WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
sanofi-aventis v. Protected Domain Services – Customer ID: NCR-982118 / 247drugmart
Case No. D2010-1278
1. The Parties
The Complainant is sanofi-aventis of Gentilly, France, represented by Armfelt (a.a.r.p.i) of Paris, France.
The Respondent is Protected Domain Services - Customer ID: NCR-982118 / 247drugmart; Protected Domain Services being of Denver, Colorado, United States of America with the underlying registrant, associated with the Customer ID: NCR-982118, being identified as 247drugmart of Ahmedabad, Gujarat, India.
2. The Domain Name and Registrar
The disputed domain name <plavixstore.com> is registered with Name.com LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2010. On July 30, 2010, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the disputed domain name. On August 3, and August 10, 2010, Name.com LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 17, 2010 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 August 18, 2010. 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 August 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 8, 2010. On diverse dates between August 10, and August 21, 2010, an individual, claiming to have registered the disputed domain name, sent several email communications to the Center. However no formal Response was filed by the due date for Response.
On August 3, 2010, the registrar filed an “informative filing” on behalf of the privacy service, Protected Domain Services.
The Center appointed Keith Gymer as the sole panelist in this matter on September 16, 2010. 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.
The Panel notes that, in addition to the true registrant’s details being initially concealed behind a nominee privacy service, the contact address details revealed by the privacy service after the filing of the Complaint were also evidently not accurate, as UPS reported that it was unable to deliver the hardcopy of the Complaint notification sent by the Center, which was ultimately recorded by UPS as “ABANDONED BY THE SENDER AND RECEIVER” on September 8, 2010.
4. Factual Background
The Complainant, sanofi-aventis, is a multi-national pharmaceutical company, based in France, and which was formed during the year 2004 as a result of merger between the two predecessor French companies, Aventis SA and Sanofi-Synthelabo. Completion of the transaction made sanofi-aventis one of the largest pharmaceutical groups in Europe, with consolidated net sales of EUR 29.3 billion in 2009, in the core business and a strong direct presence on all major markets, and EUR 4.6 billion Research and Development expenditure in 2009. Sanofi-aventis has a corporate website at “www.sanofi-aventis.com”.
Sanofi-aventis is a multinational company settled in more than 100 countries around 5 continents. The new group benefits from a large portfolio of high-growth drugs. It enjoys firmly established positions in 7 key fast-growth therapeutic fields: cardiovascular, thrombosis, metabolism, oncology, central nervous system, internal medicine and human vaccines.
Employing approximately 100,000 people worldwide, sanofi-aventis has a sales force of 33,507 people, as well as 18,976 research staff with 49 projects under development, 17 of which are at advanced stages.
Plavix is a product manufactured by the Complainant and is indicated for the prevention of ischemic events caused by atherothrombosis.
It is one of the world’s 10 leading medicines, and to date, many millions of patients throughout the world have been treated with Plavix.
Plavix is indicated for the prevention of atherothrombosis-related cardiovascular events in patients with a history of recent myocardial infraction, acute coronary syndrome, recent stroke or established peripheral arterial disease.
Plavix was commercialized since 1998, first in the United States. PLAVIX is now available in more than 80 countries, including Turkey, Greece, Belgium, Portugal, Hungary, France, South Korea, India, the People’s Republic of China, Australia, New Zealand, Mexico, Brazil and others.
Sanofi-aventis has numerous trademark registrations for the mark PLAVIX, including United States Trademark Registration No. 2042583 dating from 1997 and Canadian Trademark Registration No. TMA509097 dating from 1999, both covering pharmaceutical preparations for the treatment of cardiovascular diseases.
The original nominee registrant was Protected Domain Services – Customer ID: NCR-982118. The Registrar subsequently disclosed that the underlying registrant was identified by the company name designated in their records as “247drugmart”, a business with an address given in Ahmadabad, Gujarat, India.
According to the WhoIs record, the disputed domain name <plavixstore.com> was first registered on July 7, 2008.
5. Parties’ Contentions
This Complaint is based on the following grounds (comprising edited extracts taken from the Complaint):
The disputed domain name <plavixstore.com> is identical to the trademark PLAVIX in which the Complainant has rights
The Respondent’s registration consists of the use of the Complainant’s trademark with, in addition, (i) the descriptive word “store” and (ii) the gTLD “.com”.
A wide variety of panels have considered that the addition of generic or descriptive words to trademarks was not sufficient in many cases to escape a finding of confusing similarity and would not change the overall impression of the designations as being connected to the complainant. (See e.g. Sanofi-Aventis v. Direct Response Marketing aka DRM, WIPO Case No. D2005-0661; Sanofi-aventis v. Elizabeth Riegel and Andrew Riegel, WIPO Case No. D2005-1045).
