The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Tyesha Hirthe of Dortheyborough, Montana, United States of America (“USA”). 2. The Domain Name and Registrar
The disputed domain name is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2018. On June 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 19, 2018, the Registrar transmitted by email to the Center its verification response providing 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 20, 2018 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 the same day.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 19, 2018.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on July 23, 2018. 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 a leading manufacturer in the pharmaceutical field.
The Complainant owns a number of registrations for the trademark PLAVIX including registrations in France (Registration No. 613041, registered on December 27, 1993), the European Union (Registration No. 001246099, registered on October 2, 2000), Hong Kong (Registration No. 200009525, registered on July 30, 1998), and the USA (Registration No. 2042583, registered on March 11, 1997).
The Complainant has registered a number of domain names which include the trademark PLAVIX.
The disputed domain name was registered on October 26, 2017. The disputed domain name previously resolved to a website selling pharmaceutical products. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant contends that drugs bearing the trademark PLAVIX were being commercialized by the Complainant in various countries since 1998. The Complainant registered the trademark PLAVIX in many jurisdictions all over the world. The Complainant has also registered domain names that include the trademark PLAVIX. The disputed domain name reproduces the trademark PLAVIX, which is highly distinctive. The Complainant has been using the trademark PLAVIX for over 15 years and has spent significant resources in its marketing, including in the USA. Adding the word “online” does not eliminate confusion as it is merely a descriptive term that is widely used. The generic Top-Level Domain (gTLD) “.com” should be ignored when assessing similarity. The Complainant’s trademark has a reputation, which increases the likelihood of confusion.
The Complainant contends that the Respondent has no rights or legitimate interests in the dispute domain name. The Complainant did not authorize the Respondent to use its trademark. The Respondent has not made a legitimate noncommercial or fair use of the disputed domain name as the disputed domain name redirects Internet users to a website that offers pharmaceutical products including Plavix. The website provides false and misleading information which may be detrimental to the Complainant. The Plavix product being offered is not manufactured by the Complainant. The Respondent is aiming to obtain commercial gain by misleading consumers and diverting them to its website. Furthermore, there is bad faith use and registration on the part of the Respondent, which nullifies any rights or legitimate interests even if there was an offering of goods and services.
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent has no rights or legitimate interests in the disputed domain name and hence the registration could not have been made in good faith. There is opportunistic bad faith in the Respondent’s behavior as it must have had at least constructive notice of the Complainant’s trademark, which indicates bad faith registration and use as it indicates illegitimate use. The trademark of the Complainant and the Complainant itself are well-known, which indicates bad faith registration and use. The Respondent must have been aware that the confusing similarity with the Complainant’s trademark would lead Internet users to its website through which it offers products at lower prices benefitting from the goodwill of the Complainant’s trademark. Such activity would also disrupt the Complainant’s business. A cease-and-desist letter sent by the Complainant remained unanswered. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant holds a number of trademark registrations for the trademark PLAVIX. The Panel is satisfied that the Complainant has established its ownership of the trademark PLAVIX.
The disputed domain name comprises the Complainant’s trademark in its entirety preceded by a hyphen and the term “online”, which does not eliminate the confusing similarity with the trademark PLAVIX. The Complainant’s trademark is clearly recognizable in the disputed domain name. The gTLD “.com” may typically be ignored when assessing confusing similarity as held by prior UDRP panels.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Pursuant to the Complainant’s contentions set out above, the Panel finds that the Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that it never authorized the Respondent to use its trademark as part of the disputed domain name, which is allegedly used by the Respondent to sell products under the Complainant’s trademark that are not manufactured by the Complainant.
The Respondent has not provided evidence of circumstances of the types specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name. Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The element of bad faith is evidenced by the fact that the trademark PLAVIX has been registered and commercialized for about 20 years before the Respondent registered the disputed domain name. Hence, it must be that the Respondent was aware of the Complainant and its trademark when it registered the disputed domain name. The fact that the website to which the disputed domain name resolves offers for sale medicine bearing the same trademark only confirms the Respondent’s knowledge that PLAVIX is a medicine trademark.
Furthermore, the Respondent did not respond to the Complainant’s cease-and-desist letter nor has the Respondent provided a Response to the Complaint demonstrating actual or contemplated good faith use. In addition, the Respondent is offering for sale products bearing the trademark PLAVIX which are not manufactured by the Complainant, which is both detrimental to the Complainant’s reputation and possibly harmful to consumers. Clearly, the Respondent is trying to benefit from the reputation and goodwill of the Complainant’s trademark in order to divert Internet users to its website and sell the products being offered. The combination of the Complainant’s trademark together with the word “online” in the disputed domain name reinforces the impression that the disputed domain name is an online platform for making Plavix available to consumers. Therefore, the Panel concludes that the disputed domain name is registered and is being used in bad faith.
Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainant has satisfied 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 transferred to the Complainant.
Nayiri Boghossian
Sole Panelist
Date: July 26, 2018
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