WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Max Lucky
Case No. D2012-1122
1. The Parties
The Complainant is Sanofi of Antony, France, represented by Darkanian & Pfirsch A.A.R.P.I., France.
The Respondent is Max Lucky, of Manila, Philippines.
2. The Domain Name and Registrar
The disputed domain name <plavixonline.com> (“Domain Name”) is registered with Center of Internet Names in Ukraine doing business as UKRNAMES. (“Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2012. On June 1, 2012, the Center transmitted by email to Registrar a request for registrar verification in connection with the Domain Name. On June 6, 2012, Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On June 6, 2012, as the language of the registration agreement for the disputed domain name was Russian (as per information provided by the Registrar), the Center notified the Complainant that it must either (1) provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; (2) submit the Complaint translated into Russian; or (3) submit a request for English to be the language of the administrative proceedings.
On June 7, 2012, the Complainant responded to the Center’s notification that in accordance with option (3), the Complainant requested that the language of the administrative proceeding be English considering the following:
- The Respondent is a resident of the Republic of the Philippines in which official language is English (see Annex 1 of the Complaint: WhoIs of the Domain Name <plavixonline.com>); and
- The Domain Name leads to a website having content that is exclusively written in English (see Annex 8 of the Complaint), and therefore, the Respondent understands and speaks English.
The Respondent did not provide any comments in this regard.
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 June 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 4, 2012.
The Center appointed Olga Zalomiy as the sole panelist in this matter on July 13, 2012. 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
Based on the written evidence submitted by the Complainant, the Panel finds the following to be the facts of this case:
The Complainant is a French pharmaceutical company. The Complainant owns several trademark registrations in the mark PLAVIX around the world, such as No. 93484877 filed on July 28, 1993 and registered in France; No. TMA509097 filed on December 20, 1993 (registration date March 10, 1999) and registered in Canada; No. 2068394 filed on April 1, 1996 and registered in the United Kingdom; No. 311129 filed on May 25, 1995 and registered in South Korea; No. 2042583 filed on March 11, 1997 and registered in the United States; No. 83119 filed on January 14, 1994 and registered with the African Intellectual Property Organization; No. 002236578 filed on May 29, 2001 and registered with the Office for Harmonization in the Internal Market; and international trademark No. 613041 registered on December 27, 1993 that designated Benelux (Belgium, Netherlands, Luxemburg) among other countries. PLAVIX is a well-known trademark that has been used since 1993 in connection with a medicine that prevents strokes and heart attacks in patients at risk for these problems.
The Complainant is the registered owner of the following domain names devoted to PLAVIX pharmaceutical products <plavix.com>, <plavix.net>, <plavix.org>, <plavix.info>, and <plavix.us>. The domain names direct to the Complainant’s websites where customers can obtain information about Plavix medicine.
The Respondent is the registrant of the Domain Name <plavixonline.com>, registered on March 21, 2011. The Domain Name <plavixonline.com> had been used to direct users to a website in the English language that offered the Plavix medicine for sale. The “www.plavixonline.com” website contained a button “BUY NOW” that directed consumers to an online pharmacy – “www.pilloffers.com”, that offers for sale Plavix and other medicine. Currently the Domain Name does not resolve to any website.
5. Parties’ Contentions
The Complainant alleges that it is a French pharmaceutical company, which is the No. 1 pharmaceutical company in Europe and No. 4 in the world, with consolidated net sales of EUR 33,4 billion in 2011. The Complainant claims that its drug Plavix is one of the two leading drugs in the category of thrombosis medicines.
The Complainant claims that the Domain Name is identical or confusingly similar to its registered trademark PLAVIX. The Complainant alleges that it has filed trademark applications for PLAVIX in more than 100 countries. The Complainant provided copies of several trademark registration certificates for PLAVIX. The Complainant further alleges that it registered several domain names incorporating its PLAVIX trademark. According to the Complainant, the trademark and domain name registrations predate the Domain Name registration.
Further, the Complainant states that the Domain Name is similar to its registered trademark. The Complainant alleges that the Domain Name incorporates the PLAVIX trademark in its entirety, which has no particular meaning and is, therefore, distinctive. The Complainant also claims that the Domain Name includes a generic term “online,” which does not change the overall impression of the Domain Name. According to the Complainant, the likelihood of confusion between the Domain Name and the PLAVIX trademark is exacerbated by the trademark’s notoriety.
