WIPO Domain Name Decision D2019-0168 for genericplavix.com
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Sanofi v. Alla Landau Case No. D2019-0168 1. The Parties
The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Alla Landau of Rostov, the Russian Federation. 2. The Domain Name and Registrar(s)
The disputed 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 January 24, 2019. On January 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 25, 2019, 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 the same date 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 the same date.
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 February 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 27, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2019.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on March 8, 2019. 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 one of the world’s largest pharmaceutical companies, developing, manufacturing, distributing and selling a wide variety of pharmaceutical products, including Plavix, one of the two leading drugs for the treatment of thrombosis, indicated for the reduction of recurrence after ischemic cerebrovascular disorder.
PLAVIX has been commercialized by the Complainant since 1998, in the United States of America, and is currently available in more than 100 countries.
The Complainant registered PLAVIX trademark in multiple jurisdictions throughout the world, since at least 1993 (date of registration in France).
The Complainant also owns and operates several domain names incorporating its PLAVIX mark, such as (registered in 1998), (registered in 1999) and (registered in 2018).
The disputed domain name was registered by the Respondent on December 21, 2018.
The Panel accessed the disputed domain name on March 16, 2019, which resolved to a page comparing different online drugstores prices and offering Plavix medicines for sale. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. Firstly, the disputed domain name entirely reproduces, as the dominant component, the PLAVIX trademarks, which, as themselves, do not have any particular meaning and are therefore highly distinctive. Secondly, the Complainant is a multinational company in the pharmaceutical field which develops, manufactures, distributes and sells a wide variety of pharmaceutical products under the trademark and trade name PLAVIX. It has used its PLAVIX trademark and trade name for over 15 years and invested substantial financial resources over the years to advertise and promote the company and its PLAVIX-branded pharmaceutical products in countries all over the world, including in the Russian Federation. Thirdly, the reproduction of the Complainant’s trademarks as the dominant part of the disputed domain name is confusingly similar to prior above cited trademarks, regardless of the adjunction of (i) the descriptive term “generic”, which is purely descriptive in combination with the PLAVIX trademarks, within the frame of the Complainant’s activities; and (ii) the generic Top-Level Domain (“gTLD”) extension . It is well established that the gTLD designation used as part of a domain name should be disregarded as it does not serve to distinguish domain names. The relevant comparison to be made is with the second level portion of the disputed domain name. It is also well-established that where a domain name wholly incorporates a complainant’s well-known and distinctive trademarks in its entirety, it is confusingly similar to that mark despite the addition of a word or, in this case, of descriptive terms. At first, the addition of the descriptive term “generic” to a trademark does not prevent the disputed domain name from being confusingly similar to the trademark, considering that this term is widely and commonly used within the course of online trade. It can only be found that the Respondent selected the disputed domain name in a specific attempt of free-riding on the coat tails of the fame of the Complainant’s PLAVIX trademarks, regardless of the adding of the descriptive term “generic”. Finally, it must be taken into account that the likelihood of confusion is ascertained by the reputation of the Complainant’s trade name, trademarks, domain names and more generally speaking goodwill.
- The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has neither prior rights nor legitimate interests to justify the use of the already well-known and worldwide famous trademarks and domain names of the Complainant. Secondly, the name indicated on the WhoIs Database as the registrant of the disputed domain name is not the real registrant. Consequently, the Respondent has no prior rights and/or legitimate interests to justify the use of the Complainant’s trademarks and domain names. Thirdly, the Complainant has never licensed or otherwise authorized the Respondent to use its trademarks or to register any domain name including the above-mentioned trademarks. Consequently, there is no relationship whatsoever between the parties and the Respondent has clearly modified the Complainant’s trademarks for its own use and incorporated them into the disputed domain name without the Complainant’s authorization. Fourthly, the Respondent has not made fair use of the disputed domain name – without a voluntary intent for commercial gain to misleadingly divert consumers or to tarnish the well-known PLAVIX trademarks at issue – so as to confer a right or legitimate interest in it in accordance with paragraph 4(c)(i) of the Policy, given that the website linked to the disputed domain is clearly used as a bait and switch. The disputed domain name is used by the Respondent to redirect Internet users to a website offering products in the pharmaceutical field - and supposedly Plavix products –, by illegally riding on the Complainant’s goodwill and reputation. Furthermore, the website at the disputed domain name displays the product PLAVIX along with false, inaccurate and mi