WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. LLC Wuxi Yilian, Wuxi Yilian LLC / Aleksei Chernenko, Pharmacaptical
Case No. D2018-1337
1. The Parties
The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is LLC Wuxi Yilian, Wuxi Yilian LLC of Xiamen, Fujian, China / Aleksei Chernenko, Pharmacaptical of Nikopol, Ukraine.
2. The Domain Names and Registrar
The disputed domain names <plavixcheapbuying.com> and <plavixoffersonline.net> are registered with Bizcn.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2018. On June 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 19, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 23, 2018, 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 June 25, 2018.
On June 23, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On June 25, 2018, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language for the proceeding by the specified due date.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 20, 2018.
The Center appointed Joseph Simone as the sole panelist in this matter on August 1, 2018. 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
Sanofi is a French multinational pharmaceutical company headquartered in Paris (France) and is ranked among the world’s largest multinational pharmaceutical companies for sales of prescription drugs. Sanofi engages in research and development, manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market, but also in the market for over-the-counter medications. Sanofi had consolidated net sales of EUR 35.05 billion in 2017, EUR 33.82 billion in 2016, EUR 34.06 billion in 2015, and EUR 31.38 billion in 2014.
Sanofi’s worldwide reputation was recognized in the annual “L2 Digital IQ Index: Pharmabrand & Healthcare Providers” worldwide brand survey issued April 18, 2011, in which it appeared in the “Flash of Genius” section in reference to its promoting patient resources.
Sanofi owns numerous trademark registrations for PLAVIX around the world including in China, the location of the Respondent, as early as 1998: see Chinese trademark number 1194317, registered on July 28, 1998 in class 5 covering pharmaceutical products.
Sanofi is also the owner of the numerous domain names containing the trademark PLAVIX, many of which are registered and put into active use by the Complainant in connection with its activities.
Sanofi offers a number of high-growth drugs, among which Plavix is one of the two leading drugs in the category of thrombosis medicines. Plavix is an anti-platelet agent indicated for a number of atherothrombotic conditions. Under the trademark PLAVIX, Sanofi has developed and sold throughout the world a drug indicated for the reduction of recurrence after ischemic cerebrovascular disorder. It is one of the world’s 10 leading medicines, and to date, over 100 million patients throughout the world have been treated with Plavix. Plavix has been commercialized since 1998, first in the United States of America, then in Germany and the United Kingdom of Great Britain and Northern Ireland. It is now available in over 115 countries.
The disputed domain names <plavixcheapbuying.com> and <plavixoffersonline.net> were both registered on November 11, 2013. Both of the disputed domains names resolve to websites selling products marketed as Plavix and containing information on the drug. On December 8, 2017, and April 16, 2018, the Complainant sent cease-and-desist letters to the privacy service listed as the registrant of the disputed domain names in the publicly-available WhoIs information. There was no response.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant contends that the disputed domain names are identical or confusingly similar to the mark PLAVIX in which it has rights, based on the following:
(i) The Complainant holds a number of PLAVIX trademarks registered and used worldwide, all of which pre-date the disputed domain names. The Complainant has used the trademark and trade name PLAVIX for over 15 years and invested substantial financial resources in this time to advertise and promote the company and its “Plavix”-branded pharmaceutical products in countries all over the world.
(ii) The disputed domain names wholly reproduce the Complainant’s trademark as the dominant element and are confusingly similar despite the addition of descriptive terms “cheap”, “buying”, “offer”, and “online”, considering they are widely used terms in the course of online trade.
Rights or legitimate interests
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain names based on the following:
(i) The Respondent is not commonly known by the disputed domain names;
(ii) The Complainant has never licensed or otherwise authorized the Respondent to use its trademarks or to register any domain name including its trademarks; and
(iii) The Respondent has not made fair use of the disputed domain names so as to confer a right or legitimate interest in it in accordance with paragraph 4(c) of the Policy. The disputed domain names are used as baits to mislead consumers looking for the genuine “www.plavix.com” website to the Respondent’s websites offering pharmaceutical products for sale including a competing Plavix product, thereby riding on Sanofi’s goodwill and reputation to obtain commercial gain. Furthermore, the competing Plavix product is displayed alongside false, inaccurate and misleading information which causes irrevocable damage to the Complainant’s reputation and goodwill, as well as being misleading for healthcare professionals and patients, particularly as Plavix is sold as a prescription drug.
