WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis v. Private Whois Service
Case No. D2011-0888
1. The Parties
The Complainant is Sanofi-Aventis of Gentilly Cedex, France, represented by Selarl Marchais De Candé, France.
The Respondent is Private Whois Service of Nassau, Bahamas.
2. The Domain Names and Registrar
The disputed domain names <buyplavixonlinepharmacy.com> and <comprarplavixonline.com> are registered with Internet.bs Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2011. On May 24, 2011, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain names. On May 27, 2011, Internet.bs Corp. 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 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 19, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 27, 2011.
The Center appointed Derek M. Minus as the sole panelist in this matter on July 4, 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, was formed in 2004 from the merger between the two French companies AVENTIS SA and SANOFI-SYNTHELABO. The combined company is the second largest pharmaceutical group in Europe, and the fourth largest in the world, with consolidated net sales of € 30.384 billion in 2010.
The company has a presence in more than 100 countries around the world and portfolio of high-growth drugs, with 55 projects in clinical development, 13 of which are at advanced stages. Sanofi-Aventis provides a wide range of patented prescription drugs to treat patients with serious diseases with leading positions in 7 major therapeutic areas, cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine and vaccines.
Sanofi-Aventis has developed and sold the PLAVIX drug throughout the world for the treatment of a number of “atherothrombotic conditions”. According to the Complainant, it is one of the world's 10 leading medicines, and over 100 million patients have been treated with PLAVIX which is now available in more than 115 countries. All relevant information related to this product is available from the official company website at: “www.plavix.com”. The <plavix.com> domain name was registered on March 26, 1998.
The complainant holds a number of trademark registrations for PLAVIX, in the international class 5 classification for pharmaceutical products, including:
1. PLAVIX French trademark n° 93 484 877 registered on July 28, 1993.
2. PLAVIX UK trademark n° 2068394 registered on December 19, 1997.
3. PLAVIX Hong Kong trademark n° 200009525 registered on July 30, 1998.
4. PLAVIX US trademark n° 2 042 583 registered on March 11, 1987.
5. PLAVIX Canadian trademark n° TMA509097 registered on March 10, 1999.
6. PLAVIX Community trademark n° 002 236 578 registered on April 18, 2002.
7. PLAVIX Japan trademark n° 4170873 registered on July 24, 1998.
5. Parties’ Contentions
The Complainant asserts that:
The Respondent registered the disputed domain names on July 28, 2010 without the Complainant’s authorization, and the disputed domain names currently direct users to web pages published by the Respondent.
(a) The disputed domain names <buyplavixonlinepharmacy.com> and <comprarplavixonline.com> are confusingly similar to the names and trademarks in which the Complainant has extensive rights.
Each of the disputed domain names reproduce entirely the PLAVIX trademark, which itself has no particular meaning and is therefore highly distinctive.
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant has not granted the Respondent a license or other authorization to use its trademark in relation to the disputed domain names.
The disputed domain names are composed of the Complainant’s trademark PLAVIX and generic words. This does not change the overall impression that these disputed domain names are connected with the Complainant. The use of generic and descriptive terms in conjunction with the Complainant’s trademark does not mean that the disputed domain names are not confusingly similar as the generic terms do not provide any element of distinctiveness to the domain names.
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 website to the Respondent’s websites which promote the sale of a “generic” PLAVIX.
(c) The Respondent registered and is using the disputed domain names in bad faith:
The disputed domain names link to an online pharmacy, which offers for sale various medicines, in particular those that are competing with the Complainant’s PLAVIX product. This indicates that the Respondent has registered the disputed domain names in order to take advantage of the confusing similarity between the disputed domain names and the Complainant’s trademark in order to benefit from goodwill associated with the PLAVIX trademark and constitutes evidence of bad faith registration and use on behalf of the Respondent.
The Complainant also sent the Respondent two cease and desist letters by e-mail on March 25, 2011 requesting immediate transfer of the disputed domain names. However the Respondent did not reply. The Respondent’s lack of reply reinforces the inference of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving, on the balance of probabilities, each of the following three elements:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant holds rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith by the Respondent.
