WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Vitalik Tkachok
Case No. D2011-1818
1. The Parties
The Complainant is Sanofi of Gentilly Cedex, France, represented by Armfelt (a.a.r.p.i), France.
The Respondent is Vitalik Tkachok of Lvov, Lvovska, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <buy--plavix.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2011. On October 25, 2011, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On October 26, 2011, Moniker Online Services, 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 November 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 1, 2011.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on December 14, 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
According to the Complaint, during the summer of 2004, Sanofi-Synthelabo, a French pharmaceutical company, resulting from the merger between SANOFI and Synthelabo announced the success of its offer to acquire AVENTIS shares.
Aventis was also a well known pharmaceutical company resulting from the merger of HMR (Hoechst Marion Roussel), and Rhône Poulenc. The name of the parent company resulting from this merger is SANOFI-AVENTIS.
Completion of the acquisition created the largest pharmaceutical group on the continent of Europe and the fourth largest in the world with consolidated net sales of € 30.4 billion in 2010, and € 4,401 billion research and development expenditure.
The group benefits from a large portfolio of high-growth drugs; including Plavix. Sanofi has core strengths in healthcare, with six growth platforms: emerging markets, vaccines, consumer healthcare, diabetes treatments, innovative products and animal health. It employs 105,000 people worldwide. It has 15,000 research staff with 55 projects under development, 16 of which are at advanced stages. Evidence of this can be seen from the Complainant's Annual Report for 2010 which is annexed at Annex 3 to the Complaint.
Plavix is the name of a product manufactured by the Complainant for the prevention of ischemic events caused by atherothrombosis.
It is one of the world's 10 leading medicines, and to date, over 115 million patents throughout the world have been treated with Plavix. It is indicated to be for the prevention of atherothrombosis-related cardiovascular events in patents with history of recent myocardial infraction, acute coronary syndrome, recent stroke or established peripheral arterial disease. At Annex 4 to the Complaint is a brochure related to PLAVIX.
Plavix is currently the only medicine indicated for the secondary prevention of atherothrombosis regardless of the location of the primary arterial damage. It was first commercialized since 1998, in the United States and it is now available in more than 115 countries throughout the world.
The Complainant has filed trademark applications for PLAVIX in more than 100 countries, including the Ukraine which is the address of the Respondent.
At Annex 6 to the Complaint is set out a list of the Complainant’s worldwide trademark applications or registrations for the mark PLAVIX. At Annex 7 are copies of a number of the Complainant’s trademark registration certificates for the mark PLAVIX.
The Complainant has also registered numerous domain names worldwide containing the mark PLAVIX including, for example, <plavix.com>, <plavix.net> and <plavix.co.uk>. Copies of the WhoIs search results for a number of these domain names are set out in Annex 8 to the Complaint
In the absence of a Response and any evidence to the contrary from the Respondent, the Panel proceeds to determine this dispute on the basis of the evidence contained in the Complaint and the case file.
5. Parties’ Contentions
1. The Complainant submits that the disputed domain name is identical to the trademark PLAVIX in which the Complainant has rights. It submits that the mere addition of the generic word "buy" is insufficient to avoid confusing similarity.
2. The Respondent should be considered as having no rights or legitimate interest in respect of the disputed domain name. It points out the Complainant has prior rights in the trademark and that there is no evidence of any licence, consent or other right by which the Respondent would have been entitled to register or use the domain name incorporating the Complainant's mark.
3. It submits that the disputed domain name should be considered as having been registered and used in bad faith for the following reasons:-
(i) The Respondent's awareness that PLAVIX corresponds to the Complainant's trademark.
(ii) The Respondent prevents the Complainant from reflecting the trademark in a corresponding domain name.
(iii) The Respondent uses the domain names to attract for commercial gain Internet users.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Given the evidence set out above,; that the Respondent owns the trademark PLAVIX or has applied for registration of the trademark PLAVIX in a large number of countries, the Panel accepts that the Complainant has rights in the mark PLAVIX. The next issue to consider is whether the disputed domain name is identical or confusingly similar to the mark PLAVIX. The difference between the Complainant's mark PLAVIX and the disputed domain name is the addition of the generic word "buy".
