WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-aventis v. Vitaly Smolensky
Case No. D2007-0574
1. The Parties
The Complainant is Sanofi-aventis, Paris, France; Mrs. Rachel Mansuy, Sasnofi-aventis, Gentilly Cedex, France, represented by Bird & Bird Solicitors, France.
The Respondent is Vitaly Smolensky, Novokolomyachskiy Petersburg, Sankt-Peterburg, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <generic-plavix.com> is registered with Directi Internet Solutions d/b/a PublicDomainRegistry.Com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2007. On April 17, 2007, the Center transmitted by email to Directi Internet Solutions d/b/a PublicDomainRegistry.Com a request for registrar verification in connection with the domain name(s) at issue. On April 18, 2007, Directi Internet Solutions d/b/a PublicDomainRegistry.Com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing their contact details. The Center verified that 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 April 23, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 16, 2007.
The Center appointed Richard Hill as the sole panelist in this matter on May 25, 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
The Complainant owns various registered and common law trademarks for the string PLAVIX.
The Complainant uses those marks to market a pharmaceutical product.
The Respondent is using the contested domain name to point to a website that offers to sell various prescription pharmaceutical products, including the products marketed by the Complainant.
The Respondent does not have any licenses or other authorization from the Complainant to use the Complainant’s marks.
5. Parties’ Contentions
The Complainant made the following allegations:
The Complainant is a very large and well-known multinational pharmaceutical company present in more than 100 countries across 5 continents.
The Complainant has obtained trademark rights for PLAVIX in a large number of countries. The Complainant also registered numerous domain names worldwide containing the PLAVIX trademark, for example <plavix.com>, <plavix.net>, <plavix.ru>.
The Respondent’s registration consists of the Complainant’s trademark with the addition of the word “generic”and the gTLD “.com”.
A wide variety of panelists have considered that the addition of generic and/or descriptive words to trademarks is not sufficient to escape the finding of similarity and does not change the overall impression of the designations as being connected to the Complainant (see Sanofi-Aventis v. Direct Response Marketing aka DRM, WIPO Case No. D2005-0661; Sanofi-aventis v. Elizabeth Riegel and Andrew Riegel, WIPO Case No. D2005-1045; Telstra Corporation Ltd v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO, Case No. D2000-1511; Pepsico Inc v. Pepsi SRL and EMS COMPUTER INDUSTRY, WIPO Case No. D2003-0696; Pepsico Inc v. Diabetes Home care and DHC services, WIPO Case No. D2001-0174; Sony Kabushiki Kaisha v. Kil Inja, WIPO Case No. D2000-1409; America Online Inc v. Chris Hoffman, WIPO Case No. D2001-1184).
The Complainant has prior rights in the trademark PLAVIX, which precede the Respondent’s registration of the domain name. There is no license, consent or other right by which the Respondent would have been entitled to register or use the domain name incorporating the Complainant’s trademark PLAVIX.
When connecting to the disputed domain name, the Internet user is redirected to a website, which address is “www.usapills-rx.net”, promoting a large number of pharmaceutical products such as Plavix, Xenical, Viagra or Levitra. Thus there is no doubt that the Respondent is aware that PLAVIX corresponds to a medical product and therefore to a trademark. Indeed, the Respondent would have not registered the disputed domain name if it had not known that PLAVIX was one of the world’s leading medicines.
The Respondent is using the domain name to offer and sell goods identical to or that compete with the Complainant and the Respondent’s site did nothing to disclaim any relationship with the trade mark owner. It did nothing to dispel any possible suggestion that it might be the trade mark owner, or that the website might be the, or an, official site of the Complainant. Therefore, the Respondent’s use does not satisfy the test for bona fide use established in prior WIPO decisions.
As a result, it seems that the Respondent, who has no legitimate interest in respect of the domain name <generic-plavix.com> has registered this domain name with the intention to divert consumers and to prevent the Complainant from reflecting the mark in a corresponding domain name.
Indeed, the Respondent proposes on the contentious website links to competitive products or links to portal websites.
Any Internet user who will try to connect to the above mentioned website will believe that it is the official website of the Complainant since it reproduces the Complainant’s trademark with the sole adjunction of the word “generic”. This will generate confusion and is an element to establish the bad faith registration of the above mentioned domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The contested domain name is obviously confusingly similar to the Complainant’s mark PLAVIX. The Panel notes the cases cited by the Complainant to support this point and agrees that those citations are appropriate.
B. Rights or Legitimate Interests
The Complainant states that the Respondent does not have any license or other authorization to use the Complainant’s mark. The Respondent is using the disputed domain name to point to a website that offers to sell various pharmaceutical products, including the Complainant’s products.
The Panel finds that the Respondent is redirecting Internet users interested in Complainant’s products and services to its own website for commercial gain and that such use does not fall within the parameters of a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy. See The Royal Bank of Scot. Group v. Demand Domains, FA 714952 (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy paragraph 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Persohn v. Lim, FA 874447 (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
It is clear that the Respondent was aware of the Complainant’s marks when it registered and started using the disputed domain name, because inter alia the domain name contains the Complainant’s mark and the website refers to sales of pharmaceutical products.
The Respondent (who did not reply) has not presented any plausible explanation for its use of the Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s failure to reply as it considers appropriate. In the circumstances, the Panel considers that the Respondent is highly unlikely to have had a good faith use in mind when it registered the disputed domain name.
Indeed the Respondent’s actual use of the disputed domain name (as noted above) is clearly not bona fida, because the Respondent operates a website that offers to sell the Complainant’s product (and other prescription medicine and other products). This indicates that the Respondent has registered and is using the disputed domain name to take advantage of the confusing similarity between the disputed domain name and Complainant’s mark in order to profit from the goodwill associated with the mark in bad faith under paragraph 4(b)(iv) of the Policy. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (holding that the respondent’s use of the disputed domain names to maintain pay-per-click sites displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy paragraph 4(b)(iv)).
For the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name 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 name, <generic-plavix.com> be transferred to the Complainant.
Dated: May 31, 2007