As the Respondent did not file a Response or otherwise reply to the Complainant’s contentions, the Panel shall decide the Complaint on the basis of the Complainant’s submissions and such inferences that can be reasonably drawn from the failure to submit a Response as the Panel considers applicable (Rules, paragraph 14(b)).
A. Identical or Confusingly Similar
Whether a domain name that incorporates a Complainant’s trademark together with a prefix or suffix is confusingly similar to the trademark has been considered in a number of UDRP decisions. It has been held that a domain name consisting of the Complainant’s trademark and ending with the “.com” gTLD is confusingly similar to the Complainant’s trademark (see Sanofi-Aventis v. The Counsel Group, LLC, WIPO Case No. D2005-0650).
The incorporation of a trademark in its entirety has been held to be sufficient to establish that a domain name is identical or confusingly similar to a Complainant’s registered trademark (see Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201). It was decided by the panel in Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525, that “when a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy”. The incorporation of a trademark in its entirety, followed by a common term can be sufficient to establish that a domain name is identical or confusingly similar to a trademark, see PepsiCo, Inc v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696.
The disputed domain names <buyplavixonlinepharmacy.com> and <comprarplavixonline.com> reproduce in its entirety the Complainant’s PLAVIX trademark, which as it has no meaning in the English language, the Panel finds it to be highly distinctive. The other words used in the domain names, “buy”, “online”, “pharmacy” and “comprar”, which is the Spanish equivalent to the English verb “to buy”, are merely generic and cannot contribute to distinguishing the disputed domain names from the Complainant’s registered trademark.
Previous panel decisions in relation to other similar maters are instructive. In Sanofi-Aventis v. Gideon Kimbrell, WIPO Case No. D2010-1559, the panel found that in relation to the incorporation of the word “buy” in the disputed domain name, that:
“the inclusion of a generic element together with a trademark cannot contribute to distinguishing the disputed domain name from a registered trademark where such domain name incorporates a distinctive trademark. The Panel finds that the addition of the merely generic and descriptive element “buy” in the disputed domain name does not avoid a finding of confusing similarity in this case.”
In Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582, the panel considered the use of Complainant’s trademark preceded or followed by generic words such as “buy,” “store,” or “online” or common words used in the medical market such as “pills,” “drug,” “generic” and “pharmacy” and held that:
“The use of the above noted generic terms in conjunction with the Complainant’s trademark ACOMPLIA does not remove the domain names in dispute from being confusingly similar, as the generic terms lack distinctiveness.”
Therefore, because the disputed domain names incorporate the Complainant’s distinctive trademark in its entirety and the accompanying words are merely descriptive and generic the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain names. Paragraph 4(c) of the Policy provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name, as follows:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 or service mark at issue.
The Complainant has prior rights in the trademark PLAVIX, which precede the Respondent’s registration of the disputed domain names. The Respondent is not a licensee or authorized agent of the Complainant or in any way authorized to use the Complainant’s trademark PLAVIX. As was stated in Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134 “mere registration [of a domain name] does not establish rights or legitimate interests in the disputed domain name”.
The Respondent has not provided the Complainant with any evidence demonstrating that the Respondent might be commonly known by the disputed domain names as an individual, business, or other organization.
The Complainant provided copies as part of the submission of its claim, of the web pages from the two websites located at “www.buyplavixonlinepharmacy.com” which were in English and from “www.comprarplavixonline.com” which were in Spanish. The layout, illustrations, menus and information provide on both sites were similar. The English text on the web page read as follows:
“Welcome to Our Online Pharmacies, we offer a wide selection of the most popular medicines online with FREE medical consultations, FAST shipping, LOW prices and Toll-free customer support. We sell branded drugs and their generic equivalents approved by the FDA through our licensed pharmacy. Now with Worldwide Free Shipping!!!”
The information supplied on the Respondent’s websites indicated that a sophisticated and full-featured retailing service offering, telephone, information and shipping services for prescribed pharmaceutical drugs was provided. The Complainant’s trademarked PLAVIX, was specifically identified, as well as generic equivalents, which were also discussed.
