WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. Whois Privacy Protection Foundation / Bill Shoston
Case No. D2020-3086
1. The Parties
The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is Whois Privacy Protection Foundation, Netherlands / Bill Shoston, United States of America.
2. The Domain Name and Registrar
The disputed domain name <plaquenil200mgbuy.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 November 18, 2020. On November 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 2020, 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 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 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2021.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on February 2, 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
The Complainant is a French multinational pharmaceutical company headquartered in Paris. By prescription sales it is the world’s 4th largest pharmaceutical company. It engages in research and development, manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market but it also develops over-the-counter medication.
It was formed as Sanofi-Aventis in 2004 by the merger of Aventis and Sanofi-Synthelabo and changed its name to Sanofi in May 2011.
As can be seen from Annex 6.1 to the Complaint it is a multinational company based in over 100 countries throughout the world employing 100,000 people. It owns a large portfolio of high-growth drugs details of which are set out in Annex 6.2 to the Complaint. It has a Research and Development investment of EUR 5.9 billion as of 2018 and includes 83 projects in clinical development, 35 of which are at an advanced stage. Details are set out in Annex 6.3 to the Complaint.
It offers a wide range of patented prescriptive drugs to treat patients with serious diseases and has leading positions in 7 major therapeutic areas; cardiovascular, thrombosis, metabolic disorders, oncology, central nervous system, internal medicine, and vaccines. This can be seen from Annex 4 to the Complaint.
Sanofi is therefore a major player in the worldwide pharmaceutical market.
One of Sanofi’s products is Plaquenil which is a medicinal product with hydroxychloroquine. It has very recently been approved by European regulatory authorities to treat patients suffering from the COVID-19 virus disease.
The Complainant owns trade mark registrations for the mark PLAQUENIL throughout the world. In particular, it expressly relies upon the following registrations of PLAQUENIL:
- French trade mark No. 1480756 filed on August 10, 1953 in Class 5 for pharmaceutical products;
- European Union trade mark No. 0000410962 filed on April 1, 1996 and registered on November 27, 1998 in Classes 1,5, and 42 for pharmaceutical products; and
- Chinese trade mark No. 3973694 filed on March 23, 2004 and registered on September 21, 2006 in Class 5 for pharmaceutical products.
Evidence of these registrations is exhibited as Annexes 8.1 to 8.3 to the Complaint respectively. The registrations predate the registration of the disputed domain name <plaquenil200mgbuy.com> which was registered on September 23, 2020.
The Complainant is also the owner of the following domain names incorporating the mark PLAQUENIL; <plaquenil.com> registered on October 28,1998, and <plaquenil.org> registered on March 19, 2020. Details are set out in Annex 9 to the Complaint. The domain names are used by the Complainant in the course of its business.
In the absence of a Response the Panel finds the above evidence adduced by the Complainant to be true
and proceeds to determine the Complaint on the basis of that evidence.
5. Parties’ Contentions
The Complainant submits;
i. it owns registered rights in the mark PLAQUENIL and that the disputed domain name is confusingly
similar to the mark;
ii. the Respondent has not been authorized by it to use the domain name and there is no evidence of a legitimate interest to use the domain name;
iii. On the evidence the Respondent both registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Taking into account the evidence of the Complainant’s ownership of registered trade marks for PLAQUENIL as set out in Section 4 above, the Panel finds that the Complainant is the owner of the mark.
The Complainant points out that the disputed domain name reproduces the mark PLAQUENIL, which is “highly distinctive”, in its entirety.
It submits that PLAQUENIL is “the attack and dominant” part of the domain name which is therefore confusingly similar to PLAQUENIL regardless of the addition of the descriptive terms “200mg” and “buy”. The reference to “200mg” is a reference to dosage of the prescribed drug and “buy” refers to the action offered on the website i.e. the purchase of goods.
The Complainant also points out that it is well-established that a generic Top-Level Domain (“gTLD”), in this case “.com” as part of a domain name should be disregarded as it does not to serve to distinguish domain names.
In summary the Complainant submits that the disputed domain name comprises an exact reproduction of the Complainant’s trade mark PLAQUENIL, combined with descriptive terms, followed by the gTLD “.com”.
The Panel agrees with the Complainant’s submission, taking into account, particularly, the reproduction of the mark PLAQUENIL in its entirety and therefore finds that the disputed domain name <plaquenil200mgbuy.com> is confusingly similar to the trade mark PLAQUENIL in which the Complainant owns registered rights, within paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant submits that the Respondent, on the evidence, does not have any legitimate interests in the disputed domain name.
The Complainant makes it clear that it has never licensed or otherwise authorized the Respondent to use its trade mark PLAQUENIL or to register a domain name incorporating the mark. There is no relationship between the parties. The Panel is entitled, in the absence of contrary evidence, to find that the Respondent has used the Complainant’s mark for its own use and incorporated it into the disputed domain name without the license of the Complainant.
The Complainant also submits that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services so as to confer a right or legitimate interest. Instead the evidence establishes that the disputed domain name was registered for the purpose of unfairly attracting the Complainant’s customers. The evidence of the Respondent’s webpage exhibited at Annex 11 to the Complaint and the reference to the product Plaquenil suggests that it was registered for the purpose of misleadingly diverting customers into believing that the Respondent was in some way connected to, sponsored by or affiliated with the Complainant and its business.
The disputed domain name leads to a commercial website possibly selling fake goods marked PLAQUENIL. As can be seen at Annex 11 to the Complaint, on the website connected to the disputed domain name, by clicking on a “call to action button” the user is redirected to other websites through which discounted pharmaceutical products can be purchased and, by way of example, the website exhibited at Annex 12 to the Complaint.
Having considered this evidence, with no evidence to the contrary from the Respondent, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name within paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant relies upon the “widespread fame” of the company name and its SANOFI marks to support the proposition that the Respondent’s choice of the domain name “can in no way be the result of a mere coincidence” and in accordance with section 5 B above the Respondent lacks any legitimate interests in the disputed domain name.
The Complainant submits that given the famous and distinctive nature of the mark PLAQUENIL the Respondent is likely to have had actual notice of the mark. The Respondent also registered the disputed domain name by creating a likelihood of confusion or association between PLAQUENIL and the domain name.
The Complainant suggests that the fact that the Complainant’s product Plaquenil “has been under the spotlight” as a treatment for use in the COVID-19 pandemic may also have been a factor in the Respondent choosing to register the disputed domain name incorporating PLAQUENIL.
Taking into account this evidence the Panel finds that the disputed domain name was registered in bad faith.
Since the Panel has accepted the evidence that having had notice of the Complainant’s mark at the date of registration of the domain name and then registering it so as to cause confusion the Respondent intended to make an illegitimate use of it.
The disputed domain name directs users to a website (exhibited at Annex 11 to the Complaint) which is not the official website for the Complainant’s goods. Instead the disputed domain name is being used for the purpose of disrupting the Complainant’s business by displaying commercial links which direct Internet users to a competing website selling pharmaceutical goods. This is shown by Annexes 11 and 12 to the Complaint and included in the body of the Complaint.
In the absence of a Response, the Panel agrees with the Complainant’s submissions and finds on the evidence that the disputed domain name is being used by the Respondent to intentionally attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark as to the source of the website pursuant to paragraph 4(b(iv) of the Policy. This constitutes registration and use in bad faith within paragraph 4(a)(iii) 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, <plaquenil200mgbuy.com> be transferred to the Complainant.
Clive Duncan Thorne
Date: February 16, 2021