The Complainant cites a number of previous panel decisions which have proceeded on the basis that the addition of generic words to a domain name is not sufficient to escape the finding of similarity. In particular, the Complainant cites Sanofi-Aventis v. Ju Dehua, WIPO Case No. D2005-1043 where the panel found:
“The Panel finds that adding generic words to a domain name such as “new”, “best” and “buy” is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of the Complainant. In this case the words “new, “best” and “buy” do not serve any distinguishing function but rather describe the nature of the service offered on the relevant website.”
A similar conclusion was reached in relation to the domain name <buyguerlain.com> in Guerlain S.A. v. HI Investments, WIPO Case No. D2000-0494 where the panel found that the combination of the mark GUERLAIN together with the generic word "buy" was "identical to the Complainant's trademark Guerlain"
This Panel is prepared to follow those decisions but recognizes that the disputed domain name is a combination of the word "buy" and "plavix" so that in the Panel's view, the disputed domain name is confusingly similar to the mark PLAVIX.
It follows that the Complainant succeeds under this element of the Policy.
B. Rights or Legitimate Interests
It should be noted that the disputed domain name as used by the Respondent leads to a website where numerous links are provided to buy PLAVIX products or generic products or placebo products as set out in Annex 11 to the Complaint. The Complainant argues that the Respondent's website is merely a portal for the website of a third party from which the Respondent is paid a commission so that the Respondent does not actually offer any bona fide genuine goods or services. It follows, based upon the authority of previous panel decisions, a number of which are cited in the Complaint that the Respondent does not have any rights or legitimate interests in respect of the Complainant's trademark.
The Panel, in the absence of any evidence to the contrary from the Respondent accepts the submission that the Respondent has not made any bona fide use of the disputed domain name, but in those circumstances the Respondent should be considered as having no right or legitimate interest in respect of the disputed domain name.
It follows that the Complainant succeeds in relation to this element of the Policy.
C. Registered and Used in Bad Faith
The Complainant submits that the Respondent has no prior rights in respect of the mark PLAVIX and no authorization to use the mark in any form.
The Complainant submits that the Respondent has registered the disputed domain name with the knowledge that it corresponds to the Complainant's pharmaceutical product. It submits that due to widespread marketing on the Internet and elsewhere, and the fact that the Complainant's product has been used to treat more than 115 million patients, means that the Respondent must have noticed that the disputed domain name corresponds to the Complainant's mark. It submits that the Respondent has registered the disputed domain name as "an opportunistic act which seeks to disrupt the Complainant's business". It points out that the Respondent proposes on its website, links to portal and pharmacy on-line websites. It submits that by using its website under the disputed domain name it is leading Internet users to third party on-line pharmacies so that the Respondent is intentionally attempting, for commercial purposes, to attract Internet users to the Respondent's website and thus creates a likelihood of confusion with the Complainant's trademark.
Moreover, the Complainant submits that any Internet user who attempts to connect to the Respondent's website will believe that PLAVIX is available in all countries without any medical control, whereas in fact it is a product only available by medical prescription. Therefore it submits that such use of the disputed domain name by redirecting internet users to on-line pharmacies selling PLAVIX without prescription and a prior examination by authorized doctors, is potentially harmful to the health of Internet users who purchase PLAVIX products under the mistaken impression that they are dealing with the Complainant.
The Complainant relies upon a previous UDRP decision in Lilly Icos LLC v. Tudor Burden, WIPO Case No. D2004-0794 in which the panel found that the use of a pharmaceutical product which was available only with a physician's prescription and is manufactured, labeled and sold in strict compliance with FDA laws and regulations is "illegal and potentially dangerous".
This Panel is prepared to accept that submission in the absence of any evidence to the contrary. It therefore finds that the domain name in dispute was registered and is being used in bad faith in accordance with the Complainant's submissions.
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, <buy--plavix.com> be cancelled as requested by the Complainant.
Clive Duncan Thorne
Dated: January 3, 2012