WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis v. Domain Admin/ Andrey Volkovich
Case No. D2010-2009
1. The Parties
The Complainant is Sanofi-Aventis of Gentilly, France, represented by Selarl Marchais De Candé, France.
The Respondent is Domain Admin/ Andrey Volkovich of Minsk, Belarus.
2. The Domain Names and Registrars
The disputed domain names <buyplavixcanada.com>, and <plavixuk.net> are registered with NetEarth One Inc. d/b/a NetEarth, and the disputed domain name <buyplavixonline.org> is registered with UK2 Group Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2010. On November 23, 2010, the Center transmitted by email to NetEarth One Inc. d/b/a NetEarth and UK2 Group Ltd. a request for registrar verification in connection with the disputed domain names. On November 23, 2010, UK2 Group Ltd, and on November 24, 2010, NetEarth One Inc. d/b/a NetEarth transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 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 December 6, 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 December 13, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 2, 2011. On December 17, 2010 the Respondent submitted an informal communication to which the Center replied to the parties that unless advised otherwise by the Respondent, the Center would on the due date treat the communication as being the Respondent’s Response to the Complaint, and proceed accordingly to appoint the panel. Since no further communication was submitted before the appointment of the Panel the Center sent an email communication to the parties confirming that no further communication was received from Respondent and that it would proceed to appoint the Panel.
The Center appointed Lana Habash as the sole panelist in this matter on January 13, 2011. 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 Sanofi-Aventis is a leading pharmaceutical company in Europe and is known worldwide, with a presence in more than 100 countries in the world, with a large portfolio of high growth drugs, six of which are blockbusters, including the drug known as “Plavix”, which is sold in tablet form, with the standard dosage of 75 mg, and is indicated for the reduction of recurrence after ischemic cerebrovascular disorder. According to the Complainant, the drug has been used by 100 million patients worldwide, since it has been commercialized in the United States of America, Germany and England as of 1998. The drug is sold under the trademark PLAVIX (“Trademark”), which is registered by the Complainant in a number of countries, with the earliest registration date of July 28, 1993 and with registrations in Canada and the United Kingdom (“UK”). The Complainant has also registered a number of domain names including the trademark PLAVIX in the three top level domains, as of 1998.
The disputed domain names <buyplavixcanada.com> was created on February 24, 2010, and the disputed domain names <buyplavixonline.org> and <plavixuk.net> were created on January 17, 2010; all three disputed domain names are held by Andrey Volkovich. On the date the Complaint was filed, the three disputed domain names pointed to websites that sold drugs online, including generic PLAVIX; now the disputed domain names <buyplavixcanada.com> and <plavixuk.net> do not point to any websites, whereas the disputed domain name <buyplavixonline.org> point to a parking website that includes links to where drugs may be purchased online and a link to pricing information about the drug PLAVIX. On July 19, 2010, the Complainant has sent three cease and desist letters to the Respondent, who did not reply to any of them.
5. Parties’ Contentions
The Complainant contends the following:
The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights, as the disputed domain names reproduce the Complainant’s trademark PLAVIX in its entirety; the trademark PLAVIX does not have any particular meaning is highly distinctive;
The reproduction of the Complainant’s trademark in its entirety as the dominant part of the disputed domain names makes the disputed domain names confusingly similar to that trademark regardless of the additional elements incorporated in the disputed domain names. The only distinctive part in the disputed domain names is the corresponding PLAVIX trademark owned by the Complainant.
The disputed domain names <buyplavixcanada.com> and <plavixuk.net> incorporate geographic indicators, which are not sufficient to escape the finding of confusing similarity and do not change the overall impression that these domain names are connected with the Complainant. It is possible that these were created in order to give the public the impression that the products under PLAVIX trademark come from Canada or the UK as the case may be.
The disputed domain names <buyplavixonline.org> and <buyplavixcanada.com> are composed of the Complainant’s trademark PLAVIX and generic words “buy” and “online”. The use of the generic words with the distinctive trademark do not prevent the impression of confusing similarity with the Complainant’s trademark;
The Respondent has no rights or legitimate interests in respect of the disputed domain names; the Respondent has never been licensed or permitted by the Complainant to register the disputed domain names and/or use the Trademark;
The Respondent is not using the disputed domain names in relation with any bona fide offering of goods and services. The Respondent is not itself a genuine reseller of the Complainant’s products. The Respondent uses the disputed domain names to link to websites where products of the Complainant’s competitors are being sold.
