The Complainant is Sanofi-Aventis of Paris, France, represented by Selarl Marchais De Candé, France.
The Respondent is PrivacyP of Null, Netherlands. 2. The Domain name and Registrar
The disputed Domain Name is registered with NetEarth One Inc. d/b/a NetEarth. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2010. On November 4, 2010, the Center transmitted by email to NetEarth One Inc. d/b/a NetEarth a request for registrar verification in connection with the disputed Domain Name; the Center sent five reminders to the Registrar in this regard on November 8, November 10, November 11, November 12 and November 17, 2010. On November 17, 2010, NetEarth One Inc. d/b/a NetEarth transmitted by email to the Center its verification response stating that “PrivacyP” was not the registrant of the disputed Domain Name, that “the complainant never requested removal of the privacy protection service”, but nevertheless provided the WhoIs contact details for the registrant “PrivacyP”.
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 18, 2010. Specifically, on November 18, 2010, the Center sent the Notification of Complaint and Commencement of Administrative Proceedings to the Respondent via the email address provided by the Registrar in reply to the Center’s above-referenced requests, as was also provided by the Complainant in its Complaint and as appeared in the publically available WhoIs for the disputed Domain Name.
The Center also sent Written Notice by courier to the address appearing for the Respondent as provided by the Registrar, the WhoIs and the Complaint. Such delivery was not stated by the courier as successful.
In accordance with the Rules, paragraph 5(a), the Respondent had initially been advised to submit a Response no later than December 8, 2010. Accordingly, the Center notified the Respondent’s default on December 9, 2010. Subsequently, it came to the attention of the Center that its usual precaution of also notifying the Complaint in cases involving “PrivacyP” via that entity’s online-facility had not been taken. In an abundance of caution, noting such cases as F. Hoffmann-La Roche AG v. PrivacyP, Domain Admin and Mark Sergijenko WIPO Case No. D2007-1854, the Center sent a communication using the online facility provided by “PrivacyP” (sending this also to all available email addresses for the Parties) noting no Response had been submitted and inviting the Respondent to indicate its whether it wished to participate in the present proceedings by December 17, 2010.
The Center appointed Lana I Habash as the sole panelist in this matter on December 21, 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.
Upon review of the case file, the Panel noticed that the Center’s usual practice of (in addition to notifying the Complaint to the available contact information for the Respondent, as required under the UDRP Rules) taking the further step of forwarding a copy of the Complaint via PrivacyP’s online facility in cases involving “PrivacyP”, as discussed in cases such as F. Hoffmann-La Roche AG v. PrivacyP, Domain Admin and Mark Sergijenko, (supra), had not been undertaken in a timely manner. Therefore, in a further abundance of caution, the Panel issued a Procedural Order, which the Center has communicated to the Parties on December 29, 2010, advising that the Response due date had been extended to January 3, 2011. The Respondent failed to submit a Response by the new Response date and as such the Panel moved to issuing a Decision in this case. 4. Factual Background
The Complainant Sanofi-Aventis is a leading pharmaceutical company in Europe and is known worldwide, with a presence in more than 100 countries in the world, with a large portfolio of high growth drugs, six of which are blockbusters, including the drug known as “Plavix”, which is sold in tablet form, with the standard dosage of 75 mg, and is indicated for the reduction of recurrence after ischemic cerebrovascular disorder. According to the Complainant, the drug has been used by 100 million patients worldwide, since it has been commercialized in the United States of America, Germany and England as of 1998. The drug is sold under the trademark PLAVIX (“Trademark”), which is registered by the Complainant in a number of countries, with the earliest registration date of July 28, 1993. The Complainant has also registered a number of domain names including the trademark PLAVIX in the three top level domains, as of 1998.
