The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Anton Sivkov of Bogorodsk, the Russian Federation, self-represented.
The disputed domain name <plavix-75.info> is registered with Danesco Trading Ltd. (the “Registrar”).
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 18, 2018, 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 the same date 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 19, 2018.
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 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2018. The Respondent sent two informal email communications to the Center on June 28, 2018. The Respondent did not submit any substantive response. Accordingly, the Center informed the Parties that it would proceed to panel appointment on July 10, 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.
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 August 17, 2016. The disputed domain name resolved to a website selling pharmaceutical products.
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. All of the registrations were made prior to the disputed domain name being registered. 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. Adding the number “75” and the generic Top-Level Domain (“gTLD”) “.info” does not distinguish the disputed domain name. 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 disputed domain name. The Respondent has used shielding service to hide his identity.1 The Complainant did not authorize the Respondent to use its trademark. The Respondent has not made a legitimate non commercial 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 product Plavix being offered on the Respondent’s website is not manufactured by the Complainant. The Respondent is aiming to obtain commercial gain by misleading consumers and diverting them to his 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 a legitimate 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 his 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.
The Respondent did not submit any substantive reply to the Complainant’s contentions.
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 followed by a hyphen and the number “75”, 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 “.info” 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.
Pursuant to the Complainant’s contestations 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.
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 he 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 he provided a substantive 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 his website and sell the products being offered. The combination of the Complainant’s trademark together with the number “75” increases the likelihood of confusion as the Complainant’s Plavix medicine is manufactured at a dose of 75 mg. 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.
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 <plavix-75.info> be transferred to the Complainant.
Nayiri Boghossian
Sole Panelist
Date: July 26, 2018
1 The publicly-available WhoIs information originally listed “Protectservice, Ltd.” of Cyprus as the registrant of the disputed domain name.