WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi-Aventis v. Andrey Volkovich

Case No. D2010-1230

1. The Parties

The Complainant is Sanofi-Aventis of Paris, France, represented by Selarl Marchais De Candé, France.

The Respondent is Andrey Volkovich of Minsk, Belarus.

2. The Domain Names and Registrar

The disputed domain names <canadianplavix.com>, <plavixcanada.net>, <plavixnoprescription.net>, <plavixwithoutprescription.net> are registered with Center of Ukrainian Internet Names (UKRNAMES).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2010. On July 26, 2010, the Center transmitted by email to Center of Ukrainian Internet Names (UKRNAMES) a request for registrar verification in connection with the disputed domain names. On August 6, 2010, Center of Ukrainian Internet Names (UKRNAMES) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The registrar also indicated that the language of the registration agreements for the disputed domain names was Russian.

The Center notified the Complainant that as the language of the registration agreements for the disputed domain names was Russian, the Complainant would need to either provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; submit the Complaint translated into Russian; or submit a request for English to be the language of the administrative proceeding. The Complainant submitted the Complaint translated into Russian on August 20, 2010.

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 August 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 14, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2010.

The Center appointed Irina V. Savelieva as the sole panelist in this matter on September 29, 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 29.3 billion and Research and Development expenditure of EURO 4.6 billion in 2009. The company is settled 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 the reduction of recurrence after ischemic cerebrovascular disorder. PLAVIX has been commercialized since 1998, first in the USA and then in Germany and England. It is now available in more that 115 countries.

The Complainant is the owner of the following trademarks:

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

PLAVIX UK trademark No. 2068394 registered on December 19, 1997;

PLAVIX Hong Kong trademark No. 200009525 registered on July 30, 1998;

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

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

PLAVIX Community trademark No. 002 236 578 registered on April 18, 2002;

PLAVIX Japan trademark No. 4170873 registered on July 24, 1998.

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

The Respondent has registered the disputed domain name <canadianplavix.com> on February 3, 2010 and the disputed domain names <plavixcanada.net>, <plavixnoprescription.net> and <plavixwithoutprescription.net> on January 17, 2010.

5. Parties’ Contentions

A. Complainant

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

- The disputed domain names reproduce entirely the PLAVIX trademark, which itself has no particular meaning and is therefore highly distinctive.

- The reproduction of the Complainant’s trademark in its entirety as the dominant part of the disputed domain names makes the disputed domain names confusingly similar to that trademark regardless of the additional elements incorporated in the disputed domain names. The only distinctive part in the disputed domain names is the corresponding PLAVIX trademark owned by the Complainant.

- The disputed domain names <canadianplavix.com> and <plavixcanada.net> incorporate geographic indicators, which are not sufficient to escape the finding of confusing similarity and do not change the overall impression that these domain names are connected with the Complainant. It is possible that these were created in order to give the public the impression that the products under PLAVIX trademark come from Canada.

- The disputed domain names <plavixnoprescription.net> and <plavixwithoutprescription.net> are composed of the Complainant’s trademark PLAVIX and generic words. This does not change the overall impression that these disputed domain names are connected with the Complainant. The use of generic and descriptive terms in conjunction with the Complainant’s trademark does not mean that the disputed domain names are not confusingly similar as the generic terms lack in distinctiveness.

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

The Complainant has not granted the Respondent a license or other authorization to use its trademark in relation to the disputed domain names.

The Respondent is not using the disputed domain names in relation with any bona fide offering of goods and services. The Respondent is not itself a genuine reseller of the Complainant’s products. The Respondent uses the disputed domain names to link to websites where products of the Complainant’s competitors are being sold.

The Respondent is not making legitimate noncommercial or fair use of the disputed domain names but is using them to obtain commercial gain by misleadingly diverting consumers from the Complainant’s websites to those that promote products of the Complainant’s competitors.

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

There is no doubt that the disputed domain names were registered with the Complainant’s product in mind as they incorporate the Complainant’s PLAVIX trademark. The disputed domain names link to an online pharmacy where equivalent products are offered for sale, as well as information provided on Plavix product. It is highly likely that the Respondent was aware of the Complainant’s position on the pharmaceuticals market and the PLAVIX trademark of the Complainant. The Respondent knew or should have known of the registration and use of the trademark before registering the disputed domain names and this constitutes registering the disputed domain names in bad faith.

The disputed domain names link to an online pharmacy, which offers for sale various medicines, in particular those that are competing with Plavix product. This indicates that the Respondent has registered the disputed domain names in order to take advantage of the confusing similarity between the disputed domain names and the Complainant’s trademark in order to benefit from goodwill associated with the PLAVIX trademark and constitutes evidence of bad faith registration and use on behalf of the Respondent.

The Complainant also sent the Respondent a cease and desist letter on June 23, 2010 requesting immediate transfer of the disputed domain names. However the Respondent did not reply. The Respondent’s lack of reply reinforces the inference of bad faith.

It should be further noted that Plavix is a powerful medicine that should be obtained under prescription only and used under medical control. The fact that some of the disputed domain names indicate that this medicine can be obtained without prescription is dangerous for public health and damaging to the reputation of the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Language of the Proceedings

The language of the registration agreements associated with the disputed domain names is Russian. The Complainant has also provided a translation of the Complaint into Russian from the original Complaint in English. The Respondent has not responded in any way to the Complaint.

In the Complaint the Complainant requests for English to be the language of the administrative proceedings. This is due to the disputed domain names containing English words and being associated with websites that are in English. The Complainant also ascertains that the Respondent is familiar with the English language.