In the present case, the mere addition of the descriptive word “store”, in conjunction with the Complainant’s trademark PLAVIX is insufficient to avoid confusing similarity and does not remove the confusing similarity to the Complainant’s trademark. The same conclusion has been reached concerning similar disputed domain names in earlier cases. (See e.g. J. Choo Limited v. Stephon Kony , WIPO Case No. D2010-0308 (<jimmychoostore.com>); F. Hoffmann-La Roche AG v. Direct Privacy ID 9CCC6, WIPO Case No. D2010-0139 (<tamiflu-online-store.com>); Sanofi-aventis v. Demand Domains, Inc., WIPO Case No. D2008-1484 (<ambien-drugstore.com>); Sanofi-aventis v. Whois Privacy Protection Service Inc., WIPO Case No. D2006-0914 (<ambien-rx-store.com>))
Therefore, and after analyzing these different UDRP cases, there is no doubt that the association in a domain name of the trademark PLAVIX and the descriptive word “store”, generates confusion. Indeed, persons accessing the domain name would be bound to think that the disputed domain name has a connection with the Complainant.
Furthermore, the addition of the gTLD “.com ” which is required for registration of a domain name, has no distinguishing capacity in the context of the domain name and does not alter the value of the trademark represented in the domain name.
In conclusion, the disputed domain name <plavixstore.com> generates confusion with the Complainant’s trademark PLAVIX.
The Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name <plavixstore.com>
The Complainant has prior rights in the PLAVIX trademark, which precede the Respondent’s registration of the disputed domain name.
Moreover, the Complainant’s trademark is present in 100 countries for PLAVIX, including the United States, and the Complainant’s trademarks are well-known throughout the world.
There is no license, consent or other right by which the Respondent would have been entitled to register or use the disputed domain name with the Complainant’s trademark PLAVIX.
There is no doubt that the Respondent is aware that PLAVIX corresponds to a medical product and therefore to a trademark in respect of the content of its website.
Therefore, the Respondent’s use does not satisfy the test for bona fide use established in prior UDRP decisions.
The notion of a bona fide offering of goods and services has notably been specified in the decision Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, where it was held that, to be bona fide pursuant to paragraph 4(c)(i), the offering must meet several minimum requirements, being that:
The respondent must actually be offering the goods or services at issue;
The respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site; and
The respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own trademark in a domain name.
There is no doubt that the Respondent does not use the disputed domain name in connection with the bona fide offering of goods or services.
The disputed domain name leads to a website where numerous links are provided to buy PLAVIX products or generic products or placebo products and other competitor products which are offered for sale.
Thus, the Respondent’s website is merely a portal for the website of a third party from which the Respondent is very likely to be paid a commission. In such case, the Respondent does not actually offer any “bona fide genuine goods or services”. In such circumstances many previous panel decisions have stated that the respondent does not have any rights or legitimate interests in respect of the complainant’s trademark. (See e.g., Lilly ICOS LLC v. Self, WIPO Case No. D2005-1099; Lilly ICOS LLC v. Cybernet Marketing/Antoine Tardif, WIPO Case No. D2006-1123).
Furthermore, it is also important to underline that even if the Respondent was directly selling the genuine PLAVIX product (which is contested by the Complainant) the Panel will note that one of the online pharmacy linked to the Respondent’s website is also selling other competitive products. Many previous panels have stated that it was not sufficient to give the respondent a right or a legitimate interest to use the complainant’s trademark in a domain name.
For example, in The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113 the Panel stated:
“Moreover, even if the [r]espondent is a retail seller of [c]omplainant’s products, the collateral trademark use necessary to allow resell of [c]omplainant’s products is not enough to give [r]espondent proprietary rights in [c]omplainant’s trademarks, and certainly not enough to confer the right to use these trademarks as domain names. Many famous trademarks designate goods that are manufactured and sold through numerous retail stores. But this, without something more such as authorization in a licensing agreement or other special circumstances, does not give the retail sellers rights of domain name magnitude over the manufacturer’s trademarks.”
(See also Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079; Amphenol Corporation v. Applied Interconnect, Inc., WIPO Case No. D2001-0296; and Sanofi-aventis v. Chris, WIPO Case No. D2007-0047).
Moreover, the Respondent’s website did nothing to disclaim any relationship with the trademark owner. It did nothing to dispel any possible suggestion that it might be the trademark owner, or that the website might be the, or an, official site of the Complainant. (c.f. Sanofi-aventis v. ClickStream Marketing LLC, WIPO Case No. D2005-0769)
Indeed, the Respondent would not have registered the disputed domain name, if he was not aware that Plavix is a revolutionary drug.
