The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.
The Respondent is Alevtina Markelova, Russian Federation.
The disputed domain name <plavix.icu> (the “Domain Name”) is registered with Gandi SAS (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2019. On that same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 27, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 28, 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 28, 2019.
The Center verified that the original Complaint, together with the amendment to it (together, 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 11, 2019. In accordance with the Rules, paragraph 5, the due date for the Response was July 1, 2019. The Respondent did not submit any Response.
The Center appointed D. Brian King as the sole panelist in this matter on July 10, 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.
The Complainant, Sanofi, is a French multinational pharmaceutical company based in Paris. The Complainant’s business comprises the development, manufacturing, and sale of both prescription and over-the-counter pharmaceuticals. In terms of prescription sales, the Complainant is among the world’s largest pharmaceutical companies. It operates in more than 100 countries and employs over 100,000 people. One of the Complainant’s highly successful products is a prescription drug used to reduce the recurrence of ischemic cerebrovascular disorder, which is marketed under the trademark PLAVIX. According to the Complainant, PLAVIX is among the top 10 medicines in the world, having been used by more than 100 million patients.
The Panel has no information on the history or activities of the Respondent, Alevtina Markelova.
The Complainant owns registrations for the PLAVIX trademark in multiple jurisdictions (Annex 8 to the Complaint). An illustrative, non-exhaustive list follows:
|
Trademark |
Jurisdiction |
Date of Registration |
Registration Number |
|
PLAVIX |
France |
July 28, 1993 |
93484877 |
|
PLAVIX |
International trademark |
December 27, 1993 |
613041 |
|
PLAVIX |
United States of America |
March 11, 1997 |
2042583 |
|
PLAVIX |
European Union (“EU”) |
April 18, 2002 |
002236578 |
The Domain Name was registered on September 4, 2018. This is decades after the Complainant first registered its PLAVIX mark, including in relation to the Russian Federation. The Complainant owns many domain names incorporating its PLAVIX mark, including <plavix.com>, <plavix.fr>, and <plavix.net> – all of which, according to the Complainant, were acquired long before the Respondent registered the Domain Name, <plavix.icu> (Annex 1 to the Complaint). The website associated with the Domain Name reproduces the Complainant’s PLAVIX mark and contains links to third-party websites offering pharmaceuticals that apparently compete with the Complainant’s drug.
The Complainant submits that the Domain Name is confusingly similar to its registered trademarks. The Complainant points out that the Domain Name entirely incorporates its PLAVIX mark. Furthermore, the term “plavix” has no inherent meaning and is thus highly distinctive. The addition of the generic Top-Level Domain (“gTLD”) “.icu”, the Complainant contends, does not diminish the confusing similarity of the Domain Name to its PLAVIX trademarks.
The Complainant next argues that the Respondent has no rights or legitimate interests in respect of the Domain Name. It cites the Respondent’s failure to provide complete identifying information when registering the Domain Name – such as a legitimate and complete address – as a suspicious circumstance suggesting the absence of any legitimate interest in the Domain Name. The Complainant represents that there is no relationship between itself and the Respondent, and that it has never authorized the Respondent to use its trademarks in any way. Nonetheless, the Complainant notes, the Respondent’s website features the PLAVIX mark, contains no disclaimer regarding the absence of a relationship with the Complainant, and offers goods that compete with the Complainant’s blockbuster prescription drug. The Complainant characterizes this as a “bait and switch.”
Finally, the Complainant submits that the Domain Name was registered and is being used in bad faith. Given the famous and distinctive nature of the PLAVIX mark, the Complainant argues, the Respondent must have had at least constructive notice of the Complainant’s rights in the mark when registering the Domain Name. This conclusion is said to be bolstered by the fact that “plavix” has no inherent descriptive meaning regarding pharmaceuticals, and the fact that the PLAVIX drug is well known internationally. The Complaint proceeds to argue that the Respondent has registered and used the Domain Name with the intention of attracting Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s famous trademarks and business – a situation evincing bad faith registration and use under paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be entitled to relief:
(i) the Domain Name is identical or confusingly similar to a trademark 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 4(c) of the Policy sets out illustrative circumstances that could demonstrate a respondent’s rights or legitimate interests in a domain name for purposes of paragraph 4(a)(ii) above.
Paragraph 4(b) of the Policy sets out illustrative circumstances that could demonstrate registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) above.
