WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Alla Landau
Case No. D2019-0168
1. The Parties
The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Alla Landau of Rostov, the Russian Federation.
2. The Domain Name and Registrar(s)
The disputed domain name <genericplavix.com> 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 January 24, 2019. On January 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 25, 2019, the Registrar 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 the same date 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 the same 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 February 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 27, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2019.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on March 8, 2019. 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 Complainant is one of the world’s largest pharmaceutical companies, developing, manufacturing, distributing and selling a wide variety of pharmaceutical products, including Plavix, one of the two leading drugs for the treatment of thrombosis, indicated for the reduction of recurrence after ischemic cerebrovascular disorder.
PLAVIX has been commercialized by the Complainant since 1998, in the United States of America, and is currently available in more than 100 countries.
The Complainant registered PLAVIX trademark in multiple jurisdictions throughout the world, since at least 1993 (date of registration in France).
The Complainant also owns and operates several domain names incorporating its PLAVIX mark, such as <plavix.com> (registered in 1998), <plavix.org> (registered in 1999) and <plavix.fr> (registered in 2018).
The disputed domain name was registered by the Respondent on December 21, 2018.
The Panel accessed the disputed domain name on March 16, 2019, which resolved to a page comparing different online drugstores prices and offering Plavix medicines for sale.
5. Parties’ Contentions
The Complainant makes the following contentions:
- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. Firstly, the disputed domain name entirely reproduces, as the dominant component, the PLAVIX trademarks, which, as themselves, do not have any particular meaning and are therefore highly distinctive. Secondly, the Complainant is a multinational company in the pharmaceutical field which develops, manufactures, distributes and sells a wide variety of pharmaceutical products under the trademark and trade name PLAVIX. It has used its PLAVIX trademark and trade name for over 15 years and invested substantial financial resources over the years to advertise and promote the company and its PLAVIX-branded pharmaceutical products in countries all over the world, including in the Russian Federation. Thirdly, the reproduction of the Complainant’s trademarks as the dominant part of the disputed domain name is confusingly similar to prior above cited trademarks, regardless of the adjunction of (i) the descriptive term “generic”, which is purely descriptive in combination with the PLAVIX trademarks, within the frame of the Complainant’s activities; and (ii) the generic Top-Level Domain (“gTLD”) extension <com>. It is well established that the gTLD designation used as part of a domain name should be disregarded as it does not serve to distinguish domain names. The relevant comparison to be made is with the second level portion of the disputed domain name. It is also well-established that where a domain name wholly incorporates a complainant’s well-known and distinctive trademarks in its entirety, it is confusingly similar to that mark despite the addition of a word or, in this case, of descriptive terms. At first, the addition of the descriptive term “generic” to a trademark does not prevent the disputed domain name from being confusingly similar to the trademark, considering that this term is widely and commonly used within the course of online trade. It can only be found that the Respondent selected the disputed domain name in a specific attempt of free-riding on the coat tails of the fame of the Complainant’s PLAVIX trademarks, regardless of the adding of the descriptive term “generic”. Finally, it must be taken into account that the likelihood of confusion is ascertained by the reputation of the Complainant’s trade name, trademarks, domain names and more generally speaking goodwill.
- The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has neither prior rights nor legitimate interests to justify the use of the already well-known and worldwide famous trademarks and domain names of the Complainant. Secondly, the name indicated on the WhoIs Database as the registrant of the disputed domain name is not the real registrant. Consequently, the Respondent has no prior rights and/or legitimate interests to justify the use of the Complainant’s trademarks and domain names. Thirdly, the Complainant has never licensed or otherwise authorized the Respondent to use its trademarks or to register any domain name including the above-mentioned trademarks. Consequently, there is no relationship whatsoever between the parties and the Respondent has clearly modified the Complainant’s trademarks for its own use and incorporated them into the disputed domain name without the Complainant’s authorization. Fourthly, the Respondent has not made fair use of the disputed domain name – without a voluntary intent for commercial gain to misleadingly divert consumers or to tarnish the well-known PLAVIX trademarks at issue – so as to confer a right or legitimate interest in it in accordance with paragraph 4(c)(i) of the Policy, given that the website linked to the disputed domain is clearly used as a bait and switch. The disputed domain name is used by the Respondent to redirect Internet users to a website offering products in the pharmaceutical field - and supposedly Plavix products –, by illegally riding on the Complainant’s goodwill and reputation. Furthermore, the website at the disputed domain name displays the product PLAVIX along with false, inaccurate and misleading information which causes irrevocable damage to the Complainant’s reputation and overall goodwill, in addition to being misleading for healthcare professionals and patients, in particular as PLAVIX is sold as a prescription drug. The Respondent is not affiliated with the Complainant in any way. The Respondent has intentionally registered the disputed domain name so as to offer competing versions of the Complainant’s product via another website and is therefore misleading Internet users who may search for official information and/or genuine products sold under the brand PLAVIX. Fourthly, it is regularly held that even if the Respondent is using the disputed domain name in connection with an offering of goods and services, this does not prove that it had rights or legitimate interests in the domain name. Under these circumstances and as it will be demonstrated below, the absence of any consent by the Complainant and the bad faith registration and use of the disputed domain name prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
