WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis v. N/A Pavlishin Mihail
Case No. D2010-1557
1. The Parties
The Complainant is Sanofi-Aventis of Gentilly, France, represented by Armfelt (a.a.r.p.i), Paris, France.
The Respondent is N/A Pavlishin Mihail of Lviv Oblast, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <buy-plavix.com> is registered with UK2 Group Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2010. On September 15, 2010, the Center transmitted by email to UK2 Group Ltd. a request for registrar verification in connection with the disputed domain name. On September 15, 2010, UK2 Group Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which slightly differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 17, 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 September 23, 2010.
The Center verified that the amended 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 September 24, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2010.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on October 27, 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 administrative proceedings were conducted in English for this was the language of the disputed domain name’s Registration Agreement.
4. Factual Background
The Complainant is the world’s fourth largest pharmaceutical company by sales volume, trading in more than 100 countries across 5 continents. Its core business revolves around seven major therapeutic areas: cardiovascular, central nervous system, metabolism, internal medicine, oncology, thrombosis, and vaccines.
The Complainant has used the mark PLAVIX in connection with a top-selling drug prescribed for atherothrombosis-related events, that is available in more than 80 countries and has treated some 41 million patients throughout the world.
The PLAVIX mark has been registered in France and many other countries since 1993 in international class 5 with respect to pharmaceutical products, as shown in the trademark registration certificates and notices of renewal annexed to the Complaint.
To provide information on the company and its products, the Complainant owns several domain names incorporating its vast portfolio of trademarks, including PLAVIX.
For its part, the Respondent registered <buy-plavix.com> on May 4, 2009. The disputed domain name resolves to a landing portal featuring links to online pharmacies where the Complainant’s Plavix medicine can purportedly be purchased.
5. Parties’ Contentions
The Complainant puts forward the following factual and legal submissions:
i. Given the widespread use of the Plavix product, the Complainant has lodged with the Center more than 14 administrative proceedings involving cybersquatting of the PLAVIX mark, all of which resulted in decisions ordering transfer or cancellation of the domain names at issue;
ii. The only differences between the disputed domain name vis-à-vis the Complainant’s PLAVIX trademark is the addition of the descriptive term “buy”, along with the gTLD “.com”, both of which have been found by previous panels to be insufficient to avoid confusing similarity under the Policy;
iii. There is no doubt that the association of the mark PLAVIX with the descriptive word “buy” generates confusion for persons accessing the disputed domain name, and they are bound to think that the latter has a connection with the Complainant;
iv. Insofar as .com is required for registration of a domain name, said gTLD has no distinguishing capacity in the context of the Policy and does not alter the confusing similarity where a trademark is represented in the domain name;
v. The Complainant’s rights in the PLAVIX trademark predate registration of the disputed domain name;
vi. The Respondent has been granted no license, right or authorization to register or use the Complainant’s PLAVIX trademark in the disputed domain name;
vii. The Respondent makes no bona fide use of the disputed domain name under the Oki Data test as competitive products are actually offered for sale in the Respondent’s website, and no attempt was made to disclaim an association of the web portal with the Complainant. (See Oki Data Americas, Inc. v. ASD, Inc, WIPO Case No. D2001-0903.
viii. Considering the subject of the disputed domain name’s website, the Respondent was obviously aware of the existence of the PLAVIX trademark;
ix. By using the disputed domain name in connection with a third party’s on-line pharmacy apparently to earn commission fees, the Respondent is intentionally attempting to attract for commercial gain, Internet users to its website by creating confusion with the Complainant’s mark;
x. The Respondent’s use of the disputed domain name misleads Internet users into believing that the PLAVIX medication is freely available without prescription, which may in turn be potentially harmful to the health of Internet consumers who administer themselves the drug without medical supervision;
xi. Previous UDRP panels have held that selling prescription medication without any physician’s examination or prescription, and consequently in violation of public health regulations, can constitute evidence of the Respondent’s bad faith use of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to make out its case, the Complainant must demonstrate that the following three conditions are met:
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 disputed domain name; and
iii. The disputed domain name has been registered and is being used in bad faith.
The Respondent’s default
Even though the Respondent’s default does not dispense the Complainant with the burden of establishing the three elements required by paragraph 4(a) of the Policy (see section 4.6 of the WIPO Overview of WIPO Panels Views on Selected UDRP Questions (“WIPO Overview”)), the Panel may accept all reasonable and supported allegations and inferences made in the Complaint as true. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403 (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint) and also Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Claim No. 95095 (holding that the respondent’s default allows all reasonable inferences of fact in the allegations of the complainant to be deemed true).
A. Identical or Confusingly Similar
As noted by the majority of UDRP panels, the question under paragraph 4(a) of the Policy is whether the disputed domain name is confusingly similar to the Complainant’s mark, not whether the website to which the domain name resolves will confuse Internet users. See The Vanguard Group, Inc. v. John Zuccarini, WIPO Case No. D2002-0834 (A complainant need not establish actual confusion because the test is objective, not subjective).
