WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-aventis v. Elin V Aleksey
Case No. D2011-0742
1. The Parties
The Complainant is Sanofi-aventis of Paris, France, represented by Selarl Marchais De Candé, France.
The Respondent is Elin V Aleksey of Blagoveshensk, Russian Federation.
2. The Domain Names and Registrar
The disputed domain names <canadianplavix.net> and <noprescriptionplavix.net> (the “Domain Names”) are registered with Dynadot, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2011. On April 29, 2011, the Center transmitted by email to Dynadot, LLC. a request for registrar verification in connection with the Domain Names. On April 30, 2011, Dynadot, LLC. 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 May 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 16, 2011.
The Center appointed Michelle Brownlee as the sole panelist in this matter on June 24, 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 owns French Trademark Registration Number 93 484 877, United Kingdom Trademark Registration Number 2068394, Hong Kong, SaR of China Trademark Registration Number 200009525, United States Registration Number 2042583, Canadian Trademark Registration Number TMA509097, Community Trade Mark Registration Number 2236578, and Japanese Trademark Registration Number 4170873 for the trademark PLAVIX in connection with pharmaceutical products in International Class 5.
The Domain Names were registered on September 6, 2010, and were acquired by the Respondent on November 6, 2010.
5. Parties’ Contentions
The Complainant was formed in 2004 as a merger of Aventis SA and Sanofi-Synthelabo. This merger resulted in the second largest pharmaceutical company in Europe and the fourth largest pharmaceutical company in the world, with consolidated net sales of more than EUR 30 billion in 2010.
The Complainant produces Plavix, a prescription anti-platelet medication that helps protect against heart attacks or strokes. Plavix is one of the world’s 10 leading medicines. Over 100 million patients worldwide have been treated with the drug. Plavix has been commercialized since 1998, first in the United States, then in Germany and the United Kingdom. Plavix is now available in more than 115 countries worldwide.
The Complainant contends that the Domain Names are confusingly similar to the PLAVIX trademark in which the Complainant has rights, that the Respondent has no rights to or legitimate interests in respect of the Domain Names, and that the Respondent has registered and is using the Domain Names in bad faith. The Respondent is using the Domain Names in connection with a web site that sells generic or counterfeit versions of the Complainant’s Plavix product without a prescription, as well as other competing brands of pharmaceutical products. The site uses the PLAVIX trademark numerous times, which may lead Internet users to believe that the site is an official web site of the Complainant when it is not.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Complainant bears the burden of establishing each of the three elements by a preponderance of the evidence. See, e.g., F. Hoffmann-La Roche AG v. Relish Enterprises, WIPO Case No. D2007-1629.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns rights in the PLAVIX trademark. There are many UDRP decisions that find that the pairing of a distinctive trademark with less distinctive terms is confusingly similar to the distinctive trademark. See, e.g., MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions, WIPO Case No. D2007-1140; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 (finding <christiandiorcosmetics.com> and <christiandiorfashions.com> confusingly similar to CHRISTIAN DIOR); Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032 (finding <leasinglexus.com> and <lexuselite.com> confusingly similar to LEXUS). In this case, pairing the Complainant’s PLAVIX trademark with the words “canadian” or “no prescription” does not tend to reduce confusion.1 Accordingly, the Panel finds that the Domain Names are confusingly similar to the Complainant’s PLAVIX trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; 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 trademark at issue.
In this case, the Respondent has not presented evidence that the Respondent used or made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services, that the Respondent is commonly known by the Domain Names or that the Respondent is making a legitimate noncommercial or fair use of the Domain Names, or in any other way refuted the Complainant’s prima facie case. The Complainant has presented evidence that the Respondent is not affiliated with or authorized by the Complainant, and is using the Domain Names in connection with a web site that is used to sell generic or counterfeit versions of the Complainant’s PLAVIX medication and other brands of pharmaceutical products without a prescription. Considering the evidence that has been presented, the Panel finds that the Respondent is not using the Domain Names in connection with a bona fide offering of goods or services. Accord Sanofi-Aventis v. Andrey Volkovich, WIPO Case No. D2010-1230; Sanofi-aventis v. PrivacyProtect.org / Pavlishin Mihail, WIPO Case No. D2010-1265. Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name at issue 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Complainant has established bad faith under paragraph 4(b)(iv) of the Policy. The Panel finds that the Respondent is intentionally using the Domain Names to attempt to attract Internet users to its web site for commercial gain by creating a likelihood of confusion with the Complainant’s PLAVIX mark.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <canadianplavix.net> and <noprescriptionplavix.net> be cancelled as requested in the Complaint.
Dated: June 28, 2011
1 In the case of the <canadianplavix.net> domain name, confusion may be exacerbated by the addition of a geographic indicator, since it is a common practice for multinational companies to have country-specific web sites that may include geographic indicators. See Sanofi-Aventis v. Andrey Volkovich, WIPO Case No. D2010-1230.