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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi v. Redacted for Privacy, Whois Privacy Protection Foundation / Alexandr Sobianin

Case No. D2020-3083

1. The Parties

The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.

The Respondent is Redacted for Privacy, Whois Privacy Protection Foundation, Netherlands / Alexandr Sobianin, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <plavixclopidogrel.com> (“Domain Name”) 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 November 18, 2020. On November 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 19, 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 a further email communication to the Complainant on November 30, 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 December 2, 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 December 7, 2020. In accordance with the Rules, paragraph 5, the due date for a response was December 27, 2020. The Respondent did not submit a response. Accordingly, the Center notified the parties of the Respondent’s default on January 13, 2021.

The Center appointed Marylee Jenkins as the sole panelist in this matter on January 27, 2021. 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

Based on the review of the uncontested evidence submitted by the Complainant, the Panel finds that the Complainant is the owner of multiple trademark registrations for the word mark PLAVIX in multiple jurisdictions worldwide including, for example:

French Trademark Registration No. 93484877 (registered July 28, 1993) in International class 05;

French Trademark Registration No. 97710388 (registered December 19, 1997) in International class 05; International Trademark Registration No. 613041 (registered December 27, 1993) in International class 05 and including a designation of the Russian Federation;

International Trademark Registration No. 694151 (registered June 16, 1986) in International class 05 and including a designation of the Russian Federation;

European Union Trade Mark Registration No. 001246099 (filed on July 19, 1999; registered on October 2, 2000) in International class 05; European Union Trade Mark Registration No. 002236578 (filed on May 29, 2001; registered on April 18, 2002) in International class 05; and

United States of America Registration No. 2042583 (filed on January 26, 1994; registered on March 11, 1997) in International class 05 (individually and collectively referred to as the “Complainant’s Mark”).

The Complainant also owns several domain names incorporating the Complainant’s Mark including, for example, <plavix.com>, <plavix.net>, <plavix.us>, <plavix.info>, and <plavix.org>.

The Domain Name <plavixclopidogrel.com> was registered on October 3, 2020. There is currently a website accessible at the Domain Name offering prescription drugs for sale.

5. Parties’ Contentions

A. Complainant

The Complainant states that it was founded in 2004 as Sanofi-Aventis after the merger of two pharmaceutical companies, Aventis and Sanofi-Synthélabo, and then changed its name to Sanofi in May 2011. The Complainant also states that it engages in the research, development, manufacturing, and marketing of pharmaceutical products principally in the prescription market. The Complainant further maintains that it offers a wide range of patented prescription drugs to treat patients with serious diseases, including cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine, and vaccines. One of the Complainant’s thrombosis drugs is sold under the mark PLAVIX and has been used to treat over 100 million patients throughout the world. The Complainant states that it employs 100,000 people in 100 countries around the world and it is the fourth largest multinational pharmaceutical company in the world by prescription sales.

The Complainant states that it owns and has obtained many trademark registrations for the Complainant’s Mark, including those cited above as well as additional registrations cited in an appendix to its Complaint, and that none of these registrations have been abandoned, cancelled, or revoked. Further, the Complainant states that it has made significant investments over the years to advertise, promote, and protect the Complainant’s Mark through various forms of media, including the Internet. Based on its extensive use and trademark registrations, the Complainant alleges that it owns the exclusive right to use the Complainant’s Mark and that Complainant’s Mark is well-known.

The Complainant alleges that the Domain Name is confusingly similar to the Complainant’s Mark as it incorporates the Complainant’s Mark completely. The Complainant then alleges that the Respondent has added the generic term “clopidogrel” to the Complainant’s Mark, which is the chemical name for the Complainant’s Mark. The Complainant also alleges that the Complainant’s Mark is highly distinctive.

The Complainant further alleges that the Respondent created a likelihood of confusion with the Complainant and the Complainant’s Mark by registering a Domain Name that incorporates the Complainant’s Mark in its entirety and a closely related term, which demonstrates that the Respondent is using the Domain Name to confuse unsuspecting Internet users looking for the Complainant’s products, and to mislead Internet users as to the source of the Domain Name and the Complainant’s websites.

The Complainant further alleges that the Respondent is not commonly known by the Domain Name, which evinces a lack of rights or legitimate interests in the Domain Name. Additionally, the Complainant notes that it has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s Mark. The Complainant further notes that the Respondent has neither business relations with nor knowledge of the Respondent.

The Complainant alleges that the Respondent is using the Domain Name to suggest that the Respondent is affiliated with or connected to the Complainant. The Complainant alleges that the website at the Domain Name has a link to “Best Drug Store” which redirects Internet users to a website that offers unauthorized PLAVIX goods at a discounted price along with false, inaccurate and misleading information. The Complainant alleges that this is an attempt to attract and divert the Complainant’s customers to purchase from this website instead of the Complainant’s site. The Complainant further alleges that this activity constitutes a “bait and switch.” The Complainant states that the Respondent is not using the Domain Name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name as allowed under the Policy.

The Complainant alleges that the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business. The Complainant further alleges that the Respondent’s use of the Complainant’s Mark, or any minor variation of it, strongly implies bad faith.