Accordingly, from a side-by-side comparison between “buy-plavix”, being the relevant portion of the disputed domain name, and the mark PLAVIX, it becomes noticeable that the only extraneous element brought into the subject domain name apart from the Complainant’s mark is the word “buy”, which has an ordinary generic connotation in commerce. See F. Hoffmann-La Roche AG v. PrivacyProtect.org, WIPO Case No. D2007-1708 (the word “buy” is a generic term and based on previous panel decisions, the inclusion of such a word does not sufficiently distinguish the disputed domain name from the complainant’s mark).
It is well settled that confusing similarity is warranted where the disputed domain name incorporates the Complainant’s trademark in its entirety despite the addition of a generic term. See F. Hoffmann-La Roche AG v. Domain Admin, PrivacyProtect.org / Sergey Mishin, WIPO Case No. D2010-1256 (finding the domain name <buy-xenical.org> to be confusingly similar to the mark XENICAL as the word “buy” could imply some endorsement on the part of the Complainant); also Sanofi-Aventis v. Webinterfaces LLC, WIPO Case No. DWS2005-0003 (rather than distinguishing the Respondent’s domain name from the Complainant’s trademark, the addition of the generic word “buy” makes <buyambien.ws> confusingly similar to the mark AMBIEN).
By the same token, given the conceptual association created by the word “buy” when used in connection with a trademarked drug like PLAVIX that is “for sale” in the market, the Panel finds that confusion on the Internet between the subject domain name and the Complainant’s trademark becomes inevitable.
As a result, this Panel finds that the Complainant has met the first threshold of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
As a preliminary matter, the Panel takes note of the Complainant’s unrebutted representation never to have licensed or authorized the Respondent to use the PLAVIX mark as domain name or otherwise.
More specifically, it is to be inferred from the evidence on record that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers, nor is it using it in connection with a bona fide offering of goods or services.
According to the prevailing view of previous UDRP panels, a reseller may be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if inter alia (1) the respondent is actually offering goods and services at issue, (2) the respondent is using the site to sell only the trademarked goods, and (3) the site is accurately disclosing the respondent’s relationship with the trademark owner. See WIPO Overview of Panel Views on Selected UDRP Questions at paragraph 2.3, and also Oki Data Americas, Inc. v. ASD, Inc., Supra cited by the Complainant. This Panel finds that the Respondent here fails to satisfy the reseller standard because the website at the disputed domain name: i) does not disclaim a relationship with the Complainant; ii) merely serves as a gateway for a third party’s pharmacy portal, presumably for profit; iii) not only offers genuine Plavix medicine to online consumers but also appears to offer competitive products, generic drugs, and placebos.
In the same vein, there is no indication on the website at the disputed domain name that the Respondent is commonly known by or is trading under the name “buy-plavix.com”.
Based on the foregoing considerations and in view of the Respondent’s default, the Panel concludes that none of the defenses set forth in paragraph 4(c) of the Policy is prima facie available to the Respondent.
The Complainant has thus demonstrated the second limb of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
First and foremost, it is to be noted that the Respondent was not only aware of the Complainant’s PLAVIX mark at the time of registration of the disputed domain name but has since traded on the goodwill associated with the said mark. The Panel finds that such awareness on the part of the Respondent is proven by the fact that PLAVIX medicine is actually offered for sale on the Respondent’s site, which presupposes actual knowledge of the PLAVIX mark as used in commerce. As held in Digital Spy Limited v. Moniker Privacy Services and Express Corporation, WIPO Case No. D2007-0160, registering a domain name with knowledge of another’s trademark rights in the name, and with intention to divert traffic, is evidence of bad faith.
Having examined the website at the disputed domain name, the Panel is of the opinion that, by using the disputed domain name in connection with a third party’s on-line pharmacy to earn commission revenues, the Respondent has been intentionally attempting to attract for commercial gain, Internet users to its website by creating confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of the online retailing services offered therein, thus falling under the bad faith scenario described by paragraph 4(b)(iv) of the Policy.
The Complainant further submits that the Respondent’s use of the disputed domain name misleads Internet users into believing that the Plavix medication is freely available without prescription, which may in turn be potentially harmful to the health of Internet consumers who administer themselves the drug without medical supervision. The Complainant then cites Lilly ICOS LLC v. Tudor Burden Marketing, WIPO Case No. D2004-0794 in support of its proposition that selling prescription medication without any physician’s examination or prescription, and consequently in violation of public health regulations, can constitute evidence of the Respondent’s bad faith use of the disputed domain name.
This proposition was rejected in Sanofi-Aventis v. Fulmarh Verdun, WIPO Case No. DCC2008-0002, where the panel interpreted the Policy as being concerned with abusive registration and the infringement of a trademark in a domain name, rather than matters of the quality, legality or safety of a product, which would require value judgments and be more properly assessed in another forum.
On the facts, the sale of a serious medication like PLAVIX without the requisite prescription and medical examination was found to be in this instance a contributory factor in finding bad faith use of the disputed domain name as none of the Complainant’s sponsored websites offer PLAVIX, nor any of its numerous other pharmaceutical products, freely for sale over the Internet.
Under the above circumstances, the Panel is satisfied that the Complainant has discharged its burden as required by 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 directs that the disputed domain name <buy-plavix.com> be cancelled.
Reynaldo Urtiaga Escobar
Dated: November 10, 2010