World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi-aventis and Aventisub II Inc. v. Pavlishin Mihail / PrivacyProtect.org, Domain Admin

Case No. D2011-0274

1. The Parties

The Complainant is Sanofi-aventis of Paris, France and Aventisub II Inc. of Delaware, United States of America represented by Selarl Marchais de Candé, France.

The Respondent is Pavlishin Mihail of Lviv, Ukraine, / PrivacyProyect.org, Domain Admin of Munsbach, Luxembourg.

2. The Domain Names and Registrar

The disputed domain names <buy--allegra.com>, <generic--allegra.com>, <plavix-generic.com> and <plavix-medication.com> are registered with UK2 Group Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2011. On February 10, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 10, 2011 the Registrar, 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 February 14, 2011 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 February 17, 2011.

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 February 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 11, 2011.

The Center appointed Maninder Singh as the sole panelist in this matter on March 25, 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

It is noticed from the complaint that the Complainant’s Company has been formed in 2004 after merger of two French companies, i.e. Aventis SA and Sanofi-Synthelabo. The Complainant’s Company is stated to be present in more than 100 countries around 5 continents of the world, offering wide range of high-growth drugs – Lovenox, Plavix, Taxotere, Eloxatin, Ambien, Lantus and Pentacel. The Complainant claims to have developed and sold its drugs throughout the world under the Trademark PLAVIX – a drug prescribed to patients for reduction of recurrence after ischemic cerebrovascular disorder. PLAVIX is stated to have been first commercialized in United States of America since 1998 and thereafter in Germany and United Kingdom of Great Britain and Northern Ireland.

The Complainant also claims that in the field of respiratory and allergy diseases, Aventis Inc., an affiliate of Complainant “Sanofi-aventis”, it has developed and sells utility drugs under various trademarks including ALLEGRA which is stated to have been launched before the merger of Aventis SA and Sanofi-Synthelabo in 2004. The Complainant is stated to have registered 4 domain names <plavix.net>; <plavix.com>, <plavix.org> and <allegra.com> on various dates in the year 1998 and 1999.

The Respondent is stated to have wrongly registered and uses the 4 disputed domain names which the Complainant claims to be confusingly similar to its trademarks and other domain names.

5. Parties’ Contentions

A. Complainant

Contentions with regard to disputed domain names being identical or confusingly similar to Complainant’s trademark or service mark:

It is the contention of the Complainant in the Complaint that the Sanofi-aventis was formed in 2004 after the merger of 2 French companies Aventis SA and Sanofi-Synthelabo. The Complainant claims that the company offers a wide range of high growth drugs – Lovenox, Plavix, Taxotere, Eloxatin, Ambien, Lantus and Pentacel under the Trademark PLAVIX – name of the drug prescribed for reduction of recurrence after ischemic cerebrovascular disorder. PLAVIX is stated to have been put in commercial use since 1998 - first in United States of America and thereafter in Germany and United Kingdom of Great Britain and Northern Ireland.- is available in more than 115 countries.

The Complainant’s affiliate – Aventis Inc. is stated to be selling utility drugs for treating for respiratory and allergy diseases under various trademarks including ALLEGRA.

The Complainant claims that Trademark ALLEGRA was launched before the merger of Sanofi-aventis and is marketed is more than 55 countries including United States of America and Canada.

The Complainant claims to have the following trademark registrations in various countries of the world in its favour under the name PLAVIX and ALLEGRA:

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

(ii) PLAVIX United Kingdom Trademark No. 2068394 registered on December 19, 1997 for cardiovascular products included in class-5;

(iii) PLAVIX Hong Kong, SAR of China Trademark No. 200009525 registered on July 30, 1998 in class-5 for pharmaceutical preparations;

(iv) PLAVIX United States Trademark No. 2042583 registered on March 11, 1997 in class-5 for pharmaceutical preparations for the treatment of cardiovascular diseases and is duly renewed;

(v) PLAVIX Canadian Trademark No.TMA509097 registered on March 10, 1999 in class-5;

(vi) PLAVIX Community Trademark No. 002236578 registered on April 18,.2002 in class-5;

(vii) PLAVIX Japan Trademark No. 410873, registered on July 24, 1998 in class-5 and was duly renewed;

(viii) ALLEGRA Canadian Trademark No.TMA 492711, registered on April 9, 1998 for Pharmaceutical preparations, namely antihistamines;

(ix) ALLEGRA United States Trademark No. 2067728, filed on June 3, 1997 in class-5 for Pharmaceutical preparations, namely antihistamines and duly renewed.

