WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Sanofi-Aventis v. Sven Barthel Case No. D2009-1305 1. The Parties
The Complainant is Sanofi-Aventis, of France, represented by Bird & Bird, France.
The Respondent is Sven Barthel, of Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with Cronon AG Berlin, Niederlassung Regensburg. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2009. On October 2, 2009, the Center transmitted by email to Cronon AG Berlin, Niederlassung Regensburg, a request for registrar verification in connection with the disputed domain name. On October 7, 2009, Cronon AG Berlin, Niederlassung Regensburg, 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 November 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 26, 2009. A letter in response was filed with the Center on November 16, 2009. It was written in German language only. On December 2, 2009, the Center informed the Complainant about its decision to accept the Complaint in English language and to accept a Response in either German or English, to appoint a Panel familiar with both languages, if available, and to allow the Panel to make the decision as to the correct language of the proceeding and to write, at its discretion, a decision in either language.
The Center appointed Gunnar Karnell as the sole panelist in this matter on December 2, 2009. 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.
Paragraph 11 of the Rules contains directions about the language of proceedings. Having received information from the concerned registrar that the language of registration of the disputed domain name is German, the Center had issued, already on October 20, 2009, specific instructions to the Parties about the choice of language for the administrative proceedings. The Complainant requested that English be the language used. The Panel has noted that the Respondent was served by the Center with all relevant administrative communications preceding its letter in response as well as afterwards in both English and German language. The Respondent has not indicated any language preference. The Panel concludes from the correspondence between the Complainant and the Respondent preceding the Complaint (appendix 11 to the Complaint) that the Respondent has sufficient command of English for it to be the language of the proceedings. Also, the German language used by the Respondent in the text of its letter in response has not caused any comment or demand for translation by the Complainant.
The Panel decides, taken into account paragraph 11 of the Rules, and with regard to the particular circumstances of the administrative proceeding, that English shall be the language used.
The Panel must also decide whether to pay regard or not to the content of the letter in response, as mentioned here above. It was addressed to the Case Manager of the Center and filed there on November 16, 2009. Contrary to paragraph 5 (b) of the Rules, the text of the letter in response was provided in hard copy only and also in other respects it does not meet the requirements stated in that paragraph. In particular, the document is not addressed to the Center but drafted as a person to person letter from the Respondent to the WIPO Case Manager. It does not contain a statement as required under (b) (iii) of the paragraph. The Respondent would have had another ten days to enter a formally appropriate Response in due time.
Paragraph 14(b) of the Rules empowers the Panel to draw such inferences of deficiencies as it considers appropriate. Hence, having regard in particular to paragraph 10(a) and (b) as well as paragraph 15(a) of the Rules, and noting the urgency that the Rules must not, by laxity in their application, fall in disrespect to the detriment both of parties involved and of the expediency of the administrative system for dispute resolution, the Panel does not accept the document that here above has been named the “letter in response” as a valid Response for the present proceedings. 4. Factual Background
The domain name was created on November 3, 2008.
The Complainant owns a great number of PLAVIX trade marks, registered world wide before that date for a great variety of countries (e.g. U S A, Japan, Australia, UK, Sweden, O.A.P.I., Argentina, Columbia, Canada). Most registrations date back to the 1990s. PLAVIX is also contained in numerous domain names for the Complainant and its affiliates.
LIPITOR is a trade mark owned by Pfizer, one of the Complainant's competitors. The product Lipitor is used for a medicine aiming at lowering bad cholesterol.
The Complainant is a multinational company present in more than 100 countries across 5 continents. It employs approximately 100.000 people worldwide. Its sales force counts about 35.000; its research staff more than 17.000. Its name goes back to August 2004, when it became the number 1 pharmaceutical group in Europe as well as in Brazil, Russia, India, China and Mexico. Since then the Complainant, as parent company, holds the brand heritage of its constituent companies. Consolidated net sales amounted in 2008 in its core business to € 28 billion. Its R&D expenditure was then € 4.537 billion. The group benefits from a large portfolio of high-growth drugs, among them Plavix, being one of its best selling ones. In Germany it is marketed through a subsidiary, Sanofi-Aventis Germany, with 8.000 employees in Frankfurt and 1.800 in Berlin. It is a major player on the pharmaceutical market in Germany, where the Respondent is located.
Plavix is manufactured by the Complainant. It is indicated for the prevention of ischemic events caused by atherothrombosis. It was commercialized since 1998, first in the United States of America, and it is now available in more than 115 countries, Germany included. More than 41 million patients throughout the world have been treated with Plavix.
The Complainant has requested that the domain name be cancelled.
Under the provisions of paragraph 4 (a) of the Policy the burden of proof for approval to the request is upon the Complainant to show that each of the following three elements are present:
(i) the Respondent's domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) the Respondent's domain name has been registered and is being used in bad faith.
