The Complainant is Sanofi of Paris, France, represented by Armfelt (a.a.r.p.i), France.
The Respondent is Malevitch Viatcheslav of Misnkaia Oblast, Belarus.
The disputed domain name <plavixfreeviagra.com> is registered with Dynadot, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2011. On October 24, 2011, the Center transmitted by email to Dynadot, LLC a request for registrar verification in connection with the disputed domain name. On October 25, 2011, Dynadot, LLC transmitted by email to the Center its 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 28, 2011.
The Center appointed Fabrizio La Spada as the sole panelist in this matter on December 5, 2011. 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 multinational pharmaceutical group based in France, formed as the result of a merger between two French companies, Aventis SA and Sanofi-Synthelabo. The Complainant has presence in more than 100 countries worldwide. It is one of the leading pharmaceutical groups in the world.
The Complainant manufactures and sells Plavix, a medicine indicated for the prevention of atherothrombosis-related cardiovascular events. According to evidence produced by the Complainant, Plavix is one of the world's leading medicines, available in more than 115 countries.
The Complainant holds a number of trademark registrations for the word “plavix”, including among others the following:
- PLAVIX French trademark No. 93 484 877 registered on July 28, 1993;
- PLAVIX Community trademark No. 002 236 578 registered on April 18, 2002;
- PLAVIX Belarus trademark No. 613041 registered on December 27, 1993.
The Complainant also registered numerous domain names, including in particular <plavix.com> and <plavix.net>.
The disputed domain name was registered on September 19, 2010. It resolves to a website where pharmaceutical products are sold. The products sold on this website include the Complainant’s Plavix drug, as well as products sold by the Complainant’s competitors.
Concerning the first test under the Policy, the Complainant contends that the disputed domain name is confusingly similar to its PLAVIX trademark. It points out that the disputed domain name consists of the Complainant’s trademark, with the addition of the descriptive word “free” and of the trademark VIAGRA, which is owned by one of its competitors. According to the Complainant, these additions are insufficient to avoid confusing similarity.
Concerning the second test under the Policy, the Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. It states that there is no license, consent or other right by which the Respondent would have been entitled to register or use the disputed domain name. In addition, the Complainant contends that the Respondent’s use of the disputed domain name does not satisfy the test for bona fide use under the Policy. In particular, according to the Complainant, the website to which the disputed domain name resolves is merely a portal for the website of a third party, where products (including products of the Complainant’s competitors) are sold. Moreover, the Complainant stresses that there is no disclaimer on this website setting out that such website has no relationship with the Complainant and is not the, or an official site of the Complainant.
Finally, concerning the third test under the Policy, the Complainant submits that the disputed domain name has been registered and is being used in bad faith. In particular, the Complainant contends that the Respondent was aware of the Complainant’s trademark when it registered the disputed domain name and has been using it to divert Internet users and attract them to an online pharmacy, for commercial gain. In addition, the Complainant points out that the use of the disputed domain name by the Respondent may lead Internet users to believe that the PLAVIX drug is available to sale in all countries without any medical control, whereas this medicine can only be obtained by medical prescription.
Based on these contentions, the Complainant requests that the disputed domain name be cancelled.
The Respondent did not reply to the Complainant’s contentions.
In accordance with paragraph 4(a) of the Policy, in order to succeed in these proceedings and obtain the transfer of the disputed domain name, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A); and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name (see below, section B); and
(iii) the disputed domain name has been registered and is being used in bad faith (see below, section C).
Under paragraph 4(a) of the Policy, the burden of proof with regard to these elements lies with the Complainant.
This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the disputed domain name identical or confusingly similar to such trademark or service mark.
As regards the first issue, the Complainant has provided documentary evidence that it is the owner of numerous PLAVIX trademarks, registered throughout the world.
Concerning the second issue, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s PLAVIX trademark. The disputed domain name incorporates the entirety of the Complainant’s trademark, with two additions: the word “free” and the word “viagra”. As already ruled by numerous WIPO UDRP Panels, the mere addition of generic or descriptive words is insufficient in itself to avoid a finding of confusing similarity (see Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434 and UDRP cases cited therein). The addition of a competitor’s trademark is equally insufficient to avoid a finding of confusing similarity (see Hoffmann-La Roche Inc. v. Charlie Kalopungi, WIPO Case No. D2010-1826 and UDRP cases cited therein).
In view of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In the present case, the Respondent did not file a response. Based on the evidence on record, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
First, the Panel finds that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name is used in connection with an online pharmacy website, where the PLAVIX product is sold without the Complainant’s authorization. In addition, other products, including products manufactured and sold by the Complainant’s competitors, are offered on this website. Moreover, the website contains no indication that it is not operated by, or with the consent of, the Complainant. Such use cannot be considered to be a bona fide use of the disputed domain name (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Lilly ICOS LLC v. Cybernet Marketing/Antoine Tardif, WIPO Case No. D2006-1123).
Second, there is no evidence that the Respondent has been commonly known by the disputed domain name.
Third, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain. On the contrary, the evidence on record shows that the Respondent’s use of the disputed domain name is for commercial gain, as the website to which such domain name resolves is a commercial venture.
For these reasons, and in the absence of a plausible explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(iv) provides as an instance of registration and use in bad faith, circumstances indicating that:
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the respondent’s website or location.”
The Panel is satisfied that these circumstances are fulfilled in this case.
First, the Panel finds that the Respondent must have been aware of the Complainant’s rights in the well-known PLAVIX trademark when it registered the disputed domain name, as is evidenced by the fact that such domain name also incorporates another well-known trademark, VIAGRA, which corresponds to a medical product manufactured and sold by one of the Complainant’s competitors.
Second, the use that is being made of the disputed domain name, i.e. to redirect Internet users to an online pharmacy where the Complainant’s products are sold, alongside other products manufactured by the Complainant’s competitors, is evidence that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark (see Sanofi-Aventis v. Private Whois Service, WIPO Case No. D2011-0888 and UDRP cases cited therein).
A further indication of bad faith registration and use on the part of the Respondent is the fact that the disputed domain name directs Internet users to an online pharmacy, which sells pharmaceutical products without prescription or proof of recommendation by a physician (see Lilly ICOS LLC v. Tudor Burden, Burden Marketing, WIPO Case No. D2004-0794).
For these reasons, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith.
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 <plavixfreeviagra.com> be cancelled.
Fabrizio La Spada
Sole Panelist
Dated: January 9, 2012