The Complainant has claimed to have registered the following domain names devoted to its Plavix and Allegra pharmaceutical products:

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

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

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

(iv) <allegra.com> registered on June 4,1998.

The Complainant contends that the Respondent has wrongly registered and uses the disputed domain names which correspond to the prior Trademarks and domain names of the Complainant.

The Complainant contends that Trademarks PLAVIX and ALLEGRA have no particular meaning in itself and are highly distinctive. The Complainant claims that reproduction of its Trademarks in their entirety in the disputed domain names is confusingly similar to the previously cited Trademarks regardless of the additional elements in it. The Complainant has also contended that the only distinctive part in the disputed domain names is the reproduction of Complainant’s Trademark PLAVIX / ALLEGRA. It further contended that the additional terms “generic”, “medication” or “buy” are purely descriptive and as such are insufficient to avoid confusingly similarity. It further contends that the addition of generic terms does not serve to distinguish the domain names from the Trademarks. The Complainant alleges that on the contrary, it may reinforce the association of the Complainant’s Trademarks with the domain names. The Complainant argues that the presence of hyphens between the Trademarks and the generic terms in the disputed domain names does not affect the essence of the matter. With a view to substantiate its contentions, the Complainant has relied upon the following UDRP decisions:

(i) Oki Data Americans Inc. v. ASD Inc., WIPO Case No. D2001-0903, that when a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words.

(ii) Sanofi-aventis v. Ju Dehua, WIPO Case No. D2005-1043, relating to the domain name <best-buy-ambien.com> and <new-ambien.com> holding that “Adding generic words to a domain name such as “new”, “best” and “buy” is not sufficient to escape the finding of a similarity and does not change the overall impression of the designation as being connected to the trademark of the Complainant. In this case the words “new”, “best” and “buy” do not serve any distinguishing function but rather describe the nature of the service offered on the relevant website”.

(iii) Sanofi-aventis v. Standard Tactics LLC, WIPO Case No. D2007-1909, holding that “the addition of the words “get” and “generic” to “ambient” so as to form the second level of the Domain Name, does not prevent the Domain Name from being “confusingly similar” (as that term is understood for the purposes of the Policy), to the Complainant’s registered trade marks”.

(iv) Sanofi-Aventis v. Pluto Domain Services Private Limited, WIPO Case No. D2008-1483, relating to the domain name “buyambien.com” – holding that “The use of an associated word such as “buy” suggests that the disputed domain name may be an authorized site from which to purchase the product from Complainant or a licensee, thereby contributing to confusion”.

(v) Sanofi-aventis, Sanofi-Aventis Deutschland GmbH v. Andrey Mitrofanov, WIPO Case No. D2007-1772, holding that “the addition of the descriptive term “medication” and the use of the inserted hyphen does not negate the confusion created by Respondent’s complete inclusion of the AMARYL trademark in the disputed domain name”.

Contentions regarding Respondent having no rights or legitimate interests in the disputed domain names:

The Complainant has not granted the Respondent any licence or other authorization to use its trademarks in relation to the disputed domain names.

The use of the disputed domain names by the Respondent is not bona fide offering of goods or services with a view to confer a right or legitimate interest in the disputed domain names. The Respondent is not a genuine re-seller of the Complainant’s products.

The Respondent is not using the disputed domain names and the related website to sell the sole Complainant’s trademarked goods.

