The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is WhoisGuard, Inc. of Panama / Daniel Kobelau, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2019. On May 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 28, 2019, the Registrar 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 May 29, 2019 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 May 29, 2019.
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 May 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 26, 2019.
The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on July 8, 2019. 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 French multinational pharmaceutical company, which has a business presence in over 100 countries around the world. It engages in research and development, the manufacturing and marketing of pharmaceutical products for sale, develops over-the-counter medication and is the world’s 4th largest pharmaceutical company by prescription sales.
The Complainant offers a wide range of prescription drugs. “Plavix” is the brand name of one of the Complainant’s drug products, which is used primarily in the treatment of atherothrombotic conditions. To date, Plavix has been used to treat over 100 million patients worldwide and is considered to be one of the two leading drugs in the category of thrombosis medicines.
The Complainant is the owner of a number of registered trade marks around the world for PLAVIX, including:
- French trade mark PLAVIX (word) no. 93484877, registered on July 28, 1993 for pharmaceutical products in Class 5;
- International trade mark PLAVIX (word) no. 613041, registered on December 27, 1993 for pharmaceutical products in Class 5, and designating inter alia Austria, Benelux, Bulgaria, China, Czech Republic, Germany, Hungary, Morocco, Portugal, Romania, Russian Federation, Slovenia, Spain, Ukraine and Viet Nam;
- European Union trade mark PLAVIX (word) no. 002236578, registered on April 18, 2002 for pharmaceutical products in Class 5; and
- United States of America trade mark PLAVIX (word) no. 2042583, registered on March 11, 1997 for pharmaceutical products in Class 5.
The Complainant is also the owner of several domain names, which contain the term “plavix”, including:
- , registered on May 16, 2002; and
- , registered on November 19, 1999.
The disputed domain name was registered on April 25, 2019.
The disputed domain name directs to a website, which lists the details of three online pharmacies, the price of the Complainant’s Plavix drug (which is said to be available from each of them) is listed, as well as further information such as shipping costs and time, available payment methods and accepted currencies. Upon clicking on the price of the Plavix drug on at least one of the online pharmacies listed (“SKY Pharmacy”), users are directed to another website from which it appears to be possible to purchase the Complainant’s Plavix drug. The Complainant contends that the information regarding its Plavix drug displayed on the website hosted at the disputed domain name is “false, inaccurate and misleading” and moreover points out that Plavix is a prescription drug (and, presumably therefore, should not be available from a direct-to-consumer website). 5. Parties’ Contentions A. Complainant
The Complainant contends as follows:
1. The disputed domain name is identical or confusingly similar to the Complainant’s PLAVIX mark, which is the subject of various registrations. In particular:
1.1 the Complainant’s PLAVIX marks are held in various territories around the world and each of them pre-dates the registration of the disputed domain name;
1.2 the disputed domain name entirely reproduces, as the unique and dominant component, the Complainant’s PLAVIX mark, which does not have any particular meaning and is therefore highly distinctive;
1.3 the reproduction of the Complainant’s PLAVIX mark as the dominant component of the disputed domain name is the use of a confusingly similar mark, regardless of the Top-Level Domain (“TLD”) suffix “.team. It is well established that the TLD component of a domain name should be disregarded in a comparison between a disputed domain name and a trade mark, as it does not serve to distinguish domain names. The relevant comparison is to be made with the second level portion of the domain name; and
1.4 it must be taken into account that the likelihood of confusion is ascertained by the reputation of the Complainant’s trade name, trade marks, domain names and general goodwill. To this end, panels have rendered numerous decisions involving the Complainant’s PLAVIX marks, proving the reputation and attraction of them. These decisions include inter alia:
D2019-0505 - ;
D2019-0506 - ; and
D2018-1339 - .
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular:
2.1 it is obvious that the Respondent has no legitimate interest in using the disputed domain name since the Respondent’s name and address does not bear any resemblance to the word “Plavix”, which has no meaning and is therefore highly distinctive;
2.2 the Respondent has neither prior rights nor legitimate interests to justify the use of the Complainant’s trade mark which is well known around the world;
2.3 the Complainant has never licensed or otherwise authorized the Respondent to use the Complainant’s PLAVIX mark or to register any domain name which incorporates it;
2.4 the Respondent has not made fair use of the disputed domain name in accordance with paragraph 4(c)(i) of the Policy, as the disputed domain name is clearly used as part of a “bait and switch” exercise. This is because the website at the disputed domain name is used by the Respondent to direct users to a website offering products in the pharmaceutical field, including supposed Plavix products. It is to be inferred that by doing so, the Respondent is taking unfair advantage of the Complainant’s PLAVIX marks, domain names and reputation;
2.5 the Respondent is displaying the Complainant’s PLAVIX mark and images of its Plavix products alongside inaccurate and misleading information, namely that Plavix is available to purchase freely online whereas in fact Plavix is sold as a prescription drug. This causes irrevocable damage to the Complainant’s reputation and goodwill, and is misleading for healthcare professionals and patients;
2.6 the Respondent is using the disputed domain name for commercial gain by misleadingly diverting consumers who are searching for the Complainant’s genuine websites and/or Plavix drug products to the disputed domain name; and
2.7 the mere fact that the Respondent is using the disputed domain name in connection with an offering of goods and services does not prove that it has rights or a legitimate interests in the disputed domain name. It is well settled that, where a disputed domain name is used or registered in bad faith, there can be no bona fide offering of goods or services under paragraph 4(c)(i) of the Policy (Wal-Mart Stores, Inc. v. Triple E Holdings Limited,WIPO Case No. D2005-0711).
