World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi-Aventis v. Kieco Inc. / Noel Martin

Case No. D2010-1980

1. The Parties

1.1 The Complainant is Sanofi-Aventis of Paris, France (the “Complainant”) represented by Selarl Marchais De Candé, France.

1.2 The Respondent is Kieco Inc. / Noel Martin of Chestermere, Canada (the “Respondent”).

2. The Domain Name and Registrar

2.1 The disputed domain name <plavixgeneric.com> (the “disputed Domain Name”) is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2010. On November 19, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On November 20, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

3.2 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”).

3.3 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 November 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2010. On November 23, 2010, the Respondent sent an email communication to the Center regarding the possibility of transferring the disputed domain name to the Complainant. The Respondent did not otherwise submit any formal response. Accordingly, the Center notified the Respondent’s default on December 14, 2010.

3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on December 20, 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

4.1. The Complainant is a large pharmaceutical group in Europe, with its head office in France, formed in the year 2004 as a result of a merger between two French companies, Aventis SA and Sanofi – Synthelabo. The Complainant is ranked number four in the world, with consolidated net sales of EUR 29.3 billion in 2009 and Research and Development expenditure of EUR 4.6 billion in 2009. The Complainant is multinational, and is settled in well over 100 countries around 5 continents.

4.2 The Complainant offers for sale a wide range of high growth drugs such as Lovenox, Plavix, Taxotere, Eloxatin, Ambien and Lantus, and in particular, has developed and sold throughout the world under the trademark PLAVIX, a drug indicated for the reduction of recurrence after ischemic cerebrovascular disorder. PLAVIX has been commercialized since 1998, and is now available in well over 115 countries.

4.3 According to the WhoIs database printout, the disputed Domain Name, <plavixgeneric.com> was registered on May 23, 2010.

5. Parties’ Contentions

A. Complainant

5.1. The Complainant has filed trademark applications for PLAVIX in well over 100 countries, some of the national and international trademark registrations as annexed to these proceedings include:

(i) PLAVIX French trademark No. 93484877 registered on July 28, 1993 in class 5 and duly renewed;

(ii) PLAVIX U.K. trademark No. 2068394 registered on December 19, 1997 in class 5 and duly renewed;

(iii) PLAVIX American trademark No. 2042583 registered on March 11, 1997 in class 5 and duly renewed;

(iv) PLAVIX Canadian trademark No. TMA509097 registered on March 10, 1999 in class 5 and;

(v) PLAVIX Community trademark No. 002236578 registered on April 18, 2002 in class 5.

The Complainant has also registered the following domain names with regards to Plavix pharmaceutical products as shown in the WhoIs database printouts annexed to these proceedings:

(i) <plavix.net> registered on November 19, 1999;

(ii) <plavix.com> registered on March 26, 1998; and

(iii) <plavix.org> registered on October 20, 1999

5.2 The Complainant therefore contends that the disputed Domain Name, <plavixgeneric.com> is confusingly similar to the Complainant’s trademarks and domain names over which the Complainant has long established rights. The Complainant asserts that the disputed Domain Name wholly incorporates the Complainant’s trademark PLAVIX, which is said to have no particular meaning in any language and as a consequence, is highly distinctive. The Complainant further contends that the only difference between the Complainant’s trademarks and the disputed Domain Name is the addition of the word “generic” which does not overcome the confusing similarity between the disputed Domain Name and the Complainant’s PLAVIX trademarks. The Complainant states further that the likelihood of confusion is heightened by reason of the notoriety of the Complainant’s trademarks as acknowledged by previous decisions such as, among other decisions, Sanofi-Aventis v. Sven Barthel, WIPO Case No. D2009-1305.

5.3 The Complainant also states that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name since the Complainant has never licensed or permitted the Respondent to use its trademarks or to register any domain name, including the above listed trademarks, authorizing it to sell the so-called “PLAVIX generic drug”. The Complainant further argues that the Respondent cannot be using the disputed Domain Name in connection with a bona fide offering of goods and services, so as to confer a right or legitimate interest in it, in accordance with paragraph 4(c)(i) of the Policy. For instance, the Complainant refers to a number of websites and home pages and discloses that the Respondent is using the disputed Domain Name to direct Internet users to a typical parking website which is used to redirect Internet users to websites of the Complainant’s competitors where counterfeit PLAVIX products or other pharmaceutical products from the Complainant’s competitors are offered for sale.

5.4 With regards to registration and use in bad faith, the Complainant also submits that the Respondent clearly registered the disputed Domain Name for the purpose of: (i) attracting Internet users to the Respondent’s website; (ii) deriving unfair benefit from the Complainant’s well-known product; and (iii) disrupting the business of the Complainant by creating a likelihood of confusion between the trademarks and the disputed Domain Name. The Complainant contends that the Respondent must have been aware of the Complainant’s trademarks, domain names, websites and drugs known under the name PLAVIX. The Complainant therefore asserts that the Respondent could not have been unaware of the risk of deception and confusion that would follow in the minds of Internet users when registering the disputed Domain Name.

