WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-aventis v. PrivacyProtect.org / Pavlishin Mihail
Case No. D2010-1265
1. The Parties
The Complainant is Sanofi-aventis of Paris, France, represented by Selarl Marchais De Candé, France.
The Respondent is PrivacyProtect.org of Moergestel, the Netherlands / Pavlishin Mihail of Stebnik, Lviv Oblast, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <plavixcom.com> (the “Domain Name”) is registered with UK2 Group Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2010. On July 30, 2010, the Center transmitted by email to UK2 Group Ltd. a request for registrar verification in connection with the Domain Name. On July 30, 2010, UK2 Group Ltd. transmitted by email to the Center its verification response, disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 2, 2010, 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 August 4, 2010.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2010.
The Center appointed Keith Gymer as the sole panelist in this matter on September 3, 2010. 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 Panel notes that, in addition to the true registrant’s details being initially concealed behind a privacy service, the contact address and telephone details revealed by the privacy service after the filing of the Complaint were also evidently not accurate, as UPS was reportedly unable to deliver the Written Notice sent by the Center.
4. Factual Background
The Complainant, Sanofi-aventis, is a multi-national pharmaceutical company, based in France, and which was formed during the year 2004 as a result of merger between the two predecessor French companies, Aventis SA and Sanofi-Synthelabo. Completion of the transaction made the Complainant one of the largest pharmaceutical groups in Europe, with consolidated net sales of EUR 29.3 billion in 2009, in the core business and a strong direct presence on all major markets, and EUR 4.6 billion research and development expenditure in 2009. The Complainant has a corporate website at “www.sanofi-aventis.com”.
The Complainant is a multinational company settled in more than 100 countries around 5 continents. The new group benefits from a large portfolio of high-growth drugs.
Employing approximately 100,000 people worldwide, the Complainant has a sales force of 33,507 people, as well as 18,976 research staff with 49 projects under development, 17 of which are at advanced stages.
The Complainant offers a wide range of high-growth drugs, with 6 viewed as blockbuster pharmaceuticals in 2009: Lovenox, Plavix, Taxotere, Eloxatin, Ambien and Lantus.
The Complainant has developed and sold throughout the world under the trademark PLAVIX a drug indicated for the reduction of recurrence after ischemic cerebrovascular disorder.
It is one of the world's 10 leading medicines, and to date, over 100 million patients throughout the world have been treated with PLAVIX.
PLAVIX has been commercialized since 1998, first in the United States of America and then in Germany and the United Kingdom. PLAVIX is now available in more than 115 countries (Turkey, Greece, Belgium, Portugal, Hungary, France, Republic of Korea, India, People’s Republic of China, Australia, New Zealand, Mexico, Brazil, etc.). All relevant information related to this product is available on the official website of the company for this product, the address of which is “www.plavix.com”.
The Complainant has numerous trademark registrations for the mark PLAVIX, including United States Trade Mark registration 2042583 dating from 1997 and Canadian registration TMA509097 dating from 1999, both covering pharmaceutical preparations for the treatment of cardiovascular diseases.
The original Respondent was PrivacyProtect.org, and the concerned registrar UK2 Group Ltd. subsequently disclosed that the registrant of the Domain Name is one Pavlishin Mihail, apparently an individual with a purported address in Ovblast, Ukraine.
According to the WhoIs record, the Domain Name was first registered on November 18, 2009.
5. Parties’ Contentions
This Complaint is based on the following grounds (comprising edited extracts taken from the Complaint):
The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Trademarks and Domain Names Owned by the Complainant
The Complainant has rights over the following prior trademarks:
PLAVIX France trademark n° 93484877 registered on July 28, 1993 in class 5 and duly renewed;
PLAVIX United Kingdom trademark n° 2068394 registered on December 19, 1997 in class 5 and duly renewed;
PLAVIX Hong Kong trademark n° 06439 registered on August 03, 1995, in class 5 and duly renewed;
PLAVIX United States trademark n° 2 042 583 registered on March 11, 1997, in class 5 and duly renewed;
PLAVIX Canada trademark n° TMA509097 registered on March 10, 1999 in class 5;
PLAVIX Saudi Arabia trademark n° 356/55 registered on October 28, 1995 in class 5 and duly renewed;
PLAVIX Community trademark n° 002236578 registered on April 18, 2002 in class 5;
PLAVIX Japan trademark n° 4170873 registered on July 24, 1998 in class 5 and duly renewed.
All of these trademarks are registered and widely used by the Complainant notably in connection with class 5 of the International Classification i.e, pharmaceutical products.