Registered and used in bad faith
The Complainant submits that given the famous and distinctive nature of the mark PLAVIX and the likelihood that the Respondent knew of the Complainant’s rights, registration with no prior rights or legitimate interests in the mark is itself sufficient evidence of bad faith registration and use. Since the disputed domain names direct Internet users to websites which are not the official websites of the Complainant, and which are competing websites insofar as they offer products for sale at lower prices, the Complainant submits that this indicates the Respondent registered the disputed domain names primarily for the purpose of trying to unfairly benefit from Sanofi’s goodwill and reputation by creating a likelihood of confusion with the Complainant. Insofar as they directly compete with the Complainant’s activities and contain incorrect and unauthorized medical information on the Plavix drug, the Complainant submits that the Respondent registered and used the disputed domain names for the purpose of disrupting the Complainant’s business.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of Proceeding
The Complainant filed the Complaint in English and requested that English be the language of the proceeding on the grounds that (i) the disputed domain names contain English terms and the Registration Agreement is available in English, suggesting the Respondent is familiar with English; and (ii) if the Complainant were to submit all documents in Chinese, the proceeding would be unduly delayed and the Complainant would incur substantial expenses for translation.
The Respondent did not respond on this issue.
In accordance with paragraph 11 of the Rules:
“[…] the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Therefore, prima facie, the language of the proceeding should be Chinese. However, noting the aim of conducting proceedings with due expedition while also ensuring parties are given a fair opportunity to present its case, section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides for certain scenarios which may warrant proceeding in a language other than that of the registration agreement including evidence that the Respondent understands the language of the complaint and potential unfairness or unwarranted delay in ordering the complainant to translate the complaint.
In the Panel’s view, a disputed domain name containing English terms containing English terms does not alone indicate the necessary familiarity with the English language. As the registration agreement is in Chinese, it is likely that the Respondent registered the disputed domain names at the Chinese language website “www.bizcn.com”, which is listed as the Registrar URL on WhoIs, rather than the English language version at “bizcn.hostzealot.com” where the Complainant has located the English language Registration Agreement. In this respect, it is worth noting that although the registrant disclosed by the Registrar as the “actual respondent” – Aleksei Chernenko, with a street address that is in Ukraine – would suggest the Respondent is not Chinese, this profile is likely to be fake as the country is listed under the address is China and the telephone number is Chinese. Unlike “.cn” domains, there is commonly no identity verification requirement for other Top-Level Domains registered in China.
That said, the Respondent was notified in both English and Chinese by the Center of the nature and deadlines pertaining to the proceeding as well as the issue of the language of the proceeding, and failed to express a language preference or submit a formal Response. The Panel does not believe it would be prejudicial to the Respondent if English were adopted as the language of the proceeding, whereas requiring translation of the Complaint and annexes thereto would cause undue delay and expense. Accordingly, the Panel will proceed in English.
A. Identical or Confusingly Similar
Under the first element of the Policy, a complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (paragraph 4(a)(i) of the Policy).
That is, the complainant must first demonstrate substantive rights in the trademark on which the complaint is based. In this case, the Panel finds that the Complainant has registered rights in the mark PLAVIX for which the Complainant has several trademark registrations. The Complainant also has unregistered rights by virtue of using the mark PLAVIX in connection with a pharmaceutical drug which is sold throughout the world.
A complainant must then demonstrate that the disputed domain name is identical or confusingly similar to the trademark. Per section 1.7 of WIPO Overview 3.0, the test for whether the domain name is identical or confusingly similar to the trademark is a relatively straightforward comparison. A domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962).
When comparing the domain name with the trademark, the generic Top-Level Domain, e.g., “.com” may be disregarded (section 1.11 of WIPO Overview 3.0; F. Hoffmann-La Roche AG v. Domain Admin/xcite, WIPO Case No. DCC2007-0003).