As a result, it is clear that the Respondent, who has no legitimate interest in respect of the disputed domain name <plavixstore.com>, has registered this domain name with the intention to divert consumers and to prevent the Complainant from reflecting the trademark in a corresponding domain name.
The Respondent has not made bona fide use of the disputed domain name because of its lack of authorization to use the PLAVIX trademark and sell the Plavix medicine. Furthermore, using the domain name in order to divert consumers cannot be characterized as a fair use. (c.f. Trip.com v. Daniel Deamone, WIPO Case No. D2001-1066).
The disputed domain name should be considered as having been registered and used in bad faith
The obvious bad faith of the Respondent results from the following elements:
the Respondent’s awareness that PLAVIX corresponds to the Complainant’s trademark;
the Respondent prevents the Complainant from reflecting the trademark in a corresponding domain name;
the Respondent uses the domain name to attract Internet users for commercial gain.
The Respondent has no prior right and no authorization given by the Complainant concerning the Plavix trademark.
As it has been demonstrated above, the Respondent has no prior right in respect of the sign PLAVIX, and no authorization to use this sign in any form was granted to the Respondent. Thus, the registration of the disputed domain name has not been made with bona fide intention.
It is clear that the Respondent has registered the disputed domain name with the knowledge that PLAVIX corresponded to the Complainant’s medical product.
In addition, due to the various communications on the Internet on that product, the Respondent could not ignore that Plavix is one of the world’s 10 leading medicines, which has treated millions of patients throughout the world.
In the present case, there is no doubt that the Respondent, knowing the reputation and goodwill of the Plavix product, has registered the disputed domain name in order to prevent the Complainant from reflecting the mark in corresponding domain name. It is an opportunistic act, which seeks to disrupt the Complainant’s business.
Furthermore, the Respondent proposes on the contentious website links to competitive products or links to portal and pharmacy online websites.
It is also important to state that the mere holding of a domain name that is identical or confusingly similar to a trademark belonging to a third party, in itself, can be considered as disrupting the business of the right owner.
The Respondent’s use of the disputed domain name is to attract Internet users for commercial gain.
Paragraph 4(b)(iv) of the Policy lists as one of the typical situations evidencing bad faith the fact that:
“using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site [...] by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on [its] website[...]”
There can be no doubt that the Respondent knew of the product, sold under the Complainant’s trademark PLAVIX, when he registered the disputed domain name. This can be deduced from the construction of the domain name, consisting of the trademark PLAVIX of the Complainant, from the date of the domain name registration (July 7, 2008) and from the content of the website.
In fact, the Respondent’s website provides links to third party websites providing information and offers to buy PLAVIX products or generic products or counterfeit products or placebo products related to the treatment of thrombosis.
By using its website under the disputed domain name <plavixstore.com>, to lead Internet users to a third party on-line pharmacy, the Respondent is intentionally attempting, for commercial purposes to attract Internet users to the Respondent’s website, and creates a likelihood of confusion with the Complainant’s trademark. One can readily assume that the Respondent does not insert for free such links, which are redirecting the Internet user to a website where competitors’ products are offered for sale. The Respondent provided these links with the clear intention of commercial gain.
Furthermore, any Internet user who will try to connect to the above mentioned website may be led to believe that the Plavix medicine is available in all countries without any medical control, whereas, the Plavix medicine can only legitimately be obtained under medical prescription.
Therefore, the use of the disputed domain name <plavixstore.com>, by redirecting Internet users to on-line pharmacies selling pharmaceuticals such as Plavix without requiring proof of a physical examination by an authorized doctor, is potentially harmful to the health of Internet users, who purchase Plavix products under the mistaken impression that they are dealing with the Complainant.
Previous panels have stated that selling or purchasing prescription medication without any doctor’s examination or prescription and consequently in violation of public health regulations, can constitute evidence of the respondent’s bad faith. One example can be found in Lilly ICOS LLC v. Tudor Burden, Burden Marketing, WIPO Case No. D2004-0794, in which the panel states that:
“Complainant’s CIALIS product is available only with a physician’s prescription, and is manufactured, labeled, and sold in strict compliance with US Food and Drug Administration (FDA) and other health authority laws and regulations. The products sold on [r]espondent’s website are […] illegal and potentially dangerous”.
It is obvious that with this behaviour the disputed domain name is used in bad faith and the Respondent intentionally attempts to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website.
It emerges from these facts that the disputed domain name <plavixstore.com> constitutes an opportunistic registration, which has been made and used in bad faith.
The Complainant requests that the disputed domain name <plavixstore.com> be cancelled.
The Respondent did not provide any formal Response to the Complainant’s allegations.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer or cancellation of a domain name to a complainant under the Policy it is necessary that the complainant must prove, as required by paragraph 4(a) of the Policy, that
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The fact that the Respondent has not provided a formal Response to the Complaint in this case does not relieve the Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed to a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences therefrom as it considers appropriate.”