When an Internet user enters any of the websites “www.plavix-generic.com”, “www.plavix-medication.com”, “www.buy--allegra.com” and “www.generic--allegra.com”, it is automatically conducted to the home page of the disputed domain name sites where Plavix and Allegra products or generic and/or competitors’ products are proposed for sale. The Complainant, in order to substantiate its argument contended that the Respondent is not making legitimate noncommercial or fair use of the domain names, has relied upon the decision Lilly ICOS LLC v. Sachin Tailor, WIPO Case No. D2005-0580, has alleged that the Respondent is using the disputed domain names for commercial gains by misleadingly diverting consumers seeking the Complainant’s website for Plavix / Allegra products to its website.

Contentions regarding bad faith registration of the disputed domain names:

The Complainant contends that the disputed domain names were initially registered with the Complainant’s products in mind as they incorporate the word “Plavix” or “Allegra” which are referable / relatable to the Complainant’s products. Further, the website under the disputed domain names corresponds to an online pharmacy where equivalent and competing products to Plavix and Allegra are offered for sale. The Complainant in this regard has relied upon an article published in a French Newspaper “Les Echos” dated January 26, 2011 annexed as Annexure-21 to the present Complaint.

The Complainant contends that it is very likely that the Respondent was well aware of Complainant’s position in the pharmaceutical market and the PLAVIX and ALLEGRA Trademarks before registering the disputed domain names. The Complainant contends that the Respondent “knew or should have known” of the registration and use of the Trademarks before registering the domain names, which constitutes bad faith. The Complainant alleges that the registration of the disputed domain names by the Respondent has been in order to take advantage of the confusing similarity with the Complainant’s mark for taking advantage of the goodwill associated with the marks PLAVIX and ALLEGRA. In this regard, the Complainant has relied upon the following decisions:

(i) America online inc. v. Anson Chan, WIPO Case No. D2001-0004;

(ii) Sanofi-aventis v. Vitaly Smolensky, WIPO Case No. D2007-0574.

The Complainant contends that Plavix is a very powerful medicine - against clot formation to prevent future heart attacks or strokes, which must be ordered under prescription only and used under medical control. The disputed domain names / websites of the Respondent suggest that this product (medicine) can be obtained without prescription, is dangerous for public health and the reputation of the Complainant. Reliance has been placed by the Complainant to the decision of Sanofi-Aventis v. Andrey Volkovich, WIPO Case No. D2010-1230 relating to exactly the same litigious website, i.e. online pharmacy “European Meds World” wherein it has been held that: “The Panel also draws inferences of bad faith from the lack of any response from the Respondent to the Complainant. Further, inference of bad faith is drawn from the fact that two of the disputed domain names imply that Plavix products can be obtained without prescription. As the Plavix product is a very strong medicine that should be used under medical supervision, implying that it can be obtained without prescription is a serious public health risk. This implication may also tarnish the reputation and goodwill of the Complainant and is a further indication of bad faith registration and use on part of the Respondent.”

The Complainant further has contended in the Complainant that it had addressed to cease and desist communication to the Respondent on July 19, 2010 concerning the disputed domain names and requesting for immediate transfer of the disputed domain names. However, the Respondent did not send any reply. Failure on the part of Respondent to furnish any denial / explanation reinforces the inference of bad faith registration and bad faith use by Respondent. In this regard Complainant placed reliance on The Hongkong and Shanghai Banking Corporation Limited 鈥搗鈥?Bill Lynn, WIPO Case No. D2001-0915.

The Complainant has prayed for the transfer of the disputed domain name to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Panel’s jurisdiction has not been placed in dispute and the Panel finds that the dispute is within the scope of the Policy and the jurisdiction of this Panel to adjudicate upon the issues involved in the case.

The Respondent has chosen not to submit any response to the Complaint, however, that does not relieve the Complainant of the burden of proof. The Respondent’s failure to submit its reply to the Complainant’s contentions / allegations and the evidence submitted by the Complainant do, however, in terms of the Rules, permit the Panel to draw appropriate inferences.

