Complainant is Sanofi of Paris, France, represented by Darkanian & Pfirsch A.A.R.P.I., France.
Respondent is Michael Tycoon of Groningen, the Netherlands.1
The disputed domain name <cheapplavix.com> is registered with Rebel.com Corp. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2012. On March 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 16, 2012, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 11, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 12, 2012.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on April 20, 2012. 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.
Complainant is a multinational pharmaceutical company based in France with presences in more than 100 countries belonging to the world’s leading pharmaceutical groups.
Complainant offers a wide range of pharmaceutical products including “Plavix”, a medicine indicated e.g. for the prevention of atherothrombosis, which is among the world’s leading medicines available in more than 115 countries.
Complainant is the registered owner of numerous trademarks relating to the designation “Plavix”, including the following:
- Word mark PLAVIX, Office for the Harmonization in the Internal Market (OHIM), Registration Number: 002236578, Registration Date: April 18, 2002; Status: Active;
- Word mark PLAVIX, World Intellectual Property Organization (WIPO), Registration Number: 613041, Registration Date: December 27, 1993; Status: Active;
- Word mark PLAVIX, United States Patent and Trademark Office (USPTO), Registration Number: 2,042,583, Registration Date: March 11, 1997; Status: Active.
Complainant has also registered numerous domain names relating to the PLAVIX trademark, including in particular <plavix.com>, <plavix.info>, <plavix.net>, <plavix.org> as well as <plavix.us>.
The disputed domain name <cheapplavix.com> was registered on November 11, 2010, and redirected on March 12, 2012 to a website at “www.cheapplavix.com” which in turn redirected Internet users to an online pharmacy offering generic and counterfeit “Plavix” medicine as well as pharmaceutical products of Complainant’s competitors for online sale.
On March 28, 2012, the Center received an email from Abbott Medical Optics of Groningen stating that the address put down for Respondent in the WhoIs register of the disputed domain name belongs to the said company where a Michael Tycoon is unknown.
Complainant requests the disputed domain name to be cancelled.
Complainant asserts that the disputed domain name is confusingly similar to Complainant’s PLAVIX trademark because (1) the disputed domain name is composed of Complainant’s PLAVIX trademark and the generic word “cheap” which is not capable to distinguish the disputed domain name from Complainant’s PLAVIX trademark, and (2) both the “Plavix” product as well as the PLAVIX trademark are well established and notorious all over the world.
Complainant further suggests that Respondent has no rights or legitimate interests in respect of the disputed domain name because (1) Respondent name has not any resemblance with the PLAVIX trademark, (2) Complainant has never granted Respondent any license or other authorization to use its PLAVIX trademark and finally (3) Respondent uses the disputed domain name to redirect Internet users to an online pharmacy through which, inter alia, products of Complainant’s competitors are being sold.
Finally, Complainant claims that the disputed domain name was registered and is being used in bad faith since (1) given the worldwide fame of Complainant’s PLAVIX trademark, it is inconceivable that Respondent registered the disputed domain name unaware of Complainant’s rights and reputation in the designation “Plavix”, and
(2) the redirection of the disputed domain name to an online pharmacy to sell counterfeit products or products of Complainant’s competitors demonstrates that Respondent has clearly registered the disputed domain name for the purpose of disrupting Complainant’s business.
Respondent did not reply to Complainant’s contentions.
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if Respondent does not submit a Response, in the absence of special circumstances, the Panel is to decide the dispute solely based upon the Complaint.
The Panel concludes that the disputed domain name <cheapplavix.com> is confusingly similar to the PLAVIX trademark in which Complainant has shown to have rights.
The disputed domain name incorporates the PLAVIX trademark in its entirety. Moreover, it has been held in numerous UDRP decisions and has meanwhile become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9) that the addition of a generic or descriptive term or geographical wording to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Accordingly, the mere addition of the generic term “cheap” is not capable to dispel the confusing similarity arising from the incorporation of Complainant’s PLAVIX trademark into the disputed domain name.
Therefore, the first element under the Policy as set forth by paragraph 4(a)(i) in the case at hand is fulfilled.
The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent made a legitimate noncommercial or fair use without intent for commercial gain.
Complainant has produced evidence that the disputed domain name redirected on March 12, 2012 to a website at “www.cheapplavix.com” which in turn redirected Internet users to an online pharmacy offering generic and counterfeit “Plavix” medicine as well as pharmaceutical products of Complainant’s competitors for online sale.
The Panel, therefore, concludes that Respondent – irrespective of the alleged notoriety of the PLAVIX trademark throughout the world – apparently was aware of Complainant’s PLAVIX trademark at the time of the registration of the disputed domain name and that the latter obviously alludes to Complainant’s PLAVIX trademark and product. The use of the disputed domain name to redirect to an online sales platform of generic and/or counterfeit “Plavix” medicine and/or the pharmaceutical products of Complainant’s direct competitors on the pharmaceutical market is certainly neither noncommercial nor fair use of the disputed domain name without intent for commercial gain.
Moreover, such use is also not fulfilling the requirements of a bona fide offering of goods or services because (1) Respondent obviously has neither been authorized to use Complainant’s PLAVIX trademark as a domain name or on Respondent’s website or in any other way and (2) Respondent is using the disputed domain name for a website that does not accurately and prominently disclose the Registrant’s relationship with the trademark holder (see WIPO Overview 2.0, paragraph 2.3).
Therefore, in the absence of any other reasonable explanation, the use of the disputed domain name by Respondent may neither be deemed legitimate nor noncommercial nor fair.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, Respondent did not reply to Complainant’s allegations as they were included in the Complaint duly notified to Respondent by the Center on March 22, 2012.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy.
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The Panel takes the view that the redirection of the disputed domain name, which is confusingly similar to Complainant’s trademark PLAVIX, to a website for the online sale of generic and/or counterfeit “Plavix” medicine and/or the pharmaceutical products of Complainant’s direct competitors on the pharmaceutical market without Complainant’s permission to do so is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website, by creating a likelihood of confusion with Complainant’s PLAVIX trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or a product thereon. Such circumstances, however, shall be evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy (see also: Sanofi v. Vitalik Tkachok, WIPO Case No. D2011-1818; Sanofi v. Malevitch Viatcheslav, WIPO Case No. D2011-1815).
In connection with this finding, it also carries weight in the eyes of the Panel that Respondent not only kept silent on the Complaint but that he provided improper WhoIs information for the disputed domain name since the address put down in the WhoIs register belongs to the company Abbott Medical Optics Groningen where Respondent apparently is unknown. Such behavior cannot be characterized other than a further indication of an acting of Respondent in bad faith.
Therefore, the Panel finds that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of 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 <cheapplavix.com> be cancelled.
Stephanie G. Hartung
Sole Panelist
Dated: April 27, 2012
1 The term “Respondent” as used by the Panel in the case at hand refers to Michael Tycoon of Groningen, the Netherlands, whose complete contact details were disclosed and confirmed by the Registrar on February 16, 2012.