The Complainant alleges that at the time of the registration of the Domain Name, the Respondent knew, or at least should have known, of the existence of the Complainant’s Mark and that the registration of a domain name containing well-known trademarks constitutes bad faith per se. The Complainant further alleges that the Respondent created a likelihood of confusion with the Complainant and the Complainant’s Mark by registering a Domain Name that incorporates the Complainant’s Mark in its entirety and a closely related word, which demonstrates that the Respondent is using the Domain Name to confuse unsuspecting Internet users looking for the Complainant’s services, and to mislead Internet users as to the source of the Domain Name and the website. By creating this likelihood of confusion between the Complainant’s Mark and the Domain Name, leading to misperceptions as to the source, sponsorship, affiliation, or endorsement of the Domain Name, the Complainant alleges that the Respondent has demonstrated a nefarious intent to capitalize on the fame and goodwill of the Complainant’s Mark in order to increase traffic to the Domain Name’s website.

The Complainant further alleges that the Respondent, at the time of the initial filing of the Complaint, had employed a privacy service to hide its identity, which supports an inference of bad faith registration and use. Based on the above, the Complainant alleges that it is more likely than not that the Respondent knew of and targeted the Complainant’s Mark and that the Respondent should be found to have registered and used the Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the domain name holder 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.

Under paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s default as the Panel considers appropriate. Nevertheless, the Panel may rule in the Complainant’s favor only after the Complainant has proven that the above elements are present.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has provided sufficient evidence to show that it is the owner of and has rights in and to the Complainant’s Mark.

A review of the second-level domain (“plavixclopidogrel”) of the Domain Name shows that the domain comprises the Complainant’s trademark PLAVIX in its entirety along with the chemical term for the Complainant’s Mark (i.e., “clopidogrel”) as the suffix. With the dominant portion of the Domain Name being the Complainant’s distinctive trademark PLAVIX, the addition of the term “clopidogrel” in the Domain Name does not avoid a finding of confusing similarity for the purposes of the Policy.

Accordingly, based on the uncontested evidence submitted by the Complainant, the Panel concludes that the Domain Name is confusingly similar to the Complainant’s Mark in which the Complainant has rights and that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

There is no evidence that the Complainant has at any time ever licensed, sponsored, endorsed, or authorized the Respondent to register or use the Complainant’s Mark in any manner. In addition, no evidence has been presented that before notice to the Respondent of the dispute, the Respondent had been using or was making demonstrable preparations to use the Domain Name in connection with any type of bona fide offering of goods or services or that the Respondent is commonly known by the Domain Name, as an individual, business, or otherwise. Rather the uncontested evidence clearly shows that the Complainant had well-established rights to the Complainant’s Mark in multiple jurisdictions worldwide that substantially pre-date the Respondent’s registration of the Domain Name. In addition, the Complainant has presented sufficient evidence to result in a finding that the Respondent was using the Domain Name to misleadingly divert Internet users, looking to purchase the Complainant’s products, to the Respondent’s unauthorized website using “bait and switch” tactics. Particularly, the Respondent was using the Domain Name to confuse Internet users into believing that the Respondent was connected to, sponsored by or affiliated with the Complainant and then redirecting such users to a competing website. The Respondent’s use of the Domain Name does not constitute a bona fide offering of goods and services and was for its own commercial gain.

The Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name and that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Based upon the undisputed evidence submitted by the Complainant, the Panel finds that the Respondent had actual knowledge of the Complainant’s Mark when registering the Domain Name. This finding is supported by the uncontested and extensive evidence showing that the registration of the Domain Name by the Respondent in no way predates the Complainant’s substantially earlier registration dates for the Complainant’s Mark. Rather the review of the Complainant’s many trademark registrations for the Complainant’s Mark in many classes and jurisdictions worldwide shows that such registrations well predate the Respondent’s registration of the Domain Name. Along with the submitted evidence of the Complainant’s own web sites incorporating the Complainant’s Mark, the Complainant has more than sufficiently shown that the Respondent registered the Domain Name in bad faith for the purpose of intentionally diverting Internet users, looking to purchase the Complainant’s products, to the Respondent’s unauthorized site accessible at the Domain Name. Additionally, the evidence of the Complainant’s own websites shows that the Respondent was clearly aware of the Complainant’s Mark and the Complainant’s web sites when registering the Domain Name. As the uncontested evidence further demonstrates, the Respondent was not making any type of legitimate noncommercial or fair use of the Domain Name but rather was well aware of the Complainant, the Complainant’s Mark, and the Complainant’s websites based on the Respondent’s unauthorized website using “bait and switch” tactics. The Respondent is furthermore using the Domain Name to disrupt the Complainant’s business and the sale of its products online by using such “bait and switch” tactics. The Respondent’s failure to provide accurate contact information in the Domain Name registration also supports a finding of the Respondent’s bad faith registration and use of the Domain Name.

Based on this uncontested evidence, the Panel therefore concludes that the Respondent registered and is using the Domain Name to intentionally attract Internet users searching to purchase the Complainant’s products to the Respondent’s unauthorized web site by creating a likelihood of confusion with the Complainant’s Mark as well as its websites as to the source, sponsorship, affiliation, or endorsement thereof.

The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <plavixclopidogrel.com> be transferred to the Complainant, as requested by it in its Complaint.

Marylee Jenkins
Sole Panelist
Date: March 4, 2021

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