WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi-Aventis v. Gideon Kimbrell

Case No. D2010-1559

1. The Parties

The Complainant is Sanofi-Aventis of Paris, France represented by Armfelt (a.a.r.p.i), of Paris, France.

The Respondent is Gideon Kimbrell of Fortine, Montana, United States of America.

2. The Domain Name and Registrar

The disputed domain name <buyplavix.biz> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2010. On September 15, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 15, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2010.

The Center appointed Irina V. Savelieva as the sole panelist in this matter on October 22, 2010. 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 large pharmaceutical group, which was formed in 2004 as a result of a merger between two French companies, Aventis SA and Sanofi-Synthelabo. The Complainant is the number one pharmaceutical group in Europe and number four in the world with consolidated net sales of EURO 28.3 billion in 2007 and Research and Development expenditure of EURO 4.537 billion in 2009. The company is present in more than 100 countries across 5 continents, employing 105,000 people worldwide. The Complainant offers a wide range of high-growth medicines.

The Complainant has developed and sells throughout the world a medicine under the PLAVIX trademark aimed at prevention of atherothrombosis-related cardiovascular events in patients with histories of recent myocardial infraction, acute coronary syndrome, recent stroke or established peripheral arterial disease. It is currently the only medicine aimed at secondary prevention of atherothrombosis regardless of the location of the primary arterial damage.

PLAVIX has been commercialized since 1998, first in the USA, and it is now available in more that 80 countries.

The Complainant has filed trademark applications for PLAVIX in more than 100 countries, amongst them:

PLAVIX French trademark No. 93 484 877 registered on July 28, 1993;

PLAVIX US trademark No. 2 042 583 registered on March 11, 1997;

PLAVIX Canadian trademark No. TMA509097 registered on March 10, 1999.

The Complainant has also registered the following domain names devoted to Plavix pharmaceutical products: <plavix.net>, <plavix.com> and <plavix.co.uk>.

The disputed domain name <buyplavix.biz> was created on November 3, 2009.

5. Parties’ Contentions

A. The Complainant

(a) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights:

- The disputed domain name consists of the Complainant’s trademark PLAVIX in addition with the generic or descriptive word “buy” and the gTLD “.biz”. A wide range of panelists have considered the addition of generic or descriptive words to trademarks insufficient to escape the finding of similarity, because the additions do not change the overall impression of the disputed domain name being connected to the Complainant.

- The word “buy” is used in the disputed domain name as a generic word and its addition is insufficient to dispel the confusing similarity between the trademark of the Complainant and the disputed domain name. The disputed domain name creates confusion through the use of the generic word “buy” and the PLAVIX trademark, as Internet users would think that the disputed domain name is associated with the Complainant.

- The addition of the gTLD “.biz”, which is required for registration of a domain name, has no distinguishing capacity in the context of a domain name and does not alter the value of the trademark represented in the domain name.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name:

- The Complainant has prior rights in the PLAVIX trademark, which precede the Respondent’s registration of the disputed domain name. Also the Complainant’s trademark is present in 100 countries and is well known throughout the world.

- The Complainant has not granted any license, consent or other right to the Respondent, which may have entitled the Respondent to register the disputed domain name using the PLAVIX trademark.

- There is no doubt that the Respondent is aware that PLAVIX corresponds to a medical product and therefore to a trademark, considering the content of the website.

- The Respondent is not using the disputed domain name in relation with any bona fide offering of goods and services. The disputed domain name links to a website where numerous links are provided to buy Plavix products or other generic products or placebo products as well as competitor products. Thus this website is merely a portal to a website of a third party, which pays the Respondent commission. In such circumstances, the Respondent does not have any rights or legitimate interests in respect of the Complainant’s trademark.

- It is important to note that even if the Respondent was selling the genuine Plavix products (which the Complainant contests), the online pharmacy that is linked to the website associated with the disputed domain name also offers products of the Complainant’s competitors and this is not sufficient to give the Respondent a right or legitimate interest to use the Complainant’s trademark in the disputed domain name.

