The Complainant is Sanofi-aventis of Gentilly Cedex, France, represented by Armfelt (a.a.r.p.i) of Paris, France.
The Respondent is Wei-Ni Chong of Jalan San Peng, Kuala Lumpur, Malaysia and Protected Domain Services - Customer ID: NCR-982118 of Denver, Colorado, United States of America (the “United States”). 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with N LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2010. On July 30, 2010, the Center transmitted by email to N LLC a request for registrar verification in connection with the Disputed Domain Name. On August 3, 2010, N LLC transmitted by email to the Center its verification response providing an “informative filing” on behalf of Protected Domain Services, and 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 August 4, 2010 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 August 9, 2010.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint and the proceedings commenced on August 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 15, 2010. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on September 22, 2010.
The Center appointed Michael D. Cover as the sole panelist in this matter on October 6, 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 Sanofi-aventis, a French company. It is a group that results from the acquisition by Sanofi-Sythelabo of Aventis SA. The completion of this transaction resulted in a very large pharmaceutical group with a worldwide presence.
PLAVIX is a product manufactured by the Complainant and is indicated for the prevention of cardiovascular events in certain patients and other indications. It is one of the world’s leading medicines and was first commercialized in the United States in 1998 and is now available in more than 80 countries.
The Complainant has filed trade mark applications for PLAVIX in over 100 countries throughout the world, including the United States and has a large number of resulting trade mark registrations. The Complainant has also registered numerous domain names worldwide containing the trade mark PLAVIX, including . The Complainant has filed numerous complaints before WIPO to obtain the transfer to it of domain names that were found by the respective WIPO administrative panels to have infringed its rights.
The Respondent in this administrative proceeding is Wei-Ni Chong of Malaysia and Protected Domain Services of Colorado, the United States. 5. Parties’ Contentions A. Complainant
The Complainant submits that the Disputed Domain Name is identical to its trade mark PLAVIX. It maintains that the Disputed Domain Name consists of the Complainant’s trade mark PLAVIX with the descriptive term used in the medical market “ 75mg“ and the gTLD “.com”. It cites various WIPO UDRP decisions in that regard and concludes that the association, in a domain name, of the trade mark PLAVIX and the descriptive term generates confusion and persons accessing the Disputed Domain Name would be bound to think that the Disputed Domain Name had a connection with the Complainant.
The Complainant states that it has prior rights in the PLAVIX trade mark, which is well-known throughout the world and which precedes the Respondent’s registration of the Disputed Domain Name. The Disputed Domain Name leads to a website where numerous links are provided to buy Plavix and competitor’s products. The Complaint cites various WIPO UDRP decisions to argue its position that such use is indicative of bad faith. It also notes that the Respondent would not have registered the Disputed Domain Name if it had not been aware that Plavix is a revolutionary drug and concludes that the Respondent has not made bona fide use of the Disputed Domain Name because of its lack of authorization to use the PLAVIX trade mark and that its use of the Disputed Domain Name to divert consumers cannot be characterized as fair use.
The Complainant requests that the Disputed Domain Name be cancelled. B. Respondent
The Respondent did not file a formal Response to the Complainant’s contentions. The Respondent sent an informal email communication to the Center on August 4, 2010, requesting additional information, which the Center acknowledged. The Respondent sent an additional email on August 5, 2010, indicating that it had disregarded a previous email from the Complainant as it had been written in French, and indicating that it was willing to transfer the Disputed Domain Name to the Complainant if the Complainant would withdraw the Complaint. The Center requested the Parties to confirm whether they wished to briefly suspend the case to explore settlement options, but as no such request was received, the Center proceeded in the matter. No further communications were received from the Respondent. 6. Discussion and Findings
The Complainant has to establish that; the Disputed Domain Name is identical or confusingly similar to a trade mark in which it has rights; that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and; that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has submitted that the Disputed Domain Name is identical to its trade mark PLAVIX and goes on to argue that confusion is likely to occur. The Complainant has a great number of registered trade marks for PLAVIX and these give it the necessary rights. The Panel finds on the present record sufficient evidence to demonstrate unregistered or common law rights as well as the registered rights.
The Disputed Domain Name is plainly not identical to the Complainant’s trade mark PLAVIX. However, successive WIPO panels have found that the addition of non-distinctive matter to complainant’s mark is generally not sufficient to render the domain name in question non-confusingly similar. One of the most recent examples is J Choo Limited v. xi mi ke/ junjie che, WIPO Case No. D2010-1357. Ignoring the gTLD
“.com” in the usual manner of proceeding under the Policy, the only difference between the Disputed Domain Name and the Complainant’s trade mark is “75mg”, which is a generic element which could refer to dosage. Generic prefixes and suffixes have consistently been held to be unable to distinguish the domain name from the trade mark.
The Panel holds that the Disputed Domain Name is confusingly similar to the PLAVIX trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondent has not been authorized to use the trade mark PLAVIX by the Complainant and nor does it have a relationship with the Complainant.
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances that could demonstrate a respondent’s rights or legitimate interests. The Respondent has not filed a formal Response and has not therefore provided a reasonable explanation for the adoption of the Disputed Domain Name but the Panel should review the entire record to evaluate the Complainants’ claims in this regard.
There is no suggestion that 4(c)(ii) of the Policy applies, which deals with whether the Respondent had been commonly known by the Disputed Domain Name, even if it had acquired no trade mark rights. With regard to 4(c)(iii) of the Policy, there is also no suggestion that the Respondent is making legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers. There is evidence that quite the opposite is happening and that consumers are being diverted for commercial gain.
With regards to 4(c)(i) of the Policy, such use as there has been of the Disputed Domain Name has not been in connection with a bona fide offering of goods or services.
In any event, as noted in J Choo Limited v. xi mi ke/ junjie che, Supra, the Complainant is entitled to success on this limb having established a prima facie case, in the absence of rebuttal from the Respondent.
The Panel holds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy sets out one of the circumstances from the non-exhaustive list that constitute bad faith. It reads:
“by using the [Disputed Domain Name], you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product or service on your web site or location.“
The Respondent has attempted to divert Internet users to its site, for commercial gain, so as to create confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s website with the PLAVIX product of the Complainant.
The Panel accordingly finds that the Complainant succeeds on the third limb of paragraph 4(a) of the Policy. 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 Disputed Domain Name be cancelled.
Michael D. Cover
Sole Panelist
Dated: October 20, 2010
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