The Complainant is Sanofi of Antony, France, represented by Darkanian & Pfirsch A.A.R.P.I, France.
The Respondent is Alexander M Kowalski of Siedlce, Poland / PrivacyP of Nobby Beach, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with UK2 Group Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2012. On June 1, 2012, the Center transmitted by email to UK2 Group Ltd. a request for registrar verification in connection with the disputed domain name. On June 1, 2012, UK2 Group Ltd. transmitted by email to the Center its verification response 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 June 4, 2012, 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 June 6, 2012.
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 June 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 28, 2012.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on July 9, 2012. 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 has submitted evidence that it is the owner of numerous trademark registrations for PLAVIX, including but not limited to the following:
French trademark PLAVIX with registration No. 93484877 and filing date July 28, 1993.
Canadian trademark PLAVIX with registration No. TMA509097 and filing date December 20, 1993.
Community Trademark PLAVIX with registration No. 002236578 and filing date May 29, 2001.
The disputed domain name was registered on March 22, 2011. 5. Parties’ Contentions A. Complainant
The Complainant is the largest pharmaceutical group in Europe and the fourth largest in the world, with consolidated net sales of EUR 33.4 billion and a EUR 4.811 billion research and development expenditure in 2011. The Complainant is a multinational company present in more than 100 countries with 110000 employees across five continents.
Plavix is an anti-platelet agent indicated for the prevention of ischemic events caused by atherothrombosis and for the reduction of recurrence after ischemic cerebrovascular disorder. Plavix is one of the world’s ten leading medicines and over 100 million patients throughout the world have been treated with Plavix. Plavix has been commercialized since 1988 and is available in more than 115 countries.
The Complainant has filed trademark applications for PLAVIX in more than 100 countries and is the owner of a large number of trademark registrations that predate the registration of the disputed domain name .
The disputed domain name reproduces the trademark PLAVIX in its entirety, which is sufficient to create a likelihood of confusion. Furthermore, the disputed domain name contains the descriptive and generic element “75mg”, which corresponds to a dosage of the drug Plavix. The mere addition of this descriptive element increases the confusion on part of the Internet users who would associate this combination with the regular dosage of the drug Plavix. The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s trademark PLAVIX.
The Complainant has never granted the Respondent any license or other authorization to use its trademark in relation to the disputed domain name. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, so as to confer a right or legitimate interest in accordance with paragraph 4(c)(i) of the Policy.
The Respondent is using the disputed domain name to redirect Internet users to an online pharmacy where generic or counterfeit Plavix products are offered for sale without prescription. The Respondent’s website reproduces the PLAVIX official trademarks which may lead Internet users to believe that it is an official website of the Complainant. Furthermore, via the Respondent’s website, products of the Complainant’s competitors are being sold. The Respondent is using the disputed domain name to obtain commercial gain by misleadingly diverting consumers seeking the Complainant’s website or Plavix products to the Respondent’s website, where the Respondent promotes suppliers of various medicines including competing products. The Respondent has no rights or legitimate interests in respect of the disputed domain name .
The disputed domain name was registered for the purpose of attracting Internet users to the Respondent’s website and making unfair benefit of the Complainant’s reputation, by creating a likelihood of confusion between PLAVIX trademarks and the disputed domain name. The Respondent’s knowledge of the Complainant’s trademark is proved by the fact that the disputed domain name leads to an online pharmacy where generic or counterfeit Plavix products are offered for sale. It is inconceivable that the Respondent registered the disputed domain name unaware of the Complainant’s rights and reputation. The Respondent registered the disputed domain name for the purpose of making unfair benefit of the Complainant’s trademark notoriety. The disputed domain name was not only registered in bad faith but is also used by the Respondent in bad faith.
The Complainant sent a cease and desist letter to the Respondent on January 19, 2012, but the Respondent never answered. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the owner of the registered trademark PLAVIX. The disputed domain name incorporates the Complainant’s trademark PLAVIX in its entirety with the addition of a hyphen and the descriptive element “75mg”, which is a measurement of a dosage of the product.
The ability for such a generic and descriptive element to distinguish the disputed domain name from the trademark of the Complainant is limited. Moreover, the addition of the element “75mg” may in fact increase the risk of confusion as 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.
Having the above in mind, it is the opinion of this Panel that the disputed domain name is confusingly similar to the Complainant’s trademark PLAVIX and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) that it has made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute; or
(b) that it is commonly known by the disputed domain name, even if it has not acquired any trademark rights; or
(c) that it intends or is making a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Complainant’s trademark registrations for PLAVIX predate the Respondent’s registration of the disputed domain name . The Complainant has not licensed, approved or in any way consented to the Respondent’s use of the PLAVIX trademark in the disputed domain name.
From the submitted evidence in the case, it is clear that the Respondent’s website, to which the disputed domain name resolves, is used to sell products which the Complainant believes may be counterfeit. Furthermore, the products offered for sale by the Respondent are the same type of products for which the Complainant has registered its trademark PLAVIX. The Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Although given the opportunity, the Respondent has not submitted any evidence in this case to demonstrate that the Respondent is the owner of any trademark rights similar to the disputed domain name or that the Respondent is or has been commonly known by the disputed domain name.
By not submitting a response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the record that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided there is a pattern of such conduct; or
(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.
The Complainant has submitted evidence demonstrating that the Respondent is offering drugs for sale via the website to which the disputed domain name resolves and that the Respondent is using the Complainant’s registered trademark PLAVIX when doing so. Considering that the disputed domain name is used for the same type of products for which the trademark is registered and in the absence of contrary evidence, the Panel finds that the Respondent knew or should have known of the Complainant’s product and trademark at the time the Respondent registered the disputed domain name.
Thus, the evidence in the case before the Panel demonstrates that the disputed domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website.
There is no evidence in the record that refutes the Complainant’s submissions.
The Complainant has proved the requirements of paragraph 4(b)(iv) of the Policy, which evinces that the disputed domain name has been registered and used in bad faith. Therefore the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(iii) of the Policy 7. Decision
For 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.
Johan Sjöbeck
Sole Panelist
Dated: July 11, 2012
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