The Complainant claims that the Respondent has no rights or legitimate interests in the Domain Name, because his name, Max Lucky, has no resemblance with the word PLAVIX. The Complainant alleges that the Respondent has neither prior rights nor legitimate interests in PLAVIX. Further, the Complainant asserts it has given no license or authorization of any kind to the Respondent to use the PLAVIX trademark. In the Complainant’s view, the Respondent does not use the Domain Name in connection with bona fide offering of goods or services, because the Domain Name is used to redirect to an online pharmacy, which sells generic and counterfeit PLAVIX and products of the Complainant’s competitors. According to the Complainant, its logo and PLAVIX trademark are reproduced on the Respondent’s website many times, which leads Internet users to believe that this is an official website of the Complainant. In the Complainant’s view, the Respondent uses the Domain Name for commercial gain by misleadingly diverting consumers seeking the Complainant’s website or PLAVIX products. The Complainant claims that the Respondent does not meet the reseller standard.
The Complainant asserts that the Domain Name, which is similar to the Complainant’s trademark and domain names, was registered in bad faith to benefit from PLAVIX’s notoriety. The Complainant claims that the Domain Name was registered for the purpose of attracting Internet users to the Respondent’s website and making unfair benefit of the Complainant’s reputation by creating likelihood of confusion. The Complainant further alleges that the Domain Name is being used in bad faith. According to the Complainant, the Respondent is deliberately trying to gain undue benefit by using the Plavix and logo and trademark on its website, which suggests sponsorship, affiliation or endorsement of the Respondent’s website by the Complainant and confuses Internet users. The Complainant further alleges that the Respondent uses the Domain Name to take advantage of the confusing similarity with the PLAVIX mark and benefit from the Complainant’s goodwill. The Complainant claims that the Respondent uses the Domain Name to disrupt the Complainant’s business, which is another indication of bad faith use. Finally, the Complainant claims that the Respondent is a chronic cybersquatter, who trades on the value of third-parties’ trademarks.
The Complainant requests that the Domain Name be cancelled.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding.
The Panel finds English to be an appropriate language for this proceeding based on the Respondent’s apparent ability to understand the English language, the absence of any prejudice to the Respondent or any objection from the Respondent to use of English as the language of the proceeding.
Pursuant to paragraph 11 of the Rules, unless otherwise agreed to by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, which in this case is Russian. Because there is no agreement between the parties as to the use of a different language in this proceeding, the language of the proceeding would typically be Russian. However, the Complainant submitted its complaint in English and requested that English be the language of the proceeding. The Respondent did not object to, or comment on that request.
The Panel finds that the Complainant presented sufficient evidence to conclude that the Respondent would not be prejudiced if this proceeding is conducted in English. First, according to the Respondent’s registration information provided with Registrar, the Respondent is a national of the Philippines where English is one of the official languages. Second, the content of the Respondent’s website was entirely in English, which shows the Respondent’s good command of English language. Third, the Center notified the Respondent about the Complaint and communicated all other case-related matters to the Respondent in both Russian and English languages. The Center advised the Respondent about the Complainant’s request for use of English as the official language of the proceeding and invited the Respondent to challenge the Complainant’s request if the Respondent objects to use of English. Finally, the Complainant is not familiar with the Russian language. To force the Complainant to translate the Complaint and accompanying documents into Russian will result in significant delay and expense for the Complainant.
Taking into account the circumstances of this case and the objective of the UDRP to provide for a cost-effective mechanism, the Panel determines English as the language for the proceeding.
6.2. Analysis of the Complaint
According to Paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” In case of a respondent’s default, “the respondent’s default does not automatically result in a decision in favor of the complainant.”1 The complainant must establish “each of the three elements required by paragraph 4(a) of the UDRP.”2 Thus, to succeed on its claim, the Complainant must prove that: (1) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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.”3
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the trademark PLAVIX.