The numbering 1 – 3 in the following summary of the Complainant's contentions as well as the letter notation A – C below under “6. Discussion and Findings” relate respectively to the elements (i) – (iii). 5. Parties' Contentions A. Complainant
The Complainant has already filed numerous Complaints at the Center because of registrations infringing its PLAVIX trade mark, such as , , and , now all transferred to the Complainant.
1) The domain name is confusingly similar to the trade mark PLAVIX in which the Complainant has rights.
The addition of the word “lipitor” to the Complainant's trade mark PLAVIX does not eliminate the confusing similarity, because the added word does not distinguish the owner of the disputed domain name from the Complainant. The added word “lipitor”, a protected word mark applied to identical goods, together with “plavix” refers back to the Complainant, suggesting an association with the owner of the LIPITOR trade mark that the Complainant denies. It reinforces the risk of confusion between the disputed domain name and the Complainant's trade mark. Consumers will think that the domain name has a connection with the Complainant.
2) The Respondent has no right or legitimate interest in the domain name .
The Respondent uses its website to provide sponsored links towards online pharmacies and to host advertisements for on line pharmacies, promoting a large number of pharmaceutical products or services which compete with the products of the Complainant. Lipitor is one of those, a similar medicine marketed by Pfizer. The domain name is used in particular to promote goods that directly compete with the Complainant's, doing nothing to disclaim any relationship with the Complainant or that the website might belong to the Complainant. The Respondent has not become entitled by Complainant to register or use the domain name incorporating the PLAVIX trade mark. There is no doubt that the Respondent is aware that PLAVIX corresponds to a medical product and trademark.
3) The domain name has been registered and is being used in bad faith.
The Respondent does not use the domain name in connection with any bona fide offering of goods or services. He has not possibly ignored that Plavix is one of the world's leading medicines and that it connects to Complainant's trade mark. He has registered the domain name knowingly to prevent the Complainant from reflecting its trade mark in a corresponding domain name, seeking to disrupt the Complainant's business. On the contentious website, he proposes links to competing products or links to portal or pharmacy online websites. An Internet user who tries to connect to the Respondent's website will believe that it is an official website of the Complainant offering Plavix. In reply to a cease and desist letter from the Complainant to the Respondent informing the latter of its infringement of prior intellectual property rights, the Respondent required financial compensation for the transfer of the domain name. B. Respondent
The Panel has established that there has been no valid response to the Complaint. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has by registration acquired trade mark rights in PLAVIX.
Lipitor and Plavix are competing products on the market, identifiable by their names, equaling their trade marks. Both trademarks appear distinctly as such in the form of the domain name . The result of bringing them together in the domain name must certainly have been known by the Respondent to confuse the public about the relation between the products and /or the owners of the respective trade mark. Both owners may now be seen to have a right not to find their trade marks used against their will for such a combination made by a third party for its profit. The combination is apt to bring to the mind of consumers that products, named together in the domain name, have the same source or that they are in other respects commercially connected. Depending on circumstances, one consumer may be attracted by one of the two combined trade marks in the domain name, another consumer by the other, each so as to rely upon its preference for or knowledge about one of the specifically trade marked products. The risk for confusion between their commercial origins as determined by the trade marks because of their combination is evident. In line with earlier decisions by WIPO Panels (Lilly Icos Llc v. Tudor Burden, Burden Marketing,WIPO Case No. D2004-0794, and decisions there referred to), this Panel finds that, even if only by partial identity, the contested domain name – notwithstanding the joint appearance therein of “lipitor” together with “plavix” – is confusingly similar to the PLAVIX trade mark.
The “com” has no distinguishing capacity.
The first element of the Policy has been met. B. Rights or Legitimate Interests
The Complainant has made evident that it has not licensed or otherwise authorised the Respondent to use its trade mark. Also, the Respondent does not appear to be commonly known by the domain name and it is evidently not making a legitimate non-commercial or fair use of it.
The Complainant has established a prima facie case of lack of rights and legitimate interests and there has been no valid rebuttal from the Respondent. There is nothing in the case file (including the Respondent's informal German communication of November 16, 2009) that gives reason to believe that the Respondent has or has had any rights or legitimate interests in respect of the domain name.
The Panel concludes that the Respondent has no rights and no legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Given the widely established market position of the Complainant and the Respondent's use of the domain name, it is beyond belief that the Respondent was unaware of the Complainant and its trade mark when registering the domain name.
The Complainant has provided evidence that the Respondent has knowingly acted so as to harm the Complainant's business, for its own commercial gain, by use of the domain name to direct the public to sources for acquisition of medicines competing with the Complainant's Plavix product. The use of the domain name will make believe that there is an entitling connection to the Complainant, whereas in fact there is none. Respondent's use of the domain name, combined, as here done, with the trademark of another, competing party, tarnishes the Complainant's trade mark.
Based on the evidence in the case file, the Panel finds that the disputed domain name has been registered and used 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 be cancelled.
Gunnar Karnell
Sole Panelist
Dated: December 15, 2009
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