- The disputed domain name was registered and is being used in bad faith. UDRP Panels regularly recognize opportunistic bad faith in cases in which the domain name appears confusingly similar to a complainant’s well-known trademark. The Respondent does not have any legitimate interest in using the disputed domain name since his name does not bear any resemblance with the word “plavix” which has no meaning and is therefore highly distinctive. The Respondent has neither prior rights nor legitimate interests to justify the registration or use of the already well-known and worldwide famous trademarks and domain names of the Complainant. The absence of legitimate interest somewhat induces the absence of good faith. Secondly, it should be considered that, given the famous and distinctive nature of the mark PLAVIX, the Respondent is likely to have had, at least, constructive, if not actual notice, as to the Complainant’s marks at the time he registered the disputed domain name. This suggests that the Respondent acted with opportunistic bad faith in having registered the disputed domain name in order to make an illegitimate use of it. Thirdly, the disputed domain name has obviously been registered for the purpose of attracting Internet users to the Respondent’s website by creating a likelihood of confusion between the Complainant’s trademarks and the disputed domain name. Indeed, it must be reminded that the Complainant is nowadays one of the leaders among pharmaceutical companies, ranking first in Europe and ranked fourth in the world in the pharmaceutical industry. Furthermore, it must be recalled that the Complainant is the owner of the PLAVIX trademark, which is worldwide well-known, as well as of different domain names comprised of the PLAVIX trademark. In cases in which the well-known status of a complainant’s trademark is well-established, numerous UDRP panel decisions constantly acknowledge that this consideration is, in itself, indicative of bad faith registration and use. Therefore, it can only be found that the Respondent must have been undoubtedly aware of the risk of deception and confusion that would inevitably arise from the registration of the disputed domain name. Furthermore, the disputed domain name is also being used in bad faith. Firstly, it is clear that, given the famous and distinctive nature of the marks PLAVIX, the Respondent is likely to have had, at least, constructive, if not actual notice, as to the Complainant’s mark at the time he registered the disputed domain name. Secondly, as the disputed domain name directs Internet users to websites which are not the official website of the Complainant’s products, it is evident that the Respondent is trying to gain unfair benefit of the Complainant’s goodwill and reputation, which suggests an effort to create a likelihood of confusion with the Complainant’s trademarks and domain names as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the products displayed/advertised for sale on it. Indeed, it is established that the disputed domain name leads to a competing website insofar as the website displays/offers for sale products at lower prices. This should be deemed sufficient to characterize a bad faith use under the ICANN Policy. Thirdly, insofar as the Respondent’s website directly competes with the Complainant’s renowned activities, the Respondent has clearly registered and used the disputed domain name disrupting the Complainant’s business, which constitutes further evidence of its bad faith.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:
(i) The disputed 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel has no doubt that “plavix” is a term directly connected with the Complainant’s pharmaceutical product.
Annex 8 to the Complaint shows registrations of the PLAVIX trademarks obtained by the Complainant in multiple jurisdictions, including in France, in 1993.
The trademark PLAVIX is wholly encompassed within the disputed domain name, together with the prefix “generic” and with the gTLD extension “.com”.
Previous UDRP decisions have demonstrated that descriptive additions (such as “generic” for pharmaceutical products) do not alter the underlying meaning of a domain name, so as to avoid confusing similarity. This has been held in many UDRP cases (see e.g., Inter-IKEA Systems B. V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc., WIPO Case No. D2000-0927).
It is also well established that the addition of a gTLD such as “.com” is irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; 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 trademark at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed nor authorized the use of its famous trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.
The disputed domain name is currently linked to a website offering Plavix medicines for sale. However, the Respondent is not an authorized reseller of Plavix, and the site does not accurately and prominently disclose the registrant’s relationship with the trademark holder (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(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 its 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 its website or location or of a product or service on its website or location.
When the disputed domain name was registered by the Respondent (in 2018) the trademark PLAVIX was already associated worldwide with the Complainant’s pharmaceutical products.
The disputed domain name encompasses the trademark PLAVIX, which is a coined term, with no dictionary meaning.
The addition of the prefix “generic” makes even clearer that the disputed domain name is related to the Complainant’s product, considering it is a common pharmaceutical descriptive term.
Therefore, the Panel concludes that it is very unlikely that the Respondent was not aware of the Complainant’s trademark and that the adoption of the expression “genericplavix” was a mere coincidence.
Actually, the contents at the website linked to the disputed domain name – including reproductions of the Complainant’s trademark and the description of the respective product, which is being offered for sale – makes clear that the Respondent intentionally attempted to attract the Complainant’s customers, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
Finally, the absence of a reply from the Respondent and of any justification for the use of such famous pharmaceutical trademark are further evidences of bad faith in the present case.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also 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 disputed domain name <genericplavix.com> be transferred to the Complainant.
Date: March 22, 2019