The Panel finds that the Respondent is using the disputed domain names to create a likelihood of confusion with the Complainant’s trademark PLAVIX and its existing domain name <plavix.com> as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites. It is advertising for sale on the websites, generic equivalents of the Complainant’s trademark PLAVIX product, for its own commercial gain. The use of the Complainant’s PLAVIX trademark to promote the sale of generic products precludes the assessment of it making a bona fide offering of goods or services or a legitimate noncommercial, or fair use, of the disputed domain names.
In Sanofi-Aventis v. Andrey Volkovich, WIPO Case No. D2010-1230 also concerning the use of the Complainant’s trademark PLAVIX in a domain name, the panel said that:
“According to the documents submitted by the Complainant the disputed domain names link to websites that are in the business of offering for sale various medicines, including those that are in direct competition with the Complainant’s products under the PLAVIX trademark. This, in the Panel’s view, cannot constitute a bona fide offering of goods and services in the circumstances of this case.”
The Panel therefore finds that the Complainant has made a prima facie case of the Respondent’s lack of rights to, or legitimate interests in the disputed domain names. Given that the Complainant has satisfactorily made out a prima facie case that the Respondent lacks rights or legitimate interests, the burden is on the Respondent to establish its right or legitimate interest in the disputed domain names (see PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174). The Respondent has not demonstrated or established any such right or legitimate interest.
The Respondent has not provided evidence of circumstances illustrated by paragraph 4(c) of the Policy, or any other circumstances evidencing any rights to or legitimate interests in the disputed domain names. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances, which “in particular but without limitation”, shall be evidence of the registration and use of a domain name in bad faith. These four circumstances, which are framed in the alternative are:
(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 list of four circumstances set out in paragraph 4(b) of the Policy, which are deemed to indicate bad faith, are expressly non-exclusive.
The Complainant contends that the Respondent has violated the bad faith provision of the Policy. The Complainant first argues that the Respondent has registered and used the disputed domain names to disrupt the Complainant’s business by attracting consumers interested in purchasing PLAVIX to websites used to sell other medicines, including those that are direct competitors to the Complainant’s PLAVIX product.
The websites to which the disputed domain names resolve offer an online pharmacy operation with extensive information and sophisticated sales assistance, including telephone support and worldwide shipping. They demonstrate 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 websites from the Complainant’s official website, thereby disrupting the Complainant’s business.
In Sanofi-aventis v. Vitaly Smolensky, WIPO Case No. D2007-0574 the panel found that the Respondent had registered the dispute domain name <generic-plavix.com> in order to take advantage of the confusing similarity with the complainant’s PLAVIX trademark. It said:
“the Respondent operates a website that offers to sell the Complainant’s product (and other prescription medicine and other products). This indicates that the Respondent has registered and is using the disputed domain name to take advantage of the confusing similarity between the disputed domain name and Complainant’s mark in order to profit from the goodwill associated with the mark in bad faith”
The Panel also finds that the Respondent has intentionally attempted to attract Internet users to its websites for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its websites. The Respondent has violated the bad faith provision of the Policy by using the disputed domain names in connection with the sale of medicines via its websites that are direct competitors to the Complainant’s PLAVIX trademarked product.
In Sanofi-Aventis v. Domain Admin/Andrey Volkovich, WIPO Case No. D2010-2009 also concerning the use of the Complainant’s trademark PLAVIX in a domain name, the panel said that:
“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.”
The Panel also notes that the Respondent, which it finds has no rights or legitimate interests in the disputed domain names, failed to reply or take any action in relation to the “cease and desist” letters sent by the Complainant in which it was explained that the registration and use of the disputed domain names constituted a breach of the Complainant’s prior rights in the PLAVIX trademark.
A further indication of bad faith registration and use on the part of the Respondent is the fact that the disputed domain names direct Internet users to an online pharmacy which sells pharmaceutical products without prescription or proof of recommendation by a physician. Internet users may purchase “generic” PLAVIX products under the mistaken impression that they are dealing with the Complainant and may order and receive goods of an inferior quality or which are not indicated for their health thereby tarnishing the reputation and goodwill of the Complainant.
The Panel therefore finds that the disputed domain names were registered and are being used in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
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 <buyplavixonlinepharmacy.com> and <comprarplavixonline.com> be cancelled as requested in the Complaint.
Derek M. Minus
Dated: July 18, 2011