The Respondent is not making legitimate noncommercial or fair use of the disputed domain names but is using them to obtain commercial gain by misleadingly diverting consumers from the Complainant’s websites to those that promote products of the Complainant’s competitors.
The disputed domain names have been registered in bad faith; as they are registered to attract Internet users to the Respondent’s websites, unlawfully benefiting from the Complainant’s fame, which the Respondent must have been aware of. In fact, including the geographic indications of Canada and the UK may suggest that the Respondent is associated with the Complainant in these countries;
The disputed domain names are being used in bad faith, as they direct Internet users to online pharmacies that are not the official website of the Complainant’s and that the Respondent is deliberately trying to gain unfair benefit from the fame of the Complainant’s reputation;
The websites offer for sale drugs including PLAVIX, which may lead Internet users into believing that the websites are associated with the Complainant; selling the generic drug on this website without prescription is potentially harmful to patients.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain names <plavix-medication.com> transferred to it, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(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 was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated its rights to the trademark PLAVIX. The Panel is also satisfied that the Complainant has established that PLAVIX is a widely known trademark.
The disputed domain names contain the Complainant’s trademark PLAVIX in its entirety, with the addition of the geographic indications “Canada” or “UK” and the generic words “buy” and “online”. The Panel is of the view that the addition of such geographic indications and/or generic words to the highly distinctive Complainant’s Trademark does not detract from the distinctiveness of the dominant part of the disputed domain names, to the contrary, in this particular case, it adds to the confusion on part of the Internet users who would think that the website represent the UK or the Canadian branches of the Complainant’s business. In numerous UDRP Decisions, panels have found that the addition of a geographic indication to the distinctive trademark does not diminish the distinctiveness of the trademark (see, AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553, and Sanofi-Aventis v. Andrey Volkovich, WIPO Case No. D2010-1230).
Similarly, the addition of the generic words “buy” and “online” to the distinctive Trademark does not prevent the finding of confusing similarity, see (Sanofi-Aventis v. Antoine Tardif/ Cybernet Marketing, WIPO Case No. D2006-879).
B. Rights or Legitimate Interests
The Complainant is required to make a prima facie case of lack of rights or legitimate interest in the disputed domain names on part of the Respondent. The failure to submit a response by the Respondent in some cases supports a finding of lack of such rights; nonetheless, the Panel is required to examine the case to determine whether the Respondent has any rights or legitimate interests in the disputed domain names.
According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) the respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute;
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark 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 complainant’s marks.
Considering the facts at hand, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain names. The mere registration of a domain name does not give rise to a “legitimate interest”. It is evident that the Respondent attempted to use the good will of the Trademark PLAVIX to divert Internet users to its website, which offers for sale drugs, including those that correspond to PLAVIX. This, in the Panel’s view does not constitute a bona fide offering of goods or services, nor is it a legitimate noncommercial use, and it is evident that the Respondent, who did not offer any evidence of being commonly known as the disputed domain names, has intentionally registered the disputed domain names to divert consumers to its website from the official websites of the Complainant’s.
C. Registered and Used in Bad Faith
As the Panel discussed under the first element, the Complainant has successfully demonstrated the worldwide reputation of the Trademark PLAVIX, therefore it is unlikely that the Respondent was not aware of the proprietary rights of the Complainant in the Trademark and subsequently its interest in the disputed domain names.
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
The Panel finds that the Respondent’s registration and use of the disputed domain names is in bad faith; the use of the disputed domain names by the Respondent to point to websites offering for sale drugs including PLAVIX without a license or a permit from the Complainant, diverts business from the Complainant’s official website, and does cause confusion on part of Internet users as to the source of the drug offered for sale on such websites, and the association with the Complainant. See: Sanofi-Aventis v. Gideon Kimbrell, WIPO Case No. D2010-1559, and F. Hoffmann-La Roche AG v. PrivacyProtect.org, WIPO Case No. D2007-1854.
Therefore, and in light of the above mentioned facts, the Panel finds that the Respondent has registered and is using the disputed domain names 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 names, <buyplavixcanada.com>, <plavixuk.net> and <buyplavixonline.org> be cancelled.
Dated: January 22, 2011