The Complainant submitted copies of trademark registration certificates No. 93484877 filed on July 28, 1993 and registered in France; No. TMA509097 filed on December 20, 1993 (registration date March 10, 1999 and registered in Canada; No. 2068394 filed on April 1, 1996 and registered in the United Kingdom; No. 311129 filed on May 25, 1995 and registered in South Korea; No. 2042583 filed on March 11, 1997 and registered in the United States; No. 83119 filed on January 14, 1994 and registered with the African Intellectual Property Organization; No. 002236578 filed on May 29, 2001 and registered with the Office for Harmonization in the Internal Market; and international trademark No. 613041 registered on December 27, 1993 that designated Benelux (Belgium, Netherlands, Luxemburg) among other countries. The evidence shows that the Complainant has registered the word “PLAVIX” as trademark in a number of countries around the world. The Panel, therefore, finds that the Complainant established that it has rights to the trademark PLAVIX.
Also, the Panel finds that the Complainant has proven that the Domain Name is confusingly similar to the PLAVIX trademark in which the Complainant has rights. The Domain Name consists of the words “plavix”, “online” and top-level domain suffix “.com.” The Domain Name incorporates the Complainant’s trademark in its entirety. “[W]hen a domain name incorporates a complainant’s mark in its entirety; it is confusingly similar to that mark despite the addition of other words.”4 It is a consensus view among UDRP panelists that the addition of merely generic or descriptive wording to a complainant’s trademark, such as “online,” where the mark constitutes the dominant part of the domain name, is insufficient to avoid a finding of confusing similarity.5 In fact, the combination of the “Plavix” trademark with the generic term “online” is likely to lead members of the public to believe that the Domain Name is the URL for a website with information about purchasing the Complainant’s medication sold under the PLAVIX trademark. It is also well established that the addition of the top-level domain suffix “.com” or its equivalent would usually be disregarded under the confusing similarity test, as it is a technical requirement of registration.6
The Panel, therefore, finds that the first element of paragraph 4(a) of the UDRP has been satisfied.
B. Rights or Legitimate Interests
To establish the second element required by paragraph 4(a) of the UDRP, the “Complainant must show that the Respondent has no rights or legitimate interests in the Domain Name.7 “Panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent.”8 Therefore, to satisfy this requirement, the Complainant may make out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.9 If such prima facie case is not rebutted by the Respondent, the Complainant will be deemed to have satisfied paragraph 4(a) (ii) of the Policy.
The Panel finds that the Complainant presented a prima facie showing that the Respondent lacks any rights or legitimate interests in the Domain Name. First, the Respondent did not use the Domain Name in connection with a bona fide offering of goods or services. Second, the Respondent used the Domain Name for commercial gain and to misleadingly divert Internet users to his website. Third, it appears that the Respondent has not been commonly known by the Domain Name.
The evidence submitted by the Complainant shows that the Respondent used the Domain Name in connection with the “www.plavixonline.com” website, which redirected Internet users to an online pharmacy offering for sale the generic and counterfeit Plavix medicine and other drugs. The submitted screenshots of the Respondent’s website reveal no disclaimers concerning the relationship between the parties. The Respondent, however, neither is a licensee of the Complainant, nor has he obtained any authorization to use the Complainant’s trademarks or sell the Complainant’s goods. Under these circumstances, the Respondent fails to qualify as a reseller making bona fide offering of goods of the Complainant, because the Respondent used the Domain Name that is identical to the Complainant’s mark without the authority of the Complainant, his website contains no disclaimers concerning his relationship with the Complainant, and his website redirects to an online pharmacy offering for sale Complainant’s goods along with goods of third parties.10
The Complainant submitted printouts from an Internet encyclopaedia and other documents showing the fame of the PLAVIX trademark and its wide use. Given the notoriety and distinctiveness of the PLAVIX trademark, the Panel finds the Respondent’s use of the PLAVIX trademark in the Domain Name is likely to be an attempt to create and benefit from consumer confusion regarding the association between the Complainant’s business and the Respondent’s sale activities. Thus, it is likely that the Respondent has not been commonly known by the Domain Name, but chose it to capitalize on the fame of the Complainant’s mark.