The Complainant has provided sufficient evidence to prove that it possesses rights in the PLAVIX mark, has used the mark extensively in commerce, and has promoted the PLAVIX medication through, among other things, numerous domain names owned by the Complainant that incorporate the mark. The Complainant has also demonstrated that it or its predecessor companies registered the PLAVIX trademark in multiple jurisdictions, including the apparent home state of the Respondent (the Russian Federation), starting in 1993. Furthermore, and consistent with the holding of prior UDRP panels (see, e.g., Sanofi v. Alla Landau, WIPO Case No. D2019-0168; Sanofi-Aventis v. Ho Nim, WIPO Case No. D2010-1272), the present Panel finds that the Complainant’s PLAVIX mark has acquired international fame based on the significance of the corresponding medication and the magnitude of that medication’s sales.
The Domain Name entirely incorporates the PLAVIX mark, with the only addition being the gTLD “.icu”. The Panel finds that this addition does nothing to reduce the confusing similarity of the Domain Name to the Complainant’s famous PLAVIX mark (see, e.g., Sanofi v. Alla Landau, WIPO Case No. D2019-0168; Sanofi v. Bo Li, WIPO Case No. D2013-1971). The first element of the test under paragraph 4(a) of the Policy is therefore satisfied.
Many prior UDRP panels have found that a complainant only needs to establish a prima facie case in relation to the second element of the test under paragraph 4(a) of the Policy (see MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205; Mahindra & Mahindra Limited v. RV ABC Consulting Inc., Roy Smith, WIPO Case No. D2010-1576; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). Once a prima facie showing is made, the burden shifts to the respondent to show that it possesses rights or legitimate interests in the disputed domain name.
The present Panel agrees with these holdings and finds that the Complainant has made out a prima facie case here. The Complainant has shown that it registered the PLAVIX mark in multiple jurisdictions as early as 1993, i.e., more than two decades before the Respondent registered the Domain Name incorporating that mark. It follows that the Respondent was likely aware of the Complainant’s rights in the PLAVIX mark when registering the Domain Name. Indeed, the reproduction of the Complainant’s mark on the Respondent’s website, in connection with the offering of pharmaceutical products for sale, demonstrates actual knowledge of the mark, and the Complainant’s rights in it, on the Respondent’s part.
The Respondent has failed to provide any evidence of rights or legitimate interests in the Domain Name despite having had the opportunity to do so. In the absence of any contrary evidence, the Panel accepts the Complainant’s representations that the Respondent has no connection to the Complainant or its business, and has received no authorization to use the PLAVIX mark in commerce or otherwise. The Panel also finds no evidence that the Respondent is commonly known by a name corresponding to the Domain Name.
In these circumstances, the Complainant has made out a prima facie case that the Respondent lacks any rights or legitimate interests in the Domain Name, and that case stands unrebutted.
To be sure, the Respondent is using the Domain Name to market or promote products. The Panel finds, however, that this is not a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy, but rather a wrongful attempt to trade off the Complainant’s goodwill in the mark. Such improper use cannot establish legitimate rights or interests in the Domain Name.
This conclusion is supported by the holdings of prior UDRP panels, which have found that domain names identical to a complainant’s trademark carry 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”).
Accordingly, the Complaint succeeds with respect to the second element of the test under paragraph 4(a) of the Policy.
The third element of the test under paragraph 4(a) requires proof that the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out illustrative circumstances that constitute evidence of bad faith registration and use. The Panel finds that the circumstance set out in paragraph 4(b)(iv) has been established here.
As already concluded above, the Domain Name is confusingly similar to the Complainant’s registered trademarks. It resolves to a website that features the Complainant’s mark and offers products that appear to compete with the Complainant’s drug. All of this establishes to the Panel’s satisfaction that the Respondent is intentionally attempting to attract Internet users to the website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark and business. In accordance with paragraph 4(b)(iv) of the Policy, this constitutes evidence of bad faith registration and use – evidence that, in the circumstances here, the Panel finds more than sufficient to carry the Complainant’s burden. Once again, this conclusion is buttressed by the fact, already mentioned above, that since the Domain Name is identical to the Complainant’s mark, it carries a high risk of implied affiliation.
The Panel accordingly concludes that the Complaint also succeeds with respect to the third element under paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <plavix.icu> be transferred to the Complainant.
D. Brian King
Sole Panelist
Date: July 22, 2019