The Complainant is Sanofi-aventis, Gentilly Cedex, France, represented by Bird & Bird Solicitors, France.
The Respondent is Nevis Domains LLC, “Charlestown, Nevis, 0000, KN”, United States of America.
2. The Domain Name and Registrar
The disputed domain name <plavixs.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2006. On March 10, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On March 14, 2006, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 16, 2006.
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”), 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 March 21, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 10, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 11, 2006.
The Center appointed Amund Grimstad as the sole panelist in this matter on April 23, 2006. 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 and its group of companies is the third largest pharmaceutical company in the world and the largest in Europe. It has established presence in more than 100 countries around the globe. The name of the parent company is Sanofi-Aventis.
The Complainant manufactures and sells a number of well known drugs, with eight flagship products. Amongst the flagship products is Plavix. Plavix is a medicine indicated for the prevention of ischemic events caused by atherothrombosis.
Plavix was commercialized in 1998 in the United States. Today, the product is sold in more than 65 countries. Plavix is the Complainant’s best selling product in the US.
The Complainant has registered a large number of national, Community and International trademarks reflecting the term “PLAVIX”. The Complainant owns the United States trademark registration no. 2,042,583. Furthermore, the Complainant has registered the trademark PLAVIX as a Community trademark in the European Union (EU no. 002236578).
The Complainant has registered and has used a number of domain names containing the trademark PLAVIX, among which the following domain names: <plavix.com>, <plavix.net>, <plavix.co.uk>.
5. Parties’ Contentions
A. Complainant
The Respondent’s domain name <plavixs.com> is confusingly similar to the PLAVIX trademark.
The Respondent’s domain name consists of the Complainant’s trademark with the addition of the letter “s” and the gTLD “.com. The trademark PLAVIX is the distinctive element of the Respondent’s domain name. The additions are not sufficient to avoid the finding of similarity.
The Complainant further states that the Respondent should be considered as having no right or legitimate interest in respect of the domain name <plavixs.com. The Complainant has rights in the trademark PLAVIX, which precede the Respondent’s registration of the domain name.
The Complainant argues that the Respondent has failed to show any legitimate interest in the use of the disputed domain name and that the respondent is not using the domain name for a bona fide offering of goods or services.
The Complainant has not authorized the Respondent to use the Complainant’s trademark PLAVIX in a domain name or otherwise.
The Complainant argues that the disputed domain name has been registered and is being used in bad faith. The Complainant requests as remedy the transfer of the disputed domain name to the Complainant. The Respondent is using the domain name to promote PLAVIX related products and also to sell other products which are directly in competition with the products sold by the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain name <plavixs.com> transferred to it, the Complainant must prove the following (the Policy, paragraph 4(a)(i-iii):
- The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
In order for the Complainant to successfully argue that the domain name should be transferred to the Complainant, the domain name must be identical or confusingly similar to a trademark or service mark in which the Complainant has rights. (Policy, paragraph 4(a)(i)).
The domain name <plavixs.com> contains the PLAVIX trademark, thereby creating a similarity to this trademark.
The Respondent uses the trademark with the addition of the letter “s”. The trademark PLAVIX is the distinctive element of the Respondent’s domain name. Both a visual and aural comparison between the trademark and the domain name supports the assertion that the domain name is confusingly similar to the trademark. The mere addition of the letter “s” to the trademark may also be interpreted to be a misspelled genitive suffix of PLAVIX. The addition of the letter “s” does not change the overall impression of the designation as being a domain name connected to the trademark PLAVIX.
The gTLD “.com” is not relevant in assessing whether the domain name is confusingly similar to the Complainant’s trademark.
The use of the trademark in the domain name is likely to create confusion amongst Internet users as to whether the web site to which the domain name resolves is endorsed by or affiliated in some way with the Complainant.
The first requirement of the Policy has therefore been fulfilled.
B. Rights or Legitimate Interests
Secondly, the Complainant must show that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)).
The Respondent appears to be a reseller of the Complainant’s goods, but the Respondent also sells products of competitors of the Complainant. Previous WIPO UDRP panels have found that a reseller can make a bona fide offering of goods and services and can have a legitimate interest in a domain name when the use fits certain requirements. These requirements include that the site associated with the domain name confusingly similar to a trademark should be used only to sell the trademarked goods of the trademark holder, and that the site accurately discloses the registrant’s relationship with the trademark owner. See for example WIPO Case Nos. D2001-0903 and D2002-0095. In the present case the fact that the Respondent is promoting both the Complainant’s products and competing products does not fit to the said requirements.
Based on the record and in the absence of submissions from the Respondent, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Finally, the Complainant must show that the domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
The Complainant’s product and trademark are famous. The Respondent sells the actual products of the Complainant, and thus was most likely aware of the trademark of the Complainant, its reputation in the pharmaceutical industry, its products and its trademarks, when the Respondent registered the domain name.
The Respondent’s domain name is used to direct to a website on which competing products to the Complainant’s products are sold. This constitutes a “commercial” use of the domain name.
The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to an 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 