The disputed Domain Name was created on May 13, 2010, and is held by PrivacyP ostensible to the benefit of an undisclosed Registrant, whose identity is protected by the privacy shield. On the date the Complaint was filed, the disputed Domain Name pointed to a website that sold drugs online, including generic version of PLAVIX; now the disputed Domain Name does not point to any website. On July 19, 2010, the Complainant has sent a cease and desist letter to the Respondent, who did not reply to it. 5. Parties’ Contentions A. Complainant
The Complainant contends the following:
- The Complainant’s trademark PLAVIX has been reproduced in its entirety in the disputed Domain Name; the trademark PLAVIX does not have any particular meaning is highly distinctive;
- The addition of “75mg” to the Trademark is superfluous and does not overcome the confusing similarity with the Complainant’s trademark, to the contrary, the addition “75mg” is rather descriptive as it corresponds to the standard dosage of the drug “Plavix”;
- The Respondent does not have any prior and/or legitimate rights in the disputed Domain Name, and the fact that the Respondent used PrivacyP supports that contention;
- The Respondent has never been licensed or permitted by the Complainant to register the disputed Domain Name and/or use the Trademark;
- The disputed Domain Name has been registered in bad faith; as it is registered to attract Internet users to the Respondent’s website, unlawfully benefiting from the Complainant’s fame, which the Respondent must have been aware of. In fact, including the addition “75mg” which corresponds to the basic dosage confirms that the Respondent has been aware of the Complainant’s rights in the disputed Domain Name;
- The disputed Domain Name is being used in bad faith, as it directs Internet users to an online pharmacy that is not the official website of the Complainant’s and that the Respondent is deliberately trying to gain unfair benefit from the fame of the Complainant’s reputation;
- The website offers for sale drugs including the generic version of PLAVIX 75mg, which may lead Internet users into believing that the website is associated with the Complainant; selling the generic drug on this website without prescription is potentially harmful to patients. 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
The Complainant has demonstrated its rights to the trademark PLAVIX. The Panel is also satisfied that the Complainant has established that PLAVIX is a widely trademark.
The disputed Domain Name contains the Complainant’s trademark PLAVIX in its entirety, with the addition word “75mg”. The Panel is of the view that the addition of this combination of numbers and letters does not detract from the distinctiveness of the dominant part of the disputed Domain Name, to the contrary, in this particular case, it adds to the confusion on part of the Internet users who would associate this combination with the regular dosage of the drug known as PLAVIX, in which the Complainant has established trademark rights. In numerous UDRP Decisions, panels have found that the fact that a domain name incorporates a complainant’s registered mark in its entirety is sufficient to establish confusing similarity for the purpose of the first element of the Policy (see, Sanofi-Aventis v. MC EU,WIPO Case No. D2006-0403, Alstom v. FM Laughna,,WIPO Case No. D2007-1736, Groupe Auchan v. Jakub Kamma, WIPO Case No. D2007-0565, CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273, ACCOR v. Payam Avarane Khorshid Co. and Nextone Media Limited,WIPO Case No. DIR2010-0001, and LEGO Juris A/S v. n/a, Domain For Sale,WIPO Case No. D2010-0158). B. Rights or Legitimate Interests
The Complainant is required to make a prima facie case of lack of rights or legitimate interest in the disputed Domain Name on part of the Respondent. The failure to submit a response by the Respondent in some cases supports a finding of lack of such rights, nonetheless, the Panel is required to examine the case to determine whether the Respondent has any rights or legitimate interests in the disputed Domain Name.
According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) the respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute;
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s marks.
Considering the facts at hand, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed Domain Name. The mere registration of a domain name does not give rise to a “legitimate interest”. It is evident that the Respondent attempted to use the good will of the Trademark PLAVIX to divert Internet users to its website, which offers for sale generic drugs, including those that correspond to PLAVIX 75gm. This, in the Panel’s does not constitute a bona fide offering of goods or services, nor is it a legitimate non-commercial use, and it is evident that the Respondent, who did not offer any evidence of being commonly known as the disputed Domain Name, has intentionally registered the disputed Domain Name to divert consumers to its website from the official websites of the Complainant’s. C. Registered and Used in Bad Faith
As the Panel discussed under the first element, the Complainant has successfully demonstrated the worldwide reputation of the Trademark PLAVIX, therefore it is unlikely that the Respondent was not aware of the proprietary rights of the Complainant in the Trademark and subsequently its interest in the disputed Domain Name.
For the purposes of Paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the 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 Panel finds that the Respondent’s registration and use of the disputed Domain Name is in bad faith; the use of the disputed Domain Name by the Respondent to point to a website where the Respondent offers for sale drugs including PLAVIX and the generic version of PLAVIX without a license or a permit from the Complainant, diverts business from the Complainant’s official website, and does cause confusion on part of Internet users as to the source of the drug offered for sale on its website, and its association with the Complainant. See: Sanofi-Aventis v. Gideon Kimbrell,WIPO Case No. D2010-1559, and F. Hoffmann-La Roche AG v. PrivacyP,WIPO Case No. D2007-1854.
Therefore, and in light of the above mentioned facts, the Panel finds that the Respondent has registered and is using the disputed Domain Name 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.
Lana I Habash
Sole Panelist
Dated: January 15, 2011
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