The Panel finds it unlikely that the Respondent is commonly known by the Domain Name. The Respondent’s name - Max Lucky - has nothing in common with the Domain Name. The Complainant alleges, and the Panel agrees, that “Plavix” is not a word and has no meaning in any language other than being the Complainant’s registered trademark used in connection with the Complainant’s medicine. Moreover, the submitted screenshot of the website to which the Domain Name directs, shows that the website contains no information about its owner. Without such information, one cannot be “commonly known” by the Domain Name. Finally, as discussed more fully below, it is highly likely that the name and contact information of the Respondent provided to the Registrar are false, and it is not possible to operate a business providing a bona fide offering of goods or services under a false name.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the UDRP requires “a positive finding that both the registration and use were in bad faith.”11
The Panel finds the circumstances of this case demonstrate the existence of Respondent's overwhelming bad faith pursuant to paragraph 4(b)(iv) of the Policy. Paragraph 4(b) of the UDRP provides an open list of the circumstances that “shall be evidence of the registration and use of a domain name in bad faith.” Among others, these include circumstances indicating that “by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website 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 [respondent's] website or location or of a product or service on your website or location.”12
The Panel finds it is highly likely that the Respondent knew about the Complainant’s PLAVIX trademark at the time of the registration of the Domain Name and registered the Domain Name in bad faith. “Plavix” is a coined term and is not an actual word. The Complainant presented sufficient evidence that the PLAVIX trademark has become a well-known trademark. The Complainant submitted printouts from Internet-based encyclopedias and reports showing that the PLAVIX medicine is ranked first in Europe and ranked fourth in the world. Based on the value associated with the mark, the long history of the mark and its wide recognition, the Panel finds the PLAVIX mark to be a well-known mark. It is therefore practically inconceivable that the Respondent was not aware of the Complainant’s mark prior to the registration of the Domain Name. The Respondent’s use of the Plavix trademark and PLAVIX logo on its website, which suggest sponsorship, affiliation or endorsement of the Respondent’s website by the Complainant to Internet users, eliminates any doubt concerning the bad faith of the Respondent.
The fact that Complainant's PLAVIX trademark predates Respondent's registration of <plavixonline.com> is noteworthy. Given Complainant's established rights in the PLAVIX trademark and that Respondent's Domain Name is “so obviously connected with” the Complainant’s well-known trademark, Respondent's actions suggest “opportunistic bad faith” in violation of the Policy.13
Despite its current passive holding of the Domain Name, the Respondent is using the Domain Name in bad faith. It is a consensus view among the UDRP panelists that bad faith use of a domain name can be found even if the domain name is not actively used.14 The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. All of these examples are present in this case. Furthermore, as discussed more fully below, the Respondent already used the Domain Name in bad faith and nothing prevents him from resuming such bad faith use.
The Panel finds that the Respondent used the Domain Name in bad faith because the Respondent has been engaged in a pattern of registering domain names resembling well-known trademarks. It is a consensus view among the UDRP panelists that “pattern of conduct can involve multiple UDRP cases with similar fact situations or a single case where the respondent has registered multiple domain names which are similar to trademarks.”15 The WIPO Panel decisions database shows that Respondent has engaged in a pattern of registering domain names that bear striking resemblance to famous marks, a pattern of conduct expressly forbidden by paragraph 4(b)(ii) of the Policy. More specifically, the Respondent previously registered the domain names <accutanepills.com>16; <buyvaliumdiazepam.com>; <buy-valium-online.org>;
<cheap-valium.net>; <generic-valium.org>; <valiumonlineuk.com>; <valiumuk.org>; <valiumvsclonazepam.com>; <valiumwithoutrx.com>; <valiumxanax.com> that incorporated names of Accutane and Valium drugs. The circumstances of the previous UDRP cases involving the above-listed domain names are similar to the circumstances of the present case. Furthermore, the Respondent also registered the domain names <clomid100mg.com>17; <buy-soma-online-no-prescription.com>18; and <duromineonline.net>19, each of which resemble names of well-known pharmaceutical products. This pattern of conduct clearly demonstrates bad faith on the part of Respondent.
