b) of the Policy lists some of the illustrative circumstances that evidence registration and use in bad faith with some precision and the conduct of the Respondent does not fit comfortably within any of them. The nearest circumstance to this case is probably Paragraph 4(b)(iv) of the Policy:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
It is certainly possible to infer an attempt to attract Internet traffic to the Respondent’s site and a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website but it is hard to see any clear commercial gain for the Respondent in this particular case. The words “for commercial gain” have obviously been put into the text for a purpose and the absence of evidence of actual (or at least likely or intended) commercial gain cannot be disregarded in relation to any finding based on paragraph 4(b)(iv) of the Policy.
The Complainant’s contentions are of limited help in this respect. The first of its contentions, namely that the Respondent has no prior right and no specialization is all very true but it is of limited relevance here. The second contention, namely that the Respondent was aware that PLAVIX corresponds to the Complainant’s trademark may very well be relevant, for example where such awareness can be established and linked to the Respondent’s intent at the time of registration of the disputed domain name, or indeed possibly in relation to subsequent intended use, although these are not points developed by the Complainant. In any case, there is no direct evidence of the Respondent’s knowledge or state of mind such as for example an acknowledgement on its site that PLAVIX is a registered trademark (such as the insertion of the symbol ® after that word). As to the third contention, the Complainant says:
“any Internet user who will try to connect to the above-mentioned web sites [that is to say, “plavix-express.info” and “plavix-discussion.info”] shall believe that it is the official web site of the Complainant since it reproduces the Complainant’s trademark with the adjunction of the words “express” and discussion”.
Therefore, when connecting to the web sites <plavix-express.info> and <plavix-discussion.info> internet users will believe that it is one of the official web sites of the Complainant to buy PLAVIX, and that PLAVIX is available as form these web sites.”
Again, that is conjecture rather than evidence and in any case it does not get the Complainant home.
As a last resort, the Complainant relies on what it calls “a cease and desist letter” dated September 28, 2006 sent to the email address provided in the Whois at a time when a privacy protection service appeared to be in use, apparently offered by the previous registrar RegisterFly.com, and indicating that the use of the domain name <plavix-discussion.info> was infringing its prior right. It is hard to see how that can determine the issue here. In the first place, the pleading is inaccurate in at least two respects. First, there was no letter as such – only an email from the Complainant’s in-house trademark attorneys complaining of the registration and use and requesting the “return” of the disputed domain names. Secondly, RegisterFly.com was the registrar and not, as plead by the Complainant, the registrant. The email was in fact addressed to “email@example.com” which is a contact email address listed in the Whois. It may very well be that that the email address corresponds to what was then a privacy protection service, or an alter ego of or otherwise connected to the Respondent but there is no clear evidence that that is the case.
However this may be, the list provided by Paragraph 4(b) is expressed to be without limitation which indicates that it is not intended to be exhaustive. Bad faith in most legal systems denotes malice or dishonesty and malice or dishonesty is to be found in each of the circumstances in Paragraph 4(b). For instance, registering a domain name merely to prevent the owner of a trademark or service mark from reflecting the mark in a corresponding domain name or for the purpose of disrupting the business of a competitor as in Paragraph 4(b)(ii) and (iii) would be malicious. Registering a domain name in order to ransom it or to divert traffic for commercial gain by misrepresenting a connection with the trademark owner as in Paragraph 4(b)(i) and (iv) would be dishonest. It follows that if malice or dishonesty can be detected in the Respondent’s use of the site then bad faith in use and registration can be inferred.
A submission of the Complainant that the Panel can adopt and develop is that the use of a domain name consisting of a trademark for a product that is known to millions and a wholly descriptive word such as “express” or “discussion” misrepresents a connection between the site and the supplier of the product. Internet users finding <plavix-express.info> or <plavix-discussion.info> through a search engine are likely to be induced by such misrepresentation to visit those sites in the belief that these are official Sanofi-aventis group sites. Though such a belief would be dispelled the moment an Internet user visits the Respondent’s “Plavix Resources” site, there is a risk that at least some of those Internet users will be discouraged or distracted from their search for a genuine PLAVIX information site such as “www.plavix.com”. Thus the Complainant will lose traffic and perhaps, ultimately, sales.
That raises the question as to why the Respondent registered and used the disputed domain name in this way. There are two obvious answers. One is that the Respondent simply wants to make a nuisance of itself. If that is the case, registration and use that is likely to result in wasting the time of Internet users and possibly reducing the Complainant’s revenues or otherwise injuring the Complainant would be malicious. The other and more probable answer is that the Respondent hoped to sell the site to the Complainant but had avoided saying so in terms in order to avoid Paragraph 4(b)(i) of the Policy. If that was the case the conduct would be caught by that paragraph. In either case, the Respondent’s conduct would amount to registration and use in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <plavix-express.info> and <plavix-discussion.info> be transferred to the Complainant.
Dated: August 2, 2007