The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Syrowski, Marek, Syrowski of Lublin, Poland 2. The Domain Names and Registrars
The disputed domain name is registered with Eranet International Limited and the disputed domain name is registered with T, Inc. (the "Domain Names" and the "Registrars", respectively). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 16, 2016. On February 16, 2016, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed Domain Names. On February 23, 2016, the Registrars transmitted by email to the Center their 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 17, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 21, 2016.
The Center appointed Ellen B Shankman as the sole panelist in this matter on March 30, 2016. 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 registration dates for the Domain Names were confirmed by the Registrars both to be May 21, 2015. The Complainant provided evidence of multiple trademark registrations for the mark PLAVIX including, inter alia, International Trademark, No. 613041, (registered on December 27, 1993) and French Trademark No. 93484877 (registered on July 28, 1993), that well predate the dates of the Domain Names registrations for pharmaceutical products.
The Panel also conducted an independent search to determine that the Domain Names both currently resolve to a page with an "error" message, and the websites currently appear to be inactive.
Since the Respondent did not respond, the facts regarding the use and fame of the Complainant's mark, as well as other statements regarding correspondence between the parties, are taken from the Complaint and are generally accepted as true in the circumstances of this case. 5. Parties' Contentions A. Complainant
The Complainant alleges it is the 4th .largest multinational pharmaceutical enterprise in the world with global operations in more than 100 countries on five continents, employing 110,000 people. The Complainant further alleges that it discovers, develops, manufactures, and markets leading prescriptions medicines with sales of EUR 33.77 billion in 2014 and EUR 32.95 billion in 2013.
The Complainant also alleges that in addition to a wide range of high-growth drugs, with several pharmaceutical blockbusters, among which PLAVIX is one of the two leading drugs in the category of thrombosis medicines. PLAVIX is an anti-platelet agent that is one of the world's 10 leading medicines, and to date, over 100 million patients throughout the world have been treated with PLAVIX, which has been commercialized since 1998. The Complainant has registered PLAVIX as a trademark throughout the world. The Complainant also explains that "75" is a number related to dosage of the medicine that according to the Complainant is in fact 75 milligrams.
The Complainant supplied captured screenshots and photos of the website of the Respondent offering Complainant's PLAVIX products for sale. As identified above, these no longer appear.
In addition, the Complainant also alleges it owns a number of domain names which contain the term "PLAVIX" including , which it has used since at least as early as 1998 to host a website to communicate with the public about the product.
The Complainant alleges that it sent the Respondent an email on December 18, 2015 requesting the voluntary transfer of the Domain Names to the Complainant. The Complainant alleges that the Respondent did not "deign to respond".
To summarize the Complaint, the Complainant is the owner of numerous registrations for the trademark PLAVIX, in respect of pharmaceuticals. The Domain Names are confusingly similar to the trademark owned by the Complainant. The addition of the term "75" does not prevent a finding of confusing similarity – and indeed enhances the concern. Therefore, both Domain Names could be considered virtually identical and/or confusingly similar to the Complainant's trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Domain Names were registered and are being used in bad faith by allegedly selling misrepresented and counterfeit drugs. Thus, the Respondent's registration and use of the Domain Names constitutes bad faith registration and use under the Policy, and the Complainant requests cancellation of the Domain Names. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for PLAVIX.
The Domain Names strings contain the identical string for "plavix" in their entirety, and the Domain Names' strings contain the trademark of the Complainant. If anything, the addition of a number that corresponds to a dosage of the medication underscores an attempted connection by the Respondent in both Domain Names to the trademark of the Complainant.
The Panel finds that the Domain Names are confusingly similar to the Complainant's PLAVIX trademark. Further, the Panel finds that the addition of the number "75" in the Domain Names does not change the overall impression of the designations being connected to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the disputed Domain Names and the Complainant's trademark. See Sanofi. v. Alexander M Kowalsky, WIPO Case No. D2012-1123, which states that "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." See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110, stating "The incorporation of a Complainant's well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant's trademark."
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Names are identical or confusingly similar to the Complainant's registered trademark PLAVIX, under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Names and that Respondent is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in both Domain Names.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Names, under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Given the distinctiveness of the Complainant's trademark and reputation, and given the original content of the websites to which the Domain Names previously resolved, the Panel agrees with the Complainant's claims that the Respondent has registered the Domain Names with full knowledge of the Complainant's trademark PLAVIX and used for the purpose of misleading and diverting Internet traffic. Even with the content pages removed, the Panel agrees that the holding of the Domain Names is in bad faith.
The Domain Names fully incorporate the Complainant's trademark PLAVIX with the addition of the number "75", which corresponds to common dosage of the medication. Furthermore, the Respondent has taken active steps to conceal the pattern of its efforts by registering the Domain Names under two initially different names with two different Registrar, which the Panel finds further indicates bad faith by the Respondent.
The Panel finds compelling factual and circumstantial evidence in the record that the Respondent knew of the Complainant's mark when it registered the Domain Names.
It has been held in previous UDRP cases that knowledge of a corresponding mark at the time of the domain name's registration suggests bad faith (LEGO Juris A/S v. Reiner Stotte,WIPO Case No. D2010-0494; Caixa D'Estalvis I Pensions de Barcelona ("La Caixa") v. Eric Adam,WIPO Case No. D2006-0464) and see, e.g., Bartercard Ltd & Bartercard International Pty Ltd. v. Ashton-Hall Computer Services,WIPO Case No. D2000‑0177.
Given the distinctiveness of the Complainant's trademark and reputation, the Panel agrees with the Complainant's claims that the Respondent has registered the Domain Names with full knowledge of the Complainant's PLAVIX trademark and that the continued use of the Domain Names is in bad faith. This is consistent with the holding in Sanofi. v. Alexander M Kowalsky / PrivacyP,WIPO Case No. D2012-1123.
Even where the Domain Names now resolve to 'error' pages, the Panel does not believe that it changes the finding. Under WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition ("WIPO Overview 2.0"), paragraph 3.2, regarding the question of whether there can be use in bad faith when the domain name is not actively used and there is passive holding, the consensus view is that it can. WIPO Overview 2.0 states:
"with comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, [and] no response to the complaint having been filed. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere 'parking' by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals)."
See WIPO Overview 2.0, paragraph 3.2, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; and Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574.
Given the evidence of the Complainant's prior rights in the PLAVIX mark, the timing of the registration of the Domain Names, together with evidence of use of the mark in the Domain Names for commercial purposes by the Respondent, the Panel finds that the Complainant has satisfied the third requirement proving that the Respondent has registered and is using the Domain Names in bad faith, 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 Domain Names and be cancelled.
Ellen B Shankman
Sole Panelist
Date: April 6, 2016
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