The Panel further concludes that the Respondent Max Lucky is more likely than not to be related to, if not the same person using the names or aliases - Maxim Conovalov, Paul Garcia, Robert Mark, Lewis Daniel, Mike Gonzalez, Michael Johnson and David Turner - each of which registered domain names incorporating well-known drugs that direct to websites offering the drugs for sale. For example, <duromineonline.net>, the domain name registered by purported Max Lucky, directs to a website that contains a disclosure stating that “Maxim Conovalov is the owner of the domain name and that he is in business as an affiliate marketer, who earns his commission by recommending products on the website for commission.” In addition, a purported resident of Chicago, Paul Garcia, registered the domain name <durominenoprescription.com> that directs to a website offering Duromine for sale. Similar to the notice on “www.duromineonline.net,” “www.durominenoprescription.com” features an identical disclosure by Maxim Conovalov.20 Further, an individual purportedly named Robert Mark, who resides at the same address as the Respondent in this case, registered domain names <ciplasilagra.com>21, <drospirenoneonline.com> 22, pravastatinonline.com23, <genericrimonabant.com>,24 <topdrugs.us>, <nuvigilvsprovigil.com> and <adipexonline.org>.25 Each of those domain names directs to websites offering well-known medications for sale.26 Also, an individual purportedly named Lewis Daniel, a resident of Manila, Felix Huertas New York, New York United States of America (the “USA) (the address identical to the Respondent’s address with the exception that it is allegedly located in the USA), registered the domain name <amoxilbuy.com>.27 As in the case with the other domain names, <amoxilbuy.com> directs to a website that offers for sale medication that is used as a part of the domain name.28 In addition, an individual purportedly named Mike Gonzalez, who resides in New York, uses the Respondent’s address and email for his administrative contact. Purported Mr. Gonzalez registered <hqphentermine.com> that directs to a website offering phentermine for sale. A purported resident of Chicago, Illinois, Michael Johnson, whose contact email is identical to the Registrant’s, i.e. <email@example.com>, registered yet another domain name incorporating the name of a well-known drug, <buylexapro.org>29. Finally, a purported resident of New York, David Turner, who resides at the same address as the Respondent, registered the domain name <buyzanaflex.net>.30
Except for “www.topdrugs.us”, all of the websites named above have a layout identical to the “www.plavixonline.com”, a layout featuring a description of a medication, whose name is reflected in its domain name, and a button “order now” or “buy now.” When customers select the “order now” button, they are directed to an online pharmacy under the domain name <online-pharmacy.md>31,
<official-pharmacy.com>32 or <phen375.com> that sells various well-known brand or generic medications. The Panel finds that here, bad faith may be inferred from the Respondent’s “history and pattern of bad faith registration of domain names incorporating the trademarks of third party complainants, as determined by various UDRP panelists in numerous domain name proceedings.”33
The Panel finds that it is likely that Internet users will be confused into believing that the Respondent is affiliated with, or endorsed by, the Complainant, because the Domain Name incorporates the Complainant’s well-known mark in its entirety and the Respondent’s website offers the brand and generic PLAVIX medicine for sale. It is plausible that Internet users may be diverted to the Respondent’s website instead of reaching the Complainant’s legitimate website. And, it is obvious that the Respondent intends to benefit from this confusion by offering Plavix for sale. The fact that the Respondent created a chain of interlinked websites offering PLAVIX and other drugs for sale confirms that conclusion. As a result, the Domain Name is being used in bad faith.
Because the Panel finds that the Complainant has proved that the Respondent registered and used the Domain Name in bad faith, the Respondent has satisfied the third element 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 name <plavixonline.com> be cancelled.
Date: July 25, 2012
1 See, Paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
3 See, Paragraph 4(a) of the UDRP.
7 Paragraph 4(a)(ii) of the Policy.
12 Paragraph 4(b)(ii) and (iv) of the UDRP.
13 Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co. , WIPO Case No. D2000-0163. See also, General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation, WIPO Case No. D2000-1568.
26 See, ciplasilagra.com; drospirenoneonline.com; pravastatinonline.com
31 http://online-pharmacy.md/buy/yasmin/; http://online-pharmacy.md/buy/silagra/; http://online-pharmacy.md/buy/amoxil/; http://buylexapro.org/
33 The American Automobile Association, Inc., v. aaaaautoinsurance.com Privacy--Protect.org, aaa-netaccess.com Privacy--Protect.org, aaanetacceess.com Privacy--Protect.org, Isaac Goldstein, WIPO Case No. D2011-2069.