WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis v. MC EU
Case No. D2006-0403
1. The Parties
The Complainant is Sanofi-Aventis, Paris, France, represented by Isabelle Leroux, France.
The Respondent is MC EU, Hyogo, Japan.
2. The Domain Name and Registrar
The disputed domain name is registered with Go Daddy Software, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2006. On March 31, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On March 31, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 April 4, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April�24,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25, 2006.
The Center appointed Amund Grimstad as the sole panelist in this matter on May�12,�2006. 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 and its group of companies is the third largest pharmaceutical company in the world and the largest in Europe. The name of the parent company is Sanofi-Aventis. It has established presence in more than 100 countries around the globe. The Complainant is also present in Japan, being the 13th largest actor within the Japanese market for pharmaceuticals.
The Complainant manufactures and sells a number of well known drugs, with eight flagship products. Amongst the flagship products is Plavix. Plavix is a medicine indicated for the prevention of ischemic events caused by atherothrombosis.
Plavix was commercialized in 1998 in the United States. Today, the product is sold in more than 65 countries. Plavix is the Complainant’s best selling product in the US.
Plavix is presently not on sale in Japan, but the Complainant is waiting for a price listing from the Japanese Health Insurance. It was announced in January 24, 2006, that Plavix has been approved for marketing in Japan.
The Complainant has registered a large number of national, Community and International trademarks reflecting the term “PLAVIX”. The Complainant owns the United States trademark registration no. 2,042,583. Furthermore, the Complainant has registered the trademark PLAVIX as a Community trademark in the European Union (EU no. 002236578). The Complainant has registered the trademark PLAVIX in Japan.
The Complainant has registered and has used a number of domain names containing the trademark PLAVIX, among which are the following domain names: , and .
5. Parties’ Contentions
A. Complainant
The Respondent’s domain name is confusingly similar to the PLAVIX trademark.
The Respondent’s domain name consists of the Complainant’s trademark with the addition of the word “medication” and the gTLD “.com”. The trademark PLAVIX is the distinctive element of the Respondent’s domain name. The additions are not sufficient to avoid the finding of similarity.
The Complainant further states that the Respondent should be considered as having no right or legitimate interest in respect of the domain name . The Complainant has rights in the trademark PLAVIX, which precede the Respondent’s registration of the domain name.
The Complainant argues that the Respondent has failed to show any legitimate interest in the use of the disputed domain name and that the Respondent is not using the domain name for a bona fide offering of goods or services. The domain name was registered shortly after it was announced that the Complainant’s product was given marketing permission in Japan. The domain name is not in use.
The Complainant has not authorized the Respondent to use the Complainant’s trademark PLAVIX in a domain name or otherwise.
The Complainant argues that the disputed domain name has been registered in bad faith. The Complainant requests as remedy the transfer of the disputed domain name to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain name transferred to it, the Complainant must prove the following (the Policy, paragraph 4(a)(i-iii)):
- The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
In order for the Complainant to successfully argue that the domain name should be transferred to the Complainant, the domain name must be identical or confusingly similar to a trademark or service mark in which the Complainant has rights. (Policy, paragraph 4(a)(i)).
The domain name contains the PLAVIX trademark, thereby creating a similarity to this trademark.
The domain name of the Respondent consists of the trademark of the Complainant PLAVIX and the addition of the word “medication”. The word “medication” is a generic word describing the goods sold by the Complainant under the trademark PLAVIX. The mere addition of common terms such as “medication”, to a mark, does not change the overall impression of the designations as being domain names connected to the mark, see for example Asia Pacific Breweries Limited v. Chris Kwan, WIPO Case No. D2003-0920, Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020.
The problems relating to use of the generic word “medication” has been found by several panels to be insufficient to negate confusing similarity between domains and complainants’ trademarks, see for example Hoffmann-La Roche Inc. v. Eric Kaiser a/k/a eDrugNet, WIPO Case No. 2003-0721.
The gTLD “.com” is not relevant in assessing whether the domain name is confusingly similar to the Complainant’s trademark.
The use of the trademark in the domain name is likely to create confusion amongst Internet users as to whether the web site to which the domain name resolves is endorsed by or affiliated in some way with the Complainant.
The first requirement of the Policy has therefore been fulfilled.
B. Rights or Legitimate Interests
Secondly, the Complainant must show that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)).
In the present case the Respondent does not use the domain name. Therefore there is no evidence that the Respondent has used the domain for a bona fide offering of goods or services.
The Complainant has not authorized the Respondent to use the Complainant’s trademark PLAVIX in a domain name or otherwise.
Based on the record and in the absence of submissions from the Respondent, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Finally, the Complainant must show that the domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
The Complainant’s product and trademark are famous. The domain name was registered just after it had been announced that the Complainant’s product was given marketing permission in Japan. It is likely that the Respondent was aware of the trademark of the Complainant, its reputation in the pharmaceutical industry, and its products and its trademarks, when the Respondent registered the domain name.
The Panel agrees with the decision rendered in Veuve Clicquot Ponsardin, Maison Fond�e en 1772 v. The Polygenix Group Co,. WIPO Case No. D2000-0163, in which it was established that bad faith may be present where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”.
The Respondent has owned the domain name registration since February 1, 2005, without using it by creating a web-site, and continues to retain it. Several panels have held that, under appropriate circumstances, passive holding evidences bad faith use. Reference is made to Pfizer Inc. v. Order Viagra Online, WIPO Case No. D2002-0366 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The use of the trademark PLAVIX with the addition of the word “medication” suggests that the Respondent is deliberately trying to free ride on the goodwill of the Complainant. This leads the Panel to conclude that the domain name was registered and is being used in bad faith.
The third requirement of the Policy has therefore been fulfilled.
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 be transferred to the Complainant.
Amund Grimstad
Sole Panelist
Dated: May 24, 2006
Full & Egal Universal Law Academy