WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis v. Dean Gagnon
Case No. D2007-1682
1. The Parties
The Complainant is Sanofi-Aventis, Paris, France, represented by Bird & Bird Solicitors, France.
The Respondent is Dean Gagnon, Calgary, Alberta, Canada.
2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2007. On November 16, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On November 26, 2007, Moniker Online Services, LLC 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”), 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 November 29, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2007.
The Center appointed William F. Hamilton as the sole panelist in this matter on January 16, 2008. 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
There are no contested facts as the Respondent did not respond to the Complaint.
The Panel thus accepts the factual reasonable contentions of the Complaint as set forth below which are established by reference to the Exhibits to the Complaint.
The Panel notes that the first of the Complainant’s PLAVIX trademark was registered on December 20, 1993.
The disputed domain name was registered by the Respondent on June 19, 2007.
5. Parties’ Contentions
A. Complainant
The Complainant asserts the following:
“Plavix” is a product manufactured by the Complainant and is indicated for the prevention of ischemic events caused by atherothrombosis.
Plavix is one of the world’s 10 leading medicines, and to date, over 41 million patients throughout the world have been treated with Plavix.
Plavix is indicated for the prevention of atherothrombosis-related cardiovascular events in patients with a history of recent myocardial infraction, acute coronary syndrome, recent stroke or established peripheral arterial disease.
Plavix is currently the only medicine indicated for the secondary prevention of atherothrombosis regardless of the location of the primary arterial damage.
Plavix has been commercialized since 1998, first in the United States of America. Plavix is now available in more than 80 countries, including Canada, Turkey, Greece, Belgium, Portugal, Hungary, France, Republic of Korea, India, China, Australia, New Zealand, Mexico, and Brazil.
The Complainant owns a large number of PLAVIX trademarks in many countries, including the United States of America, all of which were registered prior to the Respondent’s contested domain name .
The Complainant and its affiliates registered numerous domain names worldwide containing the PLAVIX trademark, such as , , and .
The Respondent is not licensed to use the PLAVIX trademark. The Complainant has not engaged in business with the Respondent nor authorized the Respondent to use the PLAVIX trademark.
The domain name is confusingly similar to Complainant’s registered trademark. The Respondent has no right or interest in the contested domain name and registered the domain name in bad faith for commercial gain.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the domain name is identical or confusingly similar to the Complainant’s trademarks or service marks; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Complainant must carry its burden of proof by a preponderance of evidence. See Bootie Brewing Company v. Ward and Grabebootie Inc.,WIPO Case No. D2003-0185 (May 28, 2003).
A. Identical or Confusingly Similar
The Complaint has indisputable rights in the highly distinctive PLAVIX trademark.
The only question is whether the addition of the dictionary word “about” before the “Plavix” word in the contested domain name renders it confusingly similar to the PLAVIX trademark. Two WIPO panels have specifically addressed this question. In Lilly ICOS LLC v. Levan Odilavadze, WIPO Case No. D2005-1140, the panel ordered the transfer of the domain name . In Hoffmann-La Roche AG v. Dean Gagnon,WIPO Case No. D2007-1009, the panel ordered that the domain names and be transferred to the complainant. This Panel endorses this established WIPO jurisprudence.
According, the Panel finds that the Complainant has established that the contested domain name is confusingly similar to Complainant’s trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out in particular but without limitation three circumstances which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii), namely:
(i) before any notice of the dispute to the Respondent, the Respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not attempted to demonstrate any rights or legitimate interests in the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions No. 4.6.
There is no evidence that the Respondent uses the domain name in connection with a bona fide offering of goods or services. The contested domain name resolves to a parking web site. Without more, this does not of itself establish a right or legitimate interest.
Furthermore, there is no apparent license, consent or other right by which the Respondent would have been entitled to register or use the domain name incorporating the Complainant’s PLAVIX trademark.
The Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.
It is apparent that the Respondent, who has no legitimate interests in respect of the domain name , has registered this domain name with an intention of attracting consumers for commercial gain by creating a likelihood of confusion. See Hoffmann-La Roche AG v. Dean Gagnon,WIPO Case No. D2007-1009. Nor is there any doubt in the Panel’s mind that the Respondent was aware of the PLAVIX trademark when registering the contested domain name. Indeed, the conclusion is unavoidable that the Respondent registered the disputed domain name because of its knowledge of PLAVIX.
Indeed, this would appear to be the Respondent’s third effort to take commercial advantage of an established pharmaceutical trademark by registering a confusingly similar domain name through the transparent artifice of placing the dictionary word “about” before the well-known trademark.
The Panel finds that the conduct of the Respondent in registering and using is in bad faith and a violation of 4(b)(iv) of the Policy. See Lilly ICOS LLC v. Levan Odilavadze,WIPO Case No. D2005-1140 and Hoffmann-La Roche AG v. Dean Gagnon,WIPO Case No. D2007-1009.
7. Decision
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
William F. Hamilton
Sole Panelist
Dated: January 28, 2008
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