In this case, the disputed domain names <plavixcheapbuying.com> and <plavixoffersonline.net> incorporate the entirety of the Complainant’s trademark PLAVIX. After removing the “.com” and “.net” suffixes, the words remaining are “cheap”, “buying”, “offers” and “online”. It is well established that the addition of a merely descriptive term to a trademark does not prevent a finding of confusing similarity under the first element (section 1.8 of WIPO Overview 3.0; VKR Holding A/S v. Li Pinglong, WIPO Case No. D2016-2269; Pfizer inc. v. Blue Viagra, WIPO Case No. D2004-0732).
Therefore, the Panel is satisfied the disputed domain names are confusingly similar to the Complainant’s mark and the first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
A complainant must then demonstrate that the respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name that is the subject of the complaint (paragraph 4(a)(ii) of the Policy).
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which, if found by the panel, will demonstrate a respondent’s rights or legitimate interests in the disputed domain name.
In this case, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no such rights or legitimate interests, based on the following:
(i) There is no evidence that the Respondent is commonly known by the disputed domain names.
(ii) The Panel accepts the Complainant’s undisputed allegations that there is no relationship between the Respondent and the Complainant that would give rise to any license, permission or authorization for the Respondent to use or register the disputed domain names.
(iii) The Respondent has not made a fair use of the disputed domain names. Both of the disputed domain names resolve to websites advertising for sale a competing Plavix product, unauthorized by the Complainant and alongside what the Panel accepts to be “false, inaccurate and misleading information” as contended for by the Complainant, particularly given that Plavix is sold as a prescription drug only. This is neither a bona fide offering of goods or services nor a legitimate or noncommercial fair use of the disputed domain names as contemplated by sections 4(c)(i) and (iii) of the Policy. On the contrary, it is a deliberate attempt to misleadingly divert consumers in search of official information on the Complainant’s Plavix product to an unauthorized website selling competing products for commercial gain. Moreover, it tarnishes the reputation of the trademark by providing incorrect medical advice, and making readily available online a drug that normally requires a prescription noting the purpose of prescriptions being substance control and ensuring medicines are only prescribed by a qualified medical practitioner.
Having prima facie established the Respondent’s lack of rights or legitimate interests, the burden of production then shifts to the Respondent (section 2.1 of WIPO Overview 3.0), and the Respondent has not presented any evidence to rebut the Complainant’s assertions.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
Under the third element of the Policy, a complainant must prove that the disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
Given the well-known status of the Complainant company Sanofi and as PLAVIX is a distinctive, coined/non-dictionary word, the Panel accepts that the Respondent had at least constructive, if not actual notice. When considering the addition of descriptive words “cheap”, “buying”, “offers” and “online”, the Panel believes the Respondent was indeed aware of the Complainant’s trademark and activities when registering the disputed domain names and intended to use the disputed domain names for the sale of the Plavix product. In the absence of a prior right or legitimate interest, this behavior reflects opportunistic bad faith.
In addition, paragraph 4(b) of the Policy sets out circumstances which, without limitation, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The Panel draws attention to subparagraphs (iii) and (iv):
“(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel is satisfied that the Respondent fully intended to divert Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark, possibly extending to sponsorship or endorsement, in order to offer competing products under the Complainant’s trademark for commercial gain. In addition, the words “cheap”, “buying”, “offers” and “online” are no doubt an attempt to lure consumers looking for information on the Plavix drug to the Respondent’s unofficial website where they may readily purchase drugs at a lower price and without a prescription. Thus, the Panel believes the Respondent registered the disputed domain names primarily for the purpose of disrupting the business of the Complainant and to exploit the reputation of the Complainant and it trademark for its own commercial objective.
The failure of the Respondent to submit a Response to the contrary reinforces this conclusion. Thus, the Panel concludes that the Respondent registered and is using the disputed domain names in bad faith.
Accordingly, the third requirement of the UDRP is satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the names <plavixcheapbuying.com> and <plavixoffersonline.net> be transferred to the Complainant.
Date: August 15, 2018