Consequently, the Panel must proceed with an assessment of the Complaint on its merits.
A. Identical or Confusingly Similar
The disputed domain name is <plavixstore.com>.
The Complainant has clearly demonstrated longstanding and extensive prior trademark rights for the mark PLAVIX around the world.
It is accepted that the domain suffix “.com” is not pertinent to the normal consideration of identity or confusing similarity for the purposes of the Policy.
In this case, the principal difference is that the word “store” has been added to the PLAVIX mark by the Respondent, with the obvious intention that the domain name will be read as <PLAVIXstore.com>.
The Panel is in no doubt that the distinctive element of the disputed domain name will be recognized as identical to the Complainant’s mark PLAVIX, with the addition of the descriptive word “store” which will be immediately understood to convey its ordinary meaning of a location – online or offline – offering goods for sale; and in this case to designate an online “store” where consumers would expect to find the Plavix products offered for sale.
The addition of the word “store” in this context is plainly insufficient to avoid the conclusion that the disputed domain name <plavixstore.com> is confusingly similar to PLAVIX.
Consequently, the Panel finds that the disputed domain name is confusingly similar to an earlier trademark in which the Complainant has demonstrated rights, and the requirements of paragraph 4(a)(i) of the Policy are met.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, (by way of example) might serve to demonstrate the respondent’s rights or legitimate interests to a domain name for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to the respondent of the dispute, 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trade mark or service mark rights; 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 trade mark or service mark at issue.
The Respondent has made no express claims to any relevant prior rights of its own; clearly the Respondent is not known by the disputed domain name, nor does it claim to have made any legitimate use of the domain name.
The evidence in the Complaint points directly to the conclusion that the Respondent has simply adopted the disputed domain name to take advantage of public recognition of the Complainant’s PLAVIX mark and products - specifically by establishing a website for selling pharmaceuticals under the Plavix name - and thereby passing itself off as being part of, or connected with, the Complainant’s business.
In the Panel’s view such deceptive activity could never be considered as a bona fide offering or use. It is unquestionably an illegitimate use, expressly for commercial gain, which will inevitably mislead and divert consumers and tarnish the Complainant’s name and mark, and is entirely the opposite of the legitimate examples above from paragraphs 4(c)(i) and (iii) of the Policy.
Consequently, given the circumstances of this case, the Panel accepts the Complainant’s contention that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the requirements of paragraph 4(a)(ii) of the Policy are met.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, the following are some pertinent examples of the sort of conduct which the Panel may take (without limitation) as evidence of registration and use in bad faith:
(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 the Respondent’s 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Complainant’s evidence, which has not been rebutted or challenged by the Respondent, establishes to the Panel’s satisfaction that the Respondent has registered and used the disputed domain name for the purpose of operating a website using the PLAVIX mark and name to attract users, for commercial gain, indirectly through pay-per-click connections and/or directly through unregulated online pharmaceutical services selling Plavix or purported generic substitute products. The evidence shows that the website associated with the disputed domain name was intended to create a misleading and confusing impression as to the source, affiliation or endorsement of the Respondent’s website business. Inevitably, such misuse will cause disruption and damage to the Complainant’s business name and reputation.
Additionally, and as has been observed in similar previous cases, the Panel also considers it significant that the contact address details for the Respondent were initially concealed behind a so-called “privacy” service, and that even the address details given to that service were apparently inaccurate. From the website screenshots provided in evidence, it also appeared that no contact address was provided on the Respondent’s website to identify where the operator of that business was really located. In the Panel’s opinion, no ordinary commercial business has any justification for concealing its name and true contact details, and such action would indeed be in contravention of company law and consumer protection legislation in many jurisdictions. As the Respondent has made no attempt to offer any legitimate explanation for its actions, such concealment may be considered as further evidence of bad faith intent on the part of the Respondent. As the Panel has often seen in cases where prescription drugs are offered by online traders with no apparent medically qualified review, the evidence suggests to the Panel that the Respondent’s business location is hidden precisely to avoid the fiscal and regulatory costs and oversight, which legitimate pharmaceutical businesses would be obliged to bear in the interest of consumer protection. Consumers would therefore be put at risk to their health as a consequence of such avoidance.
For the same reasons as in Section B above, the Panel also considers the example of paragraph 4(b)(iv) of the Policy is directly applicable in the present case.
For the purposes of the Policy, therefore, the Panel concludes that the disputed domain name has been registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy is also met.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, and as requested by the Complainant (notwithstanding the evident risk that the disputed domain name will immediately be re-registered for some other party via a drop-catching service), the Panel orders that the disputed domain name <plavixstore.com> be cancelled.
Dated: September 27, 2010