While the Complainant has not provided any further grounds for why English should be the language of the administrative proceedings and instead provided a copy of the Complaint translated into Russian, the Panel notes the request for English to be the language of the administrative proceedings in the Complaint. The Panel further notes that the Respondent has not filed any Response to the Complaint in either language.

The Panel finds that English should be the language of the administrative proceedings. The Panel finds that the Respondent being properly notified about the proceedings was given an opportunity to present his position on the matter of the language of the administrative proceedings, however, the Respondent had not communicated any response. Taking into account that the Respondent did not file any Response and that the Complaint was originally submitted in English (and in Russian), the Panel finds it appropriate to conduct these proceedings in English in order to minimize any possible costs associated with the proceedings and to ensure that the proceedings are conducted in an efficient and timely manner.

B. Identical or Confusingly Similar

The Complainant has registered the PLAVIX trademark in a number of jurisdictions. The Complainant submits that the disputed domain names are identical or confusingly similar to their trademarks as the disputed domain names incorporate 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 disputed domain names <canadianplavix.com> and <plavixcanada.net> the Panel finds that it is insufficient to dispel user confusion by simply appending a country's name or other well known geographic indicator to the trademark of the Complainant. In fact it may lead to further confusion on the part of the user as this indicates a well-known practice for naming of country specific domain names in the gTLD area. Therefore this creates an impression with the user that these disputed domain names are in fact the domain names for the country specific websites for the Complainant’s product.

No doubt that the intention of the Respondent was to create confusion in the minds of Internet users by incorporating the Complainant's trademark together with the geographic indicator.

The Panel also refers to AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553 where the Panel found confusing similarity to the AT&T trademark by domain names formed by including a geographic descriptor following the term “att”.

For the above reasons the Panel finds that the geographic indicator in the disputed domain names <canadianplavix.com> and <plavixcanada.net> is not a sufficient way for the Respondent to differentiate the disputed domain names from the Complainant's trademark PLAVIX.

In relation to the disputed domain names <plavixnoprescription.net> and <plavixwithoutprescription.net> the Panel finds that the inclusion of a generic element after a trademark cannot contribute to distinguishing the disputed domain names from a registered trademark where such domain names incorporates a distinctive trademark. The Panel finds that the addition of the merely descriptive “nonprescription” and “withoutprescription” elements in these disputed domain names does not avoid a finding of confusing similarity in this case. Indeed, the inclusion of such terms in these disputed domain names may increase the risk of confusion for the Internet users taking into account that the Respondent is using the disputed domain names to link to websites that are offering other medicines, including those of the Complainant’s competitors.

It is clear in the Panel’s view that in the mind of an Internet user, these disputed domain names 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 the disputed domain names <plavixnoprescription.net> and <plavixwithoutprescription.net> to be 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.

C. Rights or Legitimate Interests

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

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 names would indicate the Respondent’s rights or legitimate interests in the domain names.

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) 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) 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) 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 names for a bona fide offering of goods and services.

According to the documents submitted by the Complainant the disputed domain names link 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. 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 names 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 names.

The Panel recalls that the Respondent registered the disputed domain name <canadianplavix.com> on February 3, 2010 and the disputed domain names <plavixcanada.net>, <plavixnoprescription.net> and <plavixwithoutprescription.net> on January 17, 2010. 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 names have 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 names as provided in paragraph 4(c)(ii) of the Policy. Further there is no evidence of the Respondent being commonly known by the disputed domain names as the domain names are being used to link to websites that do not feature the disputed domain names in any form.

It is the Panel’s view, on the present facts, that the Respondent most likely registered the disputed domain names 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 names (by linking to other websites that offer medicines for sale). The Respondent is using the disputed domain names to further misleadingly divertcustomers 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 carried out its burden of proof to show that the Respondent has no rights or legitimate interests in the disputed domain names.

D. 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 Complainants who is the owner of the trademark or service mark or to a competitor of the Complainants, 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 Complainants’ 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 names are used in connection with selling other medicines via a website, including those that are direct competitors to the product of the Complainant associated with the PLAVIX trademark. The Complainant further contends that the disputed domain names were registered and used primarily for the purpose of confusing the public and misleading the public as to the affiliation of the disputed domain names as well as websites associated with them with the trademark of the Complainant.

The Panel finds that the Respondent's use of the disputed domain names 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 names and websites associated with them.

The Panel finds that the Complainants 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 names.

The Panel holds that the Respondent has registered the disputed domain names in bad faith. In the circumstances, the Respondent must have known the Complainant’s products and should have been aware of the trademark of the Complainant. The Panel is not aware of the Respondent conducting any legitimate business activity using the disputed domain names. These findings, together with the finding that the Respondent has no rights or legitimate interests in the domain names, lead the Panel to conclude that the disputed domain names have been 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 two of the disputed domain names imply that Plavix products can be obtained without prescription. As the Plavix product is a very strong medicine that should be used under medical supervision, implying that it can be obtained without prescription is a serious public health risk. This implication may also tarnish the reputation and goodwill of the Complainant and is a further indication of bad faith registration and use on part of the Respondent.

The Panel finds the Complainant has shown that the Respondent registered and used the disputed domain names 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 names, <canadianplavix.com>, <plavixcanada.net>, <plavixnoprescription.net>, <plavixwithoutprescription.net> be cancelled.

Irina V. Savelieva
Sole Panelist
Dated: October 28, 2010