5.5 The Complainant, in support of the contention above, submits that when one types the web address “www.plavixgeneric.com”, one is automatically directed to a home page with the Complainant’s trademark PLAVIX reproduced on it, and with tabs leading Internet users to online pharmacies which offer for sale counterfeit PLAVIX products and other products from the Complainant’s competitors. Accordingly, the Complainant asserts that it is very likely that the Respondent’s purpose in such use, is to collect money on a pay-per-click basis, by using the notoriety of the Complainant’s trademark in order to increase the number of clicks, which is one of the typical situations evidencing bad faith as held by previous panels. See Sanofi-Aventis v. Aleksandr Ivanov, WIPO Case No. D2009-1397; Sanofi-Aventis and Aventis Pharma SA v. Advent Innovations, WIPO Case No. D2005-0377. Finally, the Complainant alludes further to the Respondent’s failure or refusal to respond to a cease and desist letter dispatched by email on October 7, 2010 as further evidence of bad faith registration and use of the disputed Domain Name.

B. Respondent

5.6 The Respondent did not formally reply to the Complainant’s contentions and is in default. Therefore in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default.

6. Discussion and Findings

6.1 Under paragraph 4(a) of the Policy, to succeed in these administrative proceedings, the Complainant must prove: (i) that the disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name; and (iii) that the disputed Domain Name has been registered and is being used in bad faith.

6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in the proceedings.

A. Identical or Confusingly Similar

6.3 The Panel undoubtedly finds the disputed Domain Name, <plavixgeneric.com> confusingly similar to the trademarks and domain names over which the Complainant has long established rights. The Panel notes that according to the WhoIs database printout, the disputed Domain Name was registered on May 23, 2010, well after the Complainant acquired trademark rights in the trademark PLAVIX and well after the registration of domain names related to Plavix pharmaceutical products. The Panel without any hesitation finds that the Respondent’s addition of the word “generic” to the disputed Domain Name, which in any event wholly incorporates the Complainant’s trademark PLAVIX, does not in any way sufficiently distinguish the disputed domain Name from the marks of the Complainant. In addition, this Panel is satisfied, just as the Complainant contends, that the likelihood of confusion in the minds of Internet users is not in any way prevented or reduced by the mere addition of the word “generic”.

6.4 The Panel in this regard relies on a number of previous decisions cited by the Complainant such as the decisions in Sanofi-Aventis v. Sven Barthel, WIPO Case No. D2009-1305 and Sanofi-Aventis v. MC EU, WIPO Case No. D2006-0403.

6.5 Accordingly, the Panel finds that the Complainant has established that the disputed Domain Name is confusingly similar to the Complainant’s trademarks in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

6.6 The Panel finds that the Respondent has failed to provide any evidence or circumstances required to establish that there exists any rights or legitimate interests in the disputed Domain Name within the ambit of paragraph 4(c) of the Policy. The Complainant asserts that the Respondent was not using the disputed Domain Name in connection with a bona fide offering of goods or services, since there is no resemblance between the Respondent’s name and the mark PLAVIX, nor has the Respondent ever been licensed or permitted to use the Complainant’s trademarks, or to register any domain name including the Complainant’s trademarks. The Panel is equally satisfied from the evidence produced by the Complainant that the Respondent is simply using the disputed Domain Name to divert Internet users to a parking website which redirects Internet users to websites of the Complainant’s competitors where other pharmaceutical products are offered for sale.

6.7 The Panel is therefore satisfied that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed Domain Name and that the Respondent has failed to rebut such prima facie case by, for example, establishing a bona fide offering of goods and services as stated in the case of Oki Data Americas, Inc. v. ASD Inc., WIPO Case No. D2001–0903.

6.8 In the circumstances, it follows that the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interest in the disputed Domain Name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.9 As regards the issue of bad faith registration and use, the Panel is equally satisfied that the Respondent registered the disputed Domain Name in bad faith and continued to use the disputed Domain Name in bad faith, even to the extent of ignoring a cease and desist letter issued by the Complainant on or around October 7, 2010. In addition, the Panel finds that the Respondent has failed to refute a number of factors that the Panel has taken into consideration in arriving at this conclusion. First of all, the Panel finds that the Respondent knew or ought to have known of the Complainant’s worldwide rights in the PLAVIX trademark since 1993 and thereafter, the disputed Domain Name having only been registered on May 23, 2010. Secondly, the Respondent has not countered the preponderant evidence of websites and home pages produced by the Complainant, demonstrating the Respondent’s continuous usage of the disputed Domain Name for unjust commercial gain, mainly by diverting Internet users to websites where the Complainant’s competitors and other online pharmacies are offering other pharmaceutical products for sale. In addition, the Respondent has not denied the likelihood of receiving payment for every click on the website linked to the disputed Domain Name. The Panel finds the Complainant’s reliance on previous decisions classifying the usage of disputed domain names for unjustified commercial gain as evidence of bad faith most relevant in the circumstances. The Complainant in this regard, relies on the decisions in Sanofi-Aventis v. Aleksandr Ivanov, WIPO Case No. D2009-1397 and Sanofi-aventis and Aventis Pharma SA v. Advent Innovations, WIPO Case No. D2005-0377. Thirdly, as earlier indicated, the Panel draws adverse inferences from the failure or refusal of the Respondent to submit a formal response to the dispute within the prescribed time limits in accordance with paragraph 5(a) of the Rules.

6.10 The Panel therefore finds that the Complainant has established the finding of bad faith use and registration within the ambit of paragraph 4(b)(iv) of the Policy.

7. Decision

7.1 For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed Domain Name <plavixgeneric.com> be cancelled forthwith.

Ike Ehiribe
Sole Panelist
Dated: January 3, 2011

 

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