3. The domain name was registered and is being used in bad faith. In particular:
3.1 the Respondent does not have any legitimate interest in using the disputed domain name given that it has no prior right nor authorization from the Complainant to use the Complainant’s PLAVIX mark;
3.2 given the famous and distinctive nature of the Complainant’s PLAVIX mark, the Respondent is likely to have had at least constructive, if not actual, notice as to the existence of Complainant’s PLAVIX marks at the time that the disputed domain name was registered. This suggests that the Respondent acted with opportunistic bad faith in order to make illegitimate use of the Complainant’s PLAVIX marks. In that regard, the Complainant is one of the world’s largest pharmaceutical companies and is the owner of several PLAVIX trade mark registrations, along with several domain names reproducing the term “Plavix”. Where the well-known status of a complainant’s trade marks is well-established, numerous panel decisions acknowledge that this consideration is, in itself, indicative of bad faith registration;
3.3 the disputed domain name has been used in order to attract users to the Respondent’s website by creating a likelihood of confusion between the Complainant’s PLAVIX marks and the disputed domain name;
3.4 the disputed domain name contains links which direct users towards websites which are not the official websites of the Complainant’s products. In so doing, the Respondent is trying to make unfair use of the goodwill and reputation in the Complainant’s PLAVIX marks and create a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the products advertised for sale via the websites located at and that are linked to the disputed domain name;
3.5 previous panel decisions have ordered the transfer of the similar domain names and to the Complainant. Both of these domain names directed towards the same “Sky Pharmacy” website to which the disputed domain name also offers a link. The disputed domain name was registered a mere two days after these decisions were issued and the Complainant infers that the two matters are therefore connected;
3.6 the use of a mark in a domain name to promote the sale of products in competition with the mark owner’s products constitutes bad faith (Pfizer Inc v Medlink Telecom GmbH,WIPO Case No. D2002-0547); and
3.7 the website at the disputed domain name contains incorrect and unauthorized medical information about the Complainant’s Plavix drug. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to be entitled to the transfer of a domain name, a complainant shall prove the following three elements:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 5(f) of the Rules provides that, if the respondent fails to submit a response (as in this case), in the absence of exceptional circumstances, the panel shall decide the dispute based upon the complaint. A. Identical or Confusingly Similar
The Complainant has submitted evidence demonstrating its rights in the PLAVIX trade mark.
The disputed domain name fully incorporates the Complainant’s PLAVIX marks, and the word “Plavix” is recognisable within the disputed domain name.
Further, the Panel accepts that the TLD suffix in the disputed domain name “.team” should not be taken into consideration when examining the similarity between the disputed domain name and the Complainant’s marks since it is a functional element (see VAT Holding AG v. V,WIPO Case No. D2000-0607; and Accor v Noldc, Inc,WIPO Case No. D2005-0016).
Therefore, the fact that the disputed domain name reproduces “Plavix” in its entirety and without other elements in the second level portion of the domain name, and the fact that the TLD suffix can be ignored, leads to the finding that the disputed domain name is identical to or confusingly similar to the Complainant’s PLAVIX marks.
The Complaint therefore satisfies paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
A prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name.
The Complainant asserts that the Respondent has not been granted any license nor has it been authorized by the Complainant in any way to use or register the Complainant’s PLAVIX mark or to seek registration of any domain name incorporating it.
Further, the Complainant has made out a prima facie case that the Respondent lacks any legitimate interest in the disputed domain name in the light of its contentions regarding the content of the website to which the disputed domain name resolves, as well as other websites linked to it. The burden of production on this element of the Policy therefore shifts to the Respondent, who must rebut the prima facie case.
Moreover, the Panel finds that the disputed domain name carries a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Respondent has not submitted any response to the Complaint. Under paragraph 14(b) of the Rules, if a respondent fails to comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
For the reasons above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and therefore satisfies paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant contends that the Respondent knew or should have known of the Complainant’s PLAVIX marks, not least because the disputed domain name reproduces the term “Plavix”, which is a meaningless and original term, in its entirety. Additionally, the website at the disputed domain name is focused on the sale of pharmaceutical products of which the Complainant’s Plavix product is a well-known example and is, in fact, itself specifically listed. The Respondent has made no submission to rebut this contention.
In the circumstances, the Panel finds that the disputed domain name was registered and is being used in an attempt create the false impression that it is associated or affiliated with the Complainant’s and its marks. Paragraph 4(b)(iv) of the Policy states that registration and use in bad faith can be evidenced by intentionally attempting to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source of the website. The use of the website at the disputed domain name in the manner described above suggests that this was the intention of the Respondent in registering and using the disputed domain name.
In view of the above and in the absence of any submissions in response to the Complainant’s contentions, the Panel finds that the disputed domain name has been registered and is being used in bad faith, and therefore paragraph 4(a)(iii) of the Policy has been satisfied. 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.
Charters Macdonald-Brown
Sole Panelist
Date: July 22, 2019
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