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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi v. Aleksei Shutov

Case No. D2016-0311

1. The Parties

The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.

The Respondent is Aleksei Shutov of Ufa, Bashkortostan, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <plavixgeneric-dosage.com> (the "Domain Name") is registered with Hosting Concepts B.V. d/b/a Openprovider (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 16, 2016. On February 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 24, 2016, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 17, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 21, 2016.

The Center appointed Ellen B Shankman as the sole panelist in this matter on March 30, 2016. 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 date of the Domain Name registration was confirmed by the Registrar to be September 30, 2015. The Complainant provided evidence of multiple trademark registrations for the mark PLAVIX including, inter alia, International Trademark No. 613041 (registered on December 27, 1993) and French Trademark No. 93484877 (registered on July 28, 1993), that well predate the date of the Domain Name registration for pharmaceutical products.

The Panel also conducted an independent search to determine that the Domain Name currently resolves to a page advertising a variety of pharmaceuticals – many well-known and with some obvious misspellings. Further, the icon on the 'tab' of the website shows a red maple leaf and the words "Plavix Generic Dosage – Prevent Unwanted Bloodclots" and the website currently appears to be active.

Since the Respondent did not respond, the facts regarding the use and fame of the Complainant's mark, as well as other statements regarding correspondence between the parties, are taken from the Complaint and are generally accepted as true in the circumstances of this case.

5. Parties' Contentions

A. Complainant

The Complainant alleges it is the 4th largest multinational pharmaceutical enterprise in the world with global operations in more than 100 countries on five continents, employing 110,000 people. The Complainant further alleges that it discovers, develops, manufactures, and markets leading prescriptions medicines with sales of EUR 33.77 billion in 2014 and EUR 32.95 billion in 2013.

The Complainant also alleges that in addition to a wide range of high-growth drugs, with several pharmaceutical blockbusters, among which PLAVIX is one of the two leading drugs in the category of thrombosis medicines. PLAVIX is an anti-platelet agent that is one of the world's 10 leading medicines, and to date, over 100 million patients throughout the world have been treated with PLAVIX, which has been commercialized since 1998. The Complainant has registered PLAVIX as a trademark throughout the world.

The Complainant supplied captured screenshots and photos of the website of the Respondent offering Complainant's products for sale, together with other known pharmaceuticals.

In addition, the Complainant also alleges it owns a number of domain names which contain the term "PLAVIX" including <plavix.com>, which it has used since at least as early as 1998 to host a website to communicate with the public about the product.

The Complainant alleges that it sent the Respondent an email on December 8, 2015 requesting the voluntary transfer of the Domain Name to the Complainant. The Complainant alleges that the Respondent did not respond.

The Complaint also identifies at least one other situation in which a UDRP panel has held against the Respondent, to show a pattern of cybersquatting behavior.

To summarize the Complaint, the Complainant is the owner of numerous registrations for the trademark PLAVIX, in respect of pharmaceuticals. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the descriptive and/or generic terms "generic" and "dosage" do not prevent a finding of confusing similarity – and indeed enhances the concern. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant's trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in opportunistic bad faith. Thus, the Respondent's registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests cancellation of the Domain Name.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for PLAVIX.

The Domain Name string contains the Complainant's trademark PLAVIX in its entirety.

The Panel finds that the Domain Name is confusingly similar to the Complainant's trademark. Further, the Panel finds that the addition of the descriptive terms "generic" and "dosage" in the Domain Name does not change the overall impression of the designations being connected to the trademark of the Complainant – if anything it enhances it. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant's trademark.

See F. Hoffmann-La Roche AG v. Private Registration, WhoisGuardService.com, WIPO Case No. D2013-1118:

"The disputed domain name consists of the Complainant's mark XENICAL in its entirety with the addition of the descriptive words 'cheap', 'generic', 'sure' and the Top Level Domain suffix '.com'. The Panel is of the view that the most prominent and distinctive part of the disputed domain name is the term 'xenical' which for all intents and purposes is identical to the Complainant's registered trademark XENICAL. Given that XENICAL is a coined word and thus highly distinctive, the addition of the descriptive words 'cheap', 'generic' and 'sure' do not provide sufficient distinction from the Complainant's mark. Furthermore, it is also an accepted principle that the addition of suffixes such as '.com' or '.net' being the generic Top-Level Domain is not a distinguishing factor".

"See also F. Hoffmann-La Roche AG v. DNS Administrator/Turvill Consultants Ltd-RD, WIPO Case No. D2006-0047 "The Panel agrees with the Complainant's contention that the addition of the suffixes 'information', 'purchase' and 'dosage' are descriptive and add no distinctiveness or source of origin elements whatsoever to the domain names at issue, which essentially incorporate the Complainant's well-known trademark." See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating: "The incorporation of a Complainant's well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant's trademark."

Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant's registered trademark PLAVIX, under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that Respondent is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.

Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.

Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Given the distinctiveness of the Complainant's trademark and reputation, and given the content of the website to which the Domain Name resolves, the Panel agrees with the Complainant's claims that the Respondent has registered the Domain Name with full knowledge of the Complainant's trademark PLAVIX and uses it for the purpose of misleading and diverting Internet traffic.

The Domain Names fully incorporates the Complainant's trademark PLAVIX with the addition of the descriptive terms "generic" and "dosage" which the Panel finds further indicates bad faith by the Respondent.

The Panel finds compelling factual and circumstantial evidence in the record that the Respondent knew of the Complainant's mark when it registered the Domain Name.

It has been held in previous UDRP cases that knowledge of a corresponding mark at the time of the domain name's registration suggests bad faith (LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; Caixa D'Estalvis I Pensions de Barcelona ("La Caixa") v. Eric Adam, WIPO Case No. D2006-0464) and see, e.g., Bartercard Ltd & Bartercard International Pty Ltd. v. Ashton-Hall Computer Services, WIPO Case No. D2000-0177.

In addition, the Panel finds compelling that the use of Complainants mark as well as those of others, together with the evidence of serial cybersquatting by the Respondent, to be clear evidence that Respondent is a bad actor, and agrees with Complainant's argument that there is evidence of opportunistic bad faith registration and use of the Domain Name consistent with parapraph 4(b)(iv) of the Policy.

Given the distinctiveness of the Complainant's trademark and reputation, the Panel agrees with the Complainant's claims that the Respondent has registered the Domain Name with full knowledge of the Complainant's PLAVIX trademark and that the continued use of the Domain Name is in bad faith. This is consistent with the holding in Sanofi. V. Alexander M Kowalsky, WIPO Case No. D2012-1123, and in F. Hoffmann-La Roche AG v. Aleksei Shutov, WIPO Case No. D2015-2067.

Given the evidence of the Complainant's prior rights in the mark, the timing of the registration of the Domain Name, together with evidence of use of the mark in the Domain Name for commercial purposes by the Respondent, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) of the Policy.

7. Decision

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, <plavixgeneric-dosage.com> be cancelled.

Ellen B Shankman
Sole Panelist
Date: April 6, 2016

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