The Complainant has also registered the following domain names devoted to Plavix pharmaceutical products:
<plavix.net> registered on November 19, 1999;
<plavix.com> registered on March 26, 1998;
<plavix.org> registered on October 20, 1999.
It is underlined that all of the above-mentioned trademarks and domain names, registered all over the world and containing the distinctive word "plavix" are prior to the registration of the Domain Name on November 18, 2009.
Comparison of the Complainant's Trademarks and the Domain Name
The following observations can be made while comparing the Domain Name to the Complainant's trademark.
The Domain Name <plavixcom.com> wholly incorporates the Complainant's trademark PLAVIX.
The only difference between the Complainant’s trademark and the Domain Name <plavlxcom.com> is the superfluous "com" at the end of the Domain Name which does not overcome the confusing similarity between the Domain name and the strong PLAVIX mark.
Moreover, the trademark has no particular meaning in any language and is in consequence highly distinctive.
Hence, the reproducing of the exact trademark PLAVIX as the dominant part of the Domain Name makes the Domain Name confusingly similar to the Complainant's trademark.
In this respect, in Credit Industriel et Commercial S.A v. Maison Tropicale SA, WIPO Case No. D2007-0955, the panel held that confusing similarity was established when a domain name wholly incorporated a complainant's trademark in its entirety despite the addition of a suffix ".com" in the domain name.
In the present case, the likelihood of confusion is further ascertained by reason of the notoriety of the trademark PLAVIX.
The notoriety of the above-mentioned trademark has been acknowledged by previous UDRP decisions, such as Sanofi-aventis v. MC EU, WIPO Case No. D2006-0403 where the panel stated:
"The Complainant's product and trademark are famous. The domain name was registered just after it had been announced that the Complainant’s product was given marketing permission in Japan. It is likely that the Respondent was aware of the trademark of the Complainant, its reputation in the pharmaceutical industry, and its products and its trademarks, when the Respondent registered the domain name”,
See also Sanofi-aventis v. Sven Barthel, WIPO Case No. D2009-1305 regarding the trademark PLAVIX where the panel stated:
"Given the widely established market position of the Complainant and the Respondent's use of the domain name, it is beyond belief that the Respondent was unaware of the Complainant and its trade mark when registering the domain name.”
For all these reasons, there is no doubt that the Domain Name <plavixcom.com> is confusingly similar to the trademarks and domain names over which the Complainant has rights.
The Respondent Has No Rights or Legitimate Interests in Respect of the Domain Name
Obviously, the Respondent does not have any legitimate interests in the respect of the Domain Name.
Firstly, it must be stressed on the fact that PrivacyProtect.org, the registrant of the Domain Name as indicated on the WhoIs database of the registrar UK2 Group Ltd., is not the real registrant but a corporation whose purpose is to register domain names on behalf of third parties in order to conceal the real identity of the registrants. Therefore, the Respondent has no prior rights and legitimate interests to justify the use of the PLAVIX trademark in the Domain Name.
Secondly, the Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name including the above-mentioned trademarks. Consequently, there is no relationship whatsoever between the parties.
The Respondent has clearly adopted the Complainant's trademarks and domain names for its own use and incorporated them into the Domain Name without the Complainant's authorization.
Under these circumstances, the absence of any permission by the Complainant and the lack of reason in the use of the Domain Name at stake prove that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Domain Name Was Registered and Is Being Used in Bad Faith
It is crystal clear that the Respondent registered in bad faith the Domain Name which corresponds to the trademarks and domain names owned by the Complainant.
The Domain Name has been registered for the purpose of attracting Internet users to the Respondent's website and making unfair benefit of the Complainant’s reputation, by creating a likelihood of confusion between the PLAVIX trademarks and the Domain Name <plavixcom.com>.
Indeed, it must be reminded that:
1) The Complainant is the owner of the PLAVIX trademarks, which are well-known worldwide, and different domain names reproducing the distinctive word "plavix" which, as a matter of fact, appears on the website of the Respondent;
2) PLAVIX is marketed in over 115 countries and has already treated over 100 million patients worldwide;
3) Several UDRP panel decisions have recognized the notoriety of the PLAVIX trademarks (for instance, Sanofi-aventis v. MC EU, supra; Sanofi-aventis v. Sven Barthel, supra, and Sanofi-aventis and Merrell Pharmaceuticals Inc. v. Smart Med Pharmacy, WIPO Case No. D2006-1113); and
4) The Complainant is nowadays one of the world’s leaders among pharmaceutical companies.
The Respondent must have been aware of the trademarks, domain names, websites and drug known under the mark PLAVIX.
The Respondent's knowledge is also proved by the fact that the Respondent’s website at the Domain Name redirected Internet users to an online pharmacy.
Under these circumstances, it is inconceivable that the Respondent registered the Domain Name unaware of the Complainant's rights.
The Domain Name was not only registered in bad faith but is also used by the Respondent in bad faith.
When one types the Domain Name, one is automatically directed to the homepage which has various references to PLAVIX and a hyperlink identified as “plavix.com”.
When clicking on the hyperlink "plavix.com", the Internet user is actually directed to the same homepage at the Domain Name, which is not the official website (which is “www.plavix.com”) for the Complainant's products.
This effect of circular spirals on Internet emphasizes the confusion over the consumers since they may believe that they are conducted to the official website “www.plavix.com” devoted to PLAVIX.
Additionally, on inspection of the Respondent’s website at the Domain Name:
Firstly, it clearly appears that even though the website is officially meant to advertise and provide information about the PLAVIX drugs, the Domain Name is used as a referral portal to direct Internet users to other websites which sell the PLAVIX products without prescription, for which the Complainant could be liable.
Indeed, when clicking on the link "BUY PLAVIX 75 MG" at the website, one is automatically redirected to the website called "The Canadian Pharmacy online".
The Respondent deliberately uses the Complainant's trademarks to divert Internet users to third party websites offering to sell online the PLAVIX products.
In this respect, see Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo, WIPO Case No. D2004-0990, where the panel states "the sole diversion of Internet traffic by [r]espondent to other, unrelated websites, does not represent a use of the [d]omain [n]ame in connection with a bona fide offering of goods and services. Rather, the conduct of [r]espondent serves the purpose of generating revenues".
Diverting Internet users in this misleading manner is further evidence of bad faith use (Novus Credit Services Inc. v. Personal, WIPO Case No. D2000-1158)
This is evidence of bad faith registration and use pursuant to the Policy, paragraph (4b) as stated in the very similar case in Sanofi-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303 concerning the domain name <plavixs.com>.
Secondly, by directing Internet users to an online pharmacy which sells pharmaceutical products without requiring any proof of physical examinations by a physician, the use of the Domain Name is potentially harmful to the health of Internet users who want to purchase the PLAVIX products under the mistaken impression that they are dealing with the Complainant.
Moreover, it is very likely that the advertisements and links proposed on the website at the Domain Name probably provide income for the Respondent depending on the number of hits that are generated on a pay-per-click basis.
In this regard, UDRP panels have consistently ruled that a domain name which reproduces a well-known trademark and which leads to a third party website, is being used in bad faith, stating that: e.g.
"Advertisements and links on websites generally generate income for the website owner dependent on the number of hits that are generated on the website. It is obvious, that a website containing a well-known brand is hit more often than a no-name website. To this extent, the [r]espondent is making use of well-known character of the [c]omplainant’s trademark for generating profits in his own interests" (Sanofi-aventis and Aventis Pharma SA v. Advent Innovations, WIPO Case No. D2005-0377).
By using the Domain Name the Respondent is intentionally attempting to attract for financial gain, Internet users to the above-mentioned website or other online location by creating a likelihood of confusion with the Complainant's trademarks and domain names as to the source, affiliation or endorsement of the registrant's website or location or of a product or service on the Respondent's website or location.
Finally, it must be stressed on the fact that also on April 15, 20I0, the Complainant sent to the Respondent a cease and desist letter, by email, in which it explained that the registration of the Domain Name constituted a breach of the Complainant’s prior rights over the trademark PLAVIX.
Nevertheless, the Respondent has never answered to this letter. The Respondent's failure to provide explanation reinforces the inference of bad faith registration.
Consequently, it clearly appears that the Domain Name was registered intentionally and is being used in bad faith for a commercial purpose without any rights or legitimate interests by the Respondent.
The Complainant requests that the Domain Name be cancelled.
The Respondent did not provide any Response to the Complainant’s allegations.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy of cancellation of a domain name under the Policy it is necessary that the Complainant must prove, as required by paragraph 4(a) of the Policy, that
(i) the 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.
The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed to a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences therefrom as it considers appropriate.”
Consequently, the Panel must proceed with an assessment of the Complaint on its merits.
A. Identical or Confusingly Similar
The Domain Name is <plavixcom.com>.
The Complainant has clearly evinced longstanding trademark rights for the mark PLAVIX that predate the registration of the Domain Name.
It is acknowledged that the domain suffix “.com” is not pertinent to the normal consideration of identity or confusing similarity for the purposes of the Policy. In this case, the difference is that the “com” element has also been duplicated in the wording selected by the Respondent, so that effectively the Domain Name will be perceived as <PLAVIXcom.com>.
The Panel is in no doubt that the initial element of the Domain Name will be recognized as identical to the Complainant’s mark PLAVIX, which is itself a highly distinctive invented word mark. Why then might the Respondent have chosen to add “com” to this mark? In the Panel’s view, and particularly having regard to the nature of the Respondent’s use of the mark, one likely explanation would be to catch users who mistype the URL address “www.plavix.com” by missing out the “.” (dot) as “www.plavixcom” and relying on the autocomplete feature whereby some browsers will assume the gTLD “.com” is to be included in the URL when no TLD is typed by an Internet user. Typing “www.plaxvixcom” and hitting return might then automatically redirect an Internet user to the URL “www.plavixcom.COM” (instead of to “www.plavix.com”).
In any event, the Panel considers that the addition of the extra “com” is insufficient to avoid the conclusion that the element “plavixcom” is confusingly similar to PLAVIX, and indeed that in the Panel’s view it was plainly intended to be so by the Respondent.
Consequently, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has demonstrated rights, and the requirements of paragraph 4(a)(i) of the Policy are met.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, (by way of example) might serve to demonstrate the Respondent’s rights or legitimate interests to the Domain Name for the purposes of paragraph 4(a)(ii)of the Policy:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Respondent has made no express claims to any relevant prior rights of his own; on the current record it appears that the Respondent, Pavlishin Mihail, is not known by the Domain Name, nor does he claim to have made any legitimate noncommercial or fair use of the Domain Name.
Rather, the evidence in the Complaint supports the conclusion that the Respondent has simply adopted the Domain Name to take advantage of public recognition of the Complainant’s PLAVIX mark and products - specifically by establishing a website for selling pharmaceuticals under the PLAVIX mark - and thereby passing itself off as being part of or connected with the Complainant’s business.
In the Panel’s view such deceptive activity could never be considered as a bona fide offering or use. It is unquestionably an illegitimate use, expressly for commercial gain, which will inevitably mislead and divert consumers and tarnish the Complainant’s name and mark, and is entirely the opposite of the legitimate examples above from paragraphs 4(c)(i) and (iii) of the Policy.
Consequently, the Panel accepts the Complainant’s contention that the Respondent has no rights or legitimate interests in respect of the Domain Name and the requirements of paragraph 4(a)(ii) of the Policy are met.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, the following are some pertinent examples of the sort of conduct which a panel may take (without limitation) as evidence of registration and use in bad faith:
(iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website 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 [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.
The Complainant’s evidence, which has not been rebutted or challenged by the Respondent, convincingly establishes that the Respondent has registered and used the Domain Name for the purpose of operating a website using the PLAVIX mark and name to attract Internet users, for commercial gain, through pay-per-click connections and/or directly through unregulated online pharmaceutical services selling the PLAVIX or ersatz substitute products. The evidence shows that the website at the Domain Name was intended to create a misleading and confusing impression as to the source, affiliation or endorsement of the Respondent’s website business. Inevitably, such misuse will cause disruption and damage to the Complainant’s business name and reputation.
Additionally, the Panel also considers it significant that the identity and contact details of the Respondent were initially concealed behind a so-called “privacy” service, and that even the contact details behind that service were apparently invalid. From the Respondent’s website screenshots provided in the Complaint, it also appeared that no physical address was provided on the website to identify where the operator of that website was really located. In the Panel’s opinion, no ordinary commercial business has any justification for concealing its name and true contact details, and such action would indeed be in contravention of company law and consumer protection legislation in many jurisdictions. Absent any legitimate explanation, such concealment must invite a presumption of bad faith intent and in this case the evidence suggests to the Panel that the Respondent’s business location is hidden precisely to avoid the fiscal and regulatory costs and oversight, which legitimate pharmaceutical businesses would be obliged to bear in the interest of consumer protection. Consumers would therefore be put at risk to their health as a consequence of such avoidance.
For the same reasons as in Section B above, the Panel also considers the example of paragraph 4(b)(iv) of the Policy is directly applicable in the present case.
For the purposes of the Policy, therefore, the Panel concludes that the Domain Name has been registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy is also met.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, and as requested by the Complainant (The Panel notes the evident risk that the Domain Name will immediately be re-registered for some other party via a drop-catching service where cancelled; the Panel also notes the Complainant’s request for the remedy of cancellation), the Panel orders that the domain name <plavixcom.com> be cancelled.
Dated: September 15, 2010