- Further, the website associated with the disputed domain name does nothing to disclaim any relationship with the trademark owner. The Respondent would not have registered the disputed domain name if the Respondent was not aware of the Plavix drug and the PLAVIX trademark associated with it.

- The Respondent has no legitimate interest in the disputed domain name and has registered the disputed domain name with the intention of diverting consumers and to prevent the Complainant from reflecting the trademark in a corresponding domain name. The Respondent has not made bona fide use of the disputed domain name because of the lack of authorization from the Complainant for the use of the PLAVIX trademark and the sale of Plavix medicine. The use of the disputed domain name with the purpose of diverting customers cannot be characterized as fair use.

(c) The Respondent registered and is using the disputed domain name in bad faith:

- As outlined above, the Respondent has no prior rights in respect of the PLAVIX trademark, and no authorization to use this mark in any form was granted to the Respondent.

- The Respondent clearly registered the disputed domain name with the knowledge that the PLAVIX trademark corresponded to the Complainant’s medical product. This is due to the fact that Plavix is one of the leading medicines in the world and has been used in the treatment of more than 41 million patients. There is no doubt that the Respondent was aware of the reputation and goodwill attached to the PLAVIX trademark and has registered the disputed domain name in order to prevent the Complainant from reflecting the mark in the corresponding domain name.

- By using a website associated with the disputed domain name, the Respondent leads Internet users through links on that website to a third party online pharmacy and thus intentionally attempts to attract Internet users for commercial gain and creates likelihood of confusion with the Complainant’s trademark. Linking to online pharmacies also leads Internet users to believe that Plavix medicine is available in many countries without prescription, whereas Plavix medicine can only be obtained with medical prescription. This may potentially be harmful to Internet users who manage to acquire online medicines without consultation from a doctor. This may seriously harm the goodwill that is associated with the PLAVIX trademark as Internet users may believe that they are dealing with the Complainant.

B. The Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has registered the PLAVIX trademark in a number of jurisdictions. The Complainant submits that the disputed domain name is identical or confusingly similar to their trademarks, as the disputed domain name incorporates the PLAVIX trademark in its entirety. As the word “plavix” has no meaning in the English language, the Panel finds the Complainant’s PLAVIX trademark to be highly distinctive.

In relation to the incorporation in the disputed domain name of a generic word “buy”, the Panel finds that the inclusion of a generic element together with a trademark cannot contribute to distinguishing the disputed domain name from a registered trademark where such domain name incorporates a distinctive trademark. The Panel finds that the addition of the merely generic and descriptive element “buy” in the disputed domain name does not avoid a finding of confusing similarity in this case. Indeed, the inclusion of such terms in the disputed domain name may increase the risk of confusion for the Internet users taking into account that the Respondent is using the disputed domain name to link to websites that are offering medicines, including generic ones and those of the Complainant’s competitors.

It is clear in the Panel’s view that in the mind of an Internet user, the disputed domain name could be directly associated with the Complainant’s trademark, which is likely to be confusing to the public as suggesting either an operation of the Complainant or one associated with or endorsed by it (See AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327).

In any event, the Panel finds that due to incorporation of a merely generic and descriptive word “buy” the disputed domain name <buyplavix.biz> is confusingly similar to the Complainant’s trademark PLAVIX.

The Panel finds that the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.

Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainant’s assertions, the Panel will need to consider whether the Respondent’s use of the disputed domain name would indicate the Respondent’s rights or legitimate interests in the domain name.

According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:

(i) the respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; 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 complainant’s marks.

A respondent may elect to show rights and legitimate interests, non-exhaustively, by producing proof under paragraphs 4(c)(i)-(iii) of the Policy.

By not responding to the Complainant’s contentions, the Respondent in this proceeding has not attempted to demonstrate its rights and legitimate interests.

The Panel further notes that, there is no evidence that before any notice of the dispute with the Complainant, the Respondent was using the disputed domain name for a bona fide offering of goods and services.

According to the documents submitted by the Complainant the disputed domain name links to websites that are in the business of offering for sale various medicines, including those that are in direct competition with the Complainant’s products under the PLAVIX trademark, PLAVIX products as well as “generic Plavix” products. This, in the Panel’s view, cannot constitute a bona fide offering of goods and services in the circumstances of this case, so there is no evidence that the Respondent is able to show rights or legitimate interests in respect of the disputed domain name under paragraph 4(c)(i) of the Policy.

