WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. WhoisGuard, Inc. / Anna Fisherman
Case No. D2019-0506
1. The Parties
The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is WhoisGuard, Inc. of Panama, Panama / Anna Fisherman of Saint Petersburg, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <plavix2018.live> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2019. On March 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 5, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 7, 2019 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 March 7, 2019.
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 March 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 29, 2019.
The Center appointed Gareth Dickson as the sole panelist in this matter on April 10, 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 the proprietor of a number of trade mark registrations around the world for the word mark PLAVIX. These include:
1. French trade mark number 93484877, registered on July 28, 1993;
2. International trade mark number 613041, registered on December 27, 1993 and designating among others Austria, Benelux, Bulgaria, China, Germany, Spain, Czech Republic, Hungary, Morocco, Portugal, Romania, Russian Federation, Slovenia, Ukraine and Viet Nam;
3. European Union trade mark number 002236578, filed on May 29, 2001 and registered on April 18, 2002;
4. Hong Kong, China trade mark number 200009525, registered on July 30, 1998;
5. United States of America trade mark number 2042583, registered on March 11, 1997;
6. Canadian trade mark number LMC509097, registered on March 10, 1999;
7. Japanese trade mark number 4170873 registered on July 24, 1998,
(together, the “Marks”). Each of the Marks is registered in relation to pharmaceutical products.
The Complainant is also the owner of several domain names which incorporate its PLAVIX trade mark, including:
1. <plavix.com> registered on March 26, 1998;
2. <plavix.us> registered on May 16, 2002;
3. <plavix.net> registered on November 19, 1999;
4. <plavix.info> registered on August 24, 2001;
5. <plavix.org> registered on October 20, 1999;
6. <plavix.tel> registered on April 2, 2009;
7. <plavix.cn> registered on May 24, 2006.
The Domain Name was registered on April 5, 2018. It has been configured to redirect Internet users to another website, namely “plavixcheap.us.com”, which offers users a variety of pharmaceutical products. That website uses the PLAVIX trade mark, in addition to using it in its domain name.
5. Parties’ Contentions
The Complainant submits that its PLAVIX drug is one of the two leading drugs in the category of thrombosis medicines. It has developed and sold PLAVIX throughout the world and states that over 100 million patients throughout the world have been treated with PLAVIX. According to the Complainant, PLAVIX has been commercialized since 1998, first in the United States of America and then in Germany and in the United Kingdom, and now in over 115 countries. It states that the term “Plavix” does not have any particular meaning and is therefore inherently distinctive. It has used its PLAVIX trade mark 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.
The Complainant submits that the Domain Name comprises: (a) an exact reproduction of the Complainant’s PLAVIX trade mark; (b) a descriptive number (2018); and (c) the generic Top-Level Domain (“gTLD”) suffix “.live”.
The Complainant alleges that the Respondent selected the Domain Name in a specific attempt to free ride on the fame of the Complainant’s PLAVIX marks. It states that it has never licensed or otherwise authorized the Respondent to use the Marks or to register any domain name including them, and that there is no relationship whatsoever between the parties.
The Complainant also argues that the Respondent is taking unfair advantage of the reputation of the Complainant’s trade marks and is not making legitimate noncommercial or fair use of the Domain Name so as to confer a right or legitimate interest in it in accordance with paragraph 4(c)(i) of the Policy. In particular, the Complainant asserts that the Domain Name is being used to redirect Internet users to the website “plavixcheap.us.com”, which uses the PLAVIX mark to offer, for commercial gain, supposedly Plavix products and pharmaceutical products in competition with the Complainant. The Complainant states that PLAVIX is sold as a prescription drug, indicating that, although the Respondent is using the PLAVIX trade mark, the drugs made available pursuant to that use are not in fact genuine Plavix drugs supplied by the Complainant. The Complainant also asserts that the unauthorized offering of drugs under the PLAVIX mark by the Respondent includes 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.
The Complainant argues that the Respondent has registered the Domain Name in bad faith because the Respondent can only have had the Complainant’s PLAVIX marks in mind when the Domain Name was registered, and adopted that name for the illegitimate purpose of attracting Internet users to the Respondent’s website by creating a likelihood of confusion between the Marks and the Domain Name.
The Complainant also argues that since the Domain Name is being used for an illegitimate commercial purpose, that is, using the Complainant’s PLAVIX mark to trick Internet users into visiting a website that offers pharmaceutical products other than those offered by the Complainant, thereby creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, and using false and misleading information when doing so, the Respondent is disrupting the Complainant’s business. In such circumstances, the Respondent is using the Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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.
These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Marks.
The Panel also accepts that the Domain Name is confusingly similar to the Marks. In particular, the trade mark PLAVIX is recognizable within the Domain Name. The addition of the year “2018” and the gTLD suffix “.live”, does not in any way prevent a finding of confusing similarity. Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
Accordingly, the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
In the current proceeding, the Complainant has established its prima facie case by stating that it has not authorized or consented to the registration or use of the Domain Name by the Respondent. The Complainant has also shown that the Respondent has used the Domain Name to provide access to a website that appears to be intended to confuse users into believing that they are visiting a website associated with the Complainant, whereas in reality that website is set up in competition with the Complainant and contains false and misleading information about the Complainant’s products. The Complainant’s PLAVIX mark is inherently distinctive and therefore the nature of the Domain Name and its use in combination with pharmaceutical products leaves the Panel in no doubt that the Domain Name was registered in order to confuse Internet users in this way. Such use of a domain name is not a bona fide offering that amounts to a legitimate noncommercial or fair use of a domain name.
The Respondent has failed to respond to the Complaint and there is no evidence that the Respondent has acquired any unregistered rights to the word “plavix” or that it is commonly known by any name that corresponds to that word. By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element. As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”.
Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Panel accepts that the Domain Name was registered by the Respondent with the Complainant in mind. “Plavix” is distinctive of the Complainant’s pharmaceutical products yet the Respondent chose to register a domain name that is exclusively comprised of PLAVIX and the year in which the Domain Name was registered.
Furthermore, the Respondent has not put forward any argument to attempt to explain or defend its unauthorized use of the Marks in the Domain Name. Combined with the longevity of the Complainant’s exclusive use of the Marks, the Panel must conclude that the Respondent knew of the Complainant’s rights in PLAVIX when it registered the Domain Name, and that it also knew that it had not been authorized to do so. The Panel therefore finds that the Respondent’s registration of the Domain Name was in bad faith.
The Panel also finds that the Domain Name is being used in bad faith. The use of the Marks for commercial purposes unauthorized by and in competition with the Complainant is inconsistent with the Complainant’s exclusive rights in the Marks. The Panel finds that by its incorporation of the Complainant’s trade mark and its use in relation to a website that features further unauthorized uses of the Complainant’s PLAVIX mark, the Domain Name is being used in order to misrepresent itself as being sponsored, affiliated or endorsed by the Complainant, and to deceive Internet users as to the affiliation, connection, or association of the related website with the Complainant.
As a result of the above, the Panel finds that the Domain Name has been registered and is being used in bad faith.
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, <plavix2018.live>, be transferred to the Complainant.
Date: April 23, 2019