WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Oksana Aponchenkoand, SeoMas
Case No. D2020-2562
1. The Parties
The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is Oksana Aponchenkoand, SeoMas, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name, <plaquenil400.com> (the “Domain Name”), is registered with GKG.NET, INC (formerly GK Group LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2020. On October 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 6, 2020, 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 October 7, 2020, 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 October 7, 2020.
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 October 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2020.
The Center appointed Tony Willoughby as the sole panelist in this matter on November 6, 2020. 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 invitation to the Complainant to file an amendment to the Complaint stemmed from the fact that the Domain Name was registered in the name of a privacy service. In response to the Center’s registrar verification request, the Registrar disclosed the name and address of the entity in whose name the Domain Name had been registered. The amendment to the Complaint names the underlying registrant as the Respondent.
4. Factual Background
The Complainant is a substantial multinational pharmaceutical company with its headquarters in Paris, France. One of its products, Plaquenil, contains hydroxychloroquine, a drug recently approved by the European regulatory authorities for use in the treatment of Covid-19. The Complainant is the registered proprietor of numerous trade mark registrations covering the PLAQUENIL trade mark, including by way of example European Union trade mark no. EU000041962 PLAQUENIL (word) registered on November 27, 1998 (application filed April 1, 1996) in class 5 for “pharmaceutical, veterinary and sanitary preparations; materials for dressings; disinfectants”.
The Complainant is also the registrant of domain names featuring the PLAQUENIL trade mark, one of them being <plaquenil.com>, registered on October 28, 1998.
The Domain Name was registered on September 10, 2020 and is currently connected to a webpage featuring the message: “Plaq ue nil game 400, best arcade for play Coming Soon.” At the date of the Complaint, it was connected to a webpage headed “Canadian pharmacy” and an invitation to “Buy Medications From the Best Drug Store of October 2020 as per Customer Reviews”.
5. Parties’ Contentions
The Complainant contends that the Domain Name is substantially identical to the Complainant’s PLAQUENIL trade mark, that the addition of the numeral “400” is likely to be taken as an indication of drug dosage; that the Respondent is not making a bona fide usage of the Domain Name, is not known by the Domain Name and cannot have acquired any rights or legitimate interests in respect of the Domain Name; and finally that the Domain Name has been registered and is being used in bad faith.
At the time of the Complaint, the Domain Name was connected to an online pharmacy website re-directing visitors to a site or sites offering for sale the Complainant’s Plaquenil product and numerous other pharmaceutical products. The Complainant contends that the Domain Name was deliberately selected, targeting the Complainant’s PLAQUENIL trade mark, and with a view to attracting in visitors to the advertising links offered. The Respondent’s objective being to generate revenue from the commissions associated with the advertising links.
The Complainant seeks cancellation of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) the Domain Name is identical or confusingly similar to a trade mark 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.
B. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s trade mark PLAQUENIL, the numeral “400”, and the generic “.com” Top-Level Domain identifier.
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, explains the test for identity or confusing similarity under the first element of the Policy and includes the following passage:
“While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
The Complainant’s PLAQUENIL trade mark is readily recognizable in its entirety in the Domain Name. The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Domain Name is an unusual combination of letters and numerals, which can only have been intended to represent the Complainant’s Plaquenil product and a 400mg dosage. If there were any doubt about it, that doubt is resolved by the unchallenged evidence of the Complainant that at the time of the Complaint the Domain Name was connected to an online pharmacy website featuring links to a website or websites from which the Respondent would have been likely to have been receiving advertising revenue.
Using the trade mark of another for a domain name leading to a website offering for sale the trade marked product may, under certain circumstances, be a legitimate usage of that trade mark for the purposes of the Policy. It is not legitimate where the registrant’s purpose is to use the name for baiting and switching, attracting in visitors on the basis of the trade mark, then offering for sale other products not associated with the selected trade mark.
Additionally, in the view of the Panel, a domain name such as the Domain Name featuring the name of the Complainant’s product and the numeral “400” is unlikely to represent a legitimate use of a third party’s trade mark. To the unsuspecting visitor it is likely to indicate a domain name of or authorized by the trade mark owner.
The Panel is satisfied that the Complainant has made out a prima facie case, in other words a case calling for an answer from the Respondent. The Respondent has not seen fit to provide an answer.
The Panel concludes on the evidence and in the absence of any Response that the Respondent has no justification for his adoption of the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
For completeness, the Panel notes that while the Complainant suggests that the products on offer through the Respondent’s website are probably counterfeit products, the Complainant has not provided evidence in support of that contention. Without making any determination on the issue, the Panel has approached the case on the basis that the products in question are genuine.
D. Registered and Used in Bad Faith
The Complainant contends that the Domain Name has been registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, which provides: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
Consistent with the Panel’s finding under C above, the Panel finds that the Respondent registered the Domain Name for the purpose for which he was using it at the time of the Complaint, namely to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with the Complainant's PLAQUENIL trade mark as to the source, sponsorship, affiliation, or endorsement of his web site.
The Panel notes that the Respondent’s reaction to the filing of the Complaint was to cease use of the Domain Name for the purpose for which he had been using it and directed the Domain Name to a webpage featuring the message: “Plaq ue nil game 400, best arcade for play Coming Soon.” If it was a ploy intended to justify selection of the Domain Name, it failed.
The Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) 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 Domain Name, <plaquenil400.com>, be cancelled.
Date: November 10, 2020