As to paragraph 4(c)(ii) of the Policy, there is no evidence that the Respondent has been commonly known by the disputed domain name.

The Panel recalls that the disputed domain name was registered on November 3, 2009. The Complainant asserts that the product under the PLAVIX trademark has been commercialized since 1998 and that the product is widely known by the PLAVIX trademark, which is recognized across the world and is registered in various jurisdictions.

Therefore as the disputed domain name has been registered more than 10 years after the commercialization of the Complainant’s product under the PLAVIX trademark, it is highly unlikely that the Respondent has been commonly known by the disputed domain name as provided in paragraph 4(c)(ii) of the Policy.

It is the Panel’s view, on the present facts, that the Respondent most likely registered the disputed domain name with full awareness of the Complainant’s trademarks as well as the goodwill associated with them.

There is further evidence that the Respondent is possibly making commercial use from the disputed domain name (by linking to other websites that offer medicines for sale). The Respondent is using the disputed domain name to further misleadingly divert customers to other websites that are not associated with the Complainant. Therefore paragraph 4(c)(iii) of the Policy does not apply.

The Panel finds the Complainant has satisfied its burden of proof and has shown that the Respondent has no rights or legitimate interests in the disputed domain name.¹

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a respondent has registered and is using a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or has 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 the complainant’s, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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.

The Complainant contends that the Respondent has violated the bad faith provision of the Policy because the disputed domain name is used in connection with the sale of other medicines via a website, including those that are direct competitors to the product of the Complainant associated with the PLAVIX trademark, PLAVIX products, as well as the “generic Plavix” products. The Complainant further contends that the disputed domain name was registered and used primarily for the purpose of confusing and misleading the public as to the affiliation of the disputed domain name as well as associated websites with the trademark of the Complainant.

The Panel finds that the Respondent’s use of the disputed domain name has created a risk of confusion with the Complainant’s products and trademarks as to the source, sponsorship, affiliation or endorsement of the disputed domain name and websites associated with it.

The Panel finds that the Complainant has presented evidence that the Respondent was and is in violation of the provisions of paragraph 4(b)(iv) of the Policy in respect of the disputed domain name.

The Panel holds that the Respondent has registered the disputed domain name in bad faith. Under the circumstances, the Respondent must have known about the Complainant’s products and should have been aware of the trademarks of the Complainant. The Panel is not aware of the Respondent conducting any legitimate business activity using the disputed domain name. These findings, together with the finding that the Respondent has no rights or legitimate interests in the disputed domain name, lead the Panel to conclude that the disputed domain name was registered by the Respondent in bad faith.

The Panel also draws inferences of bad faith from the lack of any response from the Respondent to the Complaint.

Further inference of bad faith is drawn from the fact that the disputed domain name implies that Plavix products can be obtained without prescription and that there are “generic Plavix” products that can be ordered online and used without medical supervision. As the Plavix product is a very strong medicine that should be used under medical supervision, the implication that it can be obtained without prescription is a serious public health risk. These implications may tarnish the reputation and goodwill of the Complainant and are a further indication of bad faith registration and use on the part of the Respondent.

The Panel finds the Complainant has shown that the Respondent registered and used the disputed domain name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <buyplavix.biz>, be cancelled.

Irina v. Savelieva
Sole Panelist
Dated: November 7, 2010

¹ However, the Panel would like to note that it does not accept the Complainant’s argument that the Respondent has no legitimate interest in the disputed domain name due to the fact that the Respondent registered the disputed domain name to prevent the Complainant from reflecting the PLAVIX trademark in the corresponding domain name. This is based on the fact that the Complainant has asked for the disputed domain name to be cancelled rather than transferred. This indicates to the Panel that the Complainant is not actually interested in reflecting the PLAVIX trademark in the disputed domain name (and thus was not actually prevented from doing so by the Respondent) and for that reason this argument cannot be accepted by this Panel.