A. Identical or Confusingly Similar

The Panel finds that the additions of the words “generic”, “medication” or “buy” in registering the disputed domain names by the Respondent – in the facts and circumstances of the present case and having regard to the uncontested contentions of the Complainant, would not make any difference. The Panel has also considered the following decisions referred to and relied upon by the Complainant in this regard:

(i) Oki Data Americans Inc v. ASD Inc., WIPO Case No. D2001-0903;,

(ii) Sanofi-aventis v. Ju Dehua, WIPO Case No. D2005-1043;

(iii) Sanofi-aventis v. Standard Tactics LLC, WIPO Case No. D2007-1909;

(iv) Sanofi-Aventis v. Pluto Domain Services Private Limited. WIPO Case No. D2008-1483;

(v) Sanofi-aventis, Sanofi-Aventis Deutschland GmbH v. Andrey Mitrofanov, WIPO Case No. D2007-1772.

The Panel finds that the disputed domain names are identical and confusingly similar to the Trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

It remains uncontested on the record that the Complainant has not granted the Respondent any licence or other authorization to use its Trademarks in relation to the disputed domain names. The use of the disputed domain names for commercial gains by the Respondent is neither bona fide nor legitimate. It has also remained uncontested that when an Internet user enters any of the websites “www.plavix-generic.com”, “www.plavix-medication.com”, “www.buy--allegra.com” and “www.generic--allegra.com”, it is automatically conducted to the home page of the disputed domain name sites where Plavix and Allegra products or generic and/or competitors’ products are proposed for sale. The Complainant, in order to substantiate its argument contended that the Respondent is not making legitimate non-commercial or fair use of the domain names, has relied upon the decision Lilly ICOS LLC v. Sachin Tailor, WIPO Case No. D2005-0580, has alleged that the Respondent is using the disputed domain names for commercial gains by misleadingly diverting consumers seeking the Complainant’s website for Plavix / Allegra products to its website.

Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

The Panel has no hesitation in accepting the contention of the Complainant and which otherwise also remains uncontested that the disputed domain names were initially registered with the Complainant’s products in mind as they incorporate the word Plavix or Allegra which are referable / relatable to the Complainant’s products. Further, the websites under the disputed domain names correspond to an online pharmacy where equivalent and competing products to Plavix and Allegra are offered for sale. The Complainant in this regard has relied upon an article published in a French Newspaper “Les Echos” dated January 26, 2011 annexed as Annexure-21 to the present Complaint.

It is very likely that the Respondent was well aware of the Complainant’s position in the pharmaceutical market and the PLAVIX and ALLEGRA trademarks before registering the disputed domain names. In support of its contentions of bad faith registration, the Complainant has relied upon the following decisions in

(i) America online inc. v. Anson Chan, WIPO Case No. D2001-0004;

(ii) Sanofi-aventis v. Vitaly Smolensky, WIPO Case No. D2007-0574.

The Panel also finds significant substance in the contention of the Complainant that Plavix is a very powerful medicine - against clot formation to prevent future heart attacks or strokes, which must be ordered under prescription only and used under medical control. The disputed domain names / websites of the Respondent suggest that this product (medicine) can be obtained without prescription, is dangerous for public health and the reputation of the Complainant. Reliance has been placed by the Complainant to the decision of Sanofi-Aventis v. Andrey Volkovich, WIPO Case No. D2010-1230, wherein it has been held that - “The Panel also draws inferences of bad faith from the lack of any response from the Respondent to the Complainant. Further, inference of bad faith is drawn from the fact that two of the disputed domain names imply that Plavix products can be obtained without prescription. As the Plavix product is a very strong medicine that should be used under medical supervision, implying that it can be obtained without prescription is a serious public health risk. This implication may also tarnish the reputation and goodwill of the Complainant and is a further indication of bad faith registration and use on part of the Respondent.”

In support of its contention that the Respondent had also not given any reply to the cease and desist communication dated July 19, 2010 concerning the disputed domain names and requesting for immediate transfer of the disputed domain names, has placed reliance on The Hong Kong and Shanghai Banking Corporation Ltd. v. Bill Lynn, WIPO Case No.D2001-0915. The Panel finds that the present case is an apparent case of bad faith registration and use in terms of paragraph 4(b) of the Policy.

7. Decision

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, <buy--allegra.com>, <generic--allegra.com>, <plavix-generic.com> and <plavix-medication.com>, be transferred to the Complainant.

Maninder Singh
Sole Panelist
Dated: April 6, 2011

 

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