WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis v. Ho Nim
Case No. D2010-1272
1. The Parties
The Complainant is Sanofi-Aventis of France represented by Armfelt (A.A.R.P.I) of France.
The Respondent is Ho Nim of the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <whyplavix.com> is registered with Above.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2010. On July 30, 2010, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On August 2, 2010, Above.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 29, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 30, 2010.
The Center appointed Kaya Köklü as the sole panelist in this matter on September 5, 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.
4. Factual Background
The Complainant is a well-known multi-national company with a focus on pharmaceutical products. It is present in more than 100 countries worldwide and offers a wide range of prescription drugs.
One of its commercially most successful drugs is named "Plavix", a drug indicated for the prevention of ischemic events caused by atherothrombosis.
As evidenced in the Complaint, the Complainant owns a large number of PLAVIX trademarks in more than 100 jurisdictions. The Complainant has also registered and operated the trademark PLAVIX as a domain name under several gTLDs and ccTLDs worldwide, e.g. <plavix.com>.
As far as can be seen from the current record, the Complainant’s trademarks and domain names indicated in the Complaint have been registered prior to the disputed domain name <whyplavix.com>, which was created on October 13, 2009.
According to the WhoIs records registration information confirmed by the registrar, the Respondent seems to be an individual located in the People’s Republic of China.
An independent research undertaken by the Panel in the database of WIPO UDRP domain name decisions revealed that since beginning of 2010 the Respondent was involved in more than 15 domain name disputes as a Respondent, all of them finalized with a transfer or cancellation decision in favour of the relevant Complainant regarding each subject domain name.
When the Panel visited the disputed domain name on September 7, 2010, there were several commercial offers for generic versions of the Complainant’s drug Plavix.
5. Parties’ Contentions
The Complainant argues that its drug Plavix is one of the world's 10 leading medicines with a significant recognition in the market. The Complainant further asserts that Plavix is currently the only medicine legally on the market indicated for the secondary prevention of atherothrombosis regardless of the location of the primary arterial damage. It is further asserted that Plavix was commercialized since 1998, first in the United States and now in more than 80 countries around the world, including but not limited to North America, the People’s Republic of China and Turkey.
In its Complaint, the Complainant requests the cancellation of the disputed domain name.
It argues that the disputed domain name is identical to the Complainant's trademarks as it fully incorporates the Complainant's trademark PLAVIX. The Complainant further argues that the only difference between the disputed domain name and the Complainant's trademark is that the disputed domain name additionally comprises a generic or dictionary term, namely "why". It is argued that the use of such a generic term may even add to the confusing similarity as it creates the impression that the domain name has a connection with the Complainant.
Furthermore, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name and has registered and used the disputed domain name in bad faith. In this regard, the Complainant states that it has never granted a licence, consent or other right by which the Respondent would have been entitled to register or use the disputed domain name comprising the Complainant's trademark PLAVIX.
In addition, the Complainant alleges that the Respondent has never used and does not intend to use the mark PLAVIX in connection with a bona fide offering of goods or services.
Finally, the Complainant has no doubts that the Respondent must have known the PLAVIX trademark well before the registration of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant is obliged to prove that each of the three following elements are satisfied:
(i) The disputed domain name is identical or confusingly similar to the trademark 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 disputed domain name has been registered and been used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint, Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may as appropriately accept the provided reasonable factual allegations in the Complaint as true, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
In this regard it is noted that an independent research, by visiting the Internet site linked to the disputed domain name, has been performed by the Panel on September 7, 2010. The competence of the Panel to perform such independent research is in line with previous UDRP decisions, e.g., Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <whyplavix.com> is confusingly similar to the Complainant's trademarks.
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights regarding its mark PLAVIX. As evidenced in the Complaint, the Complainant owns a large number of PLAVIX trademarks in more than 100 jurisdictions worldwide. As far as can be seen from the current record, most of them were registered between 1993 and 1995.
Although not identical, the disputed domain name <whyplavix.com> fully incorporates the PLAVIX trademark.
The disputed domain name differs from the respective trademarks only through the addition of the generic term "why". The Panel finds that the incorporation of such generic term does not negate the confusing similarity between the Complainant's trademarks and the disputed domain name as the full inclusion of the Complainant’s well known mark may cause the false impression that any offered product under the disputed domain name is linked to the Complainant.
In other words, the Panel is of the opinion that the disputed domain name which wholly incorporates the Complainant's registered trademark PLAVIX is sufficient to establish confusing similarity for the purposes of the Policy (see Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105).
In light of the above, the Panel concludes that the first requirement under paragraph 4(a) of the Policy is fulfilled.
B. Rights or Legitimate Interests
The Panel further concludes that the Respondent has not demonstrated any right or legitimate interest in the disputed domain name.
While the burden of proof remains with the Complainant, the Panel has recognized that this would result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent's lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the responsibility shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements in paragraph 4(a)(ii) of the Policy, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or arguments demonstrate a right or legitimate interest in the disputed domain name according to the Policy, paragraph 4(a)(ii) and 4(c).
With its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no trademark, license or any similar right to use the Complainant’s mark the disputed domain name.
In the absence of a Response by the Respondent, there is also no indication in the file that the Respondent is commonly known by the disputed domain name.
In addition, the Respondent has failed to demonstrate any of the three nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or any other evidence of a right or legitimate interest in the domain name. In particular, the Respondent has failed to show that the disputed domain name has been used in connection with a bona fide offering of goods or services.
Finally, there is also no indication that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without the intent for commercial gain to misleadingly divert users or to tarnish the PLAVIX trademark.
Hence, the Panel finds that the Complainant has also satisfied the requirements of 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is further convinced that the Respondent has registered and used the disputed domain name in bad faith.
The Panel is well aware of the reputation and recognition of the Complainant's trademark PLAVIX. The Panel believes that the Respondent must have known of this trademark when registering the disputed domain name. This is in particular likely as the disputed domain name has been registered well after the Complainant's trademark PLAVIX has become recognized worldwide, including in People’s Republic of China. It rather appears that the Respondent has registered the disputed domain name solely for the purpose of creating an association with the Complainant, in particular with its Plavix product. After having visited the Internet site linked to the disputed domain name, the Panel is of the opinion that the Respondent has intentionally registered the disputed domain name in order to offer (by himself or via a third party) generic versions of the Complainant's product by misleading Internet users who may search for official information about Plavix. Another indication for the Respondent’s bad faith is that since beginning 2010, it was involved in more than 15 WIPO UDRP domain name disputes as a Respondent. According to the WIPO database of UDRP domain name decisions, all these disputes were finalized in favour of the relevant complainant by ordering a transfer or cancellation of the disputed domain names.
Further, the Panel finds that the Respondent's failure to respond to the Complaint also supports the conclusion that it has registered and used the disputed domain name in bad faith in order to mislead patients and consumers.
For the foregoing reasons, the Panel cannot conceive of any good faith use of the disputed domain name by the Respondent.
The Panel therefore concludes that the disputed domain name was registered and used in bad faith and that the Complainant has also satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.
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 <whyplavix.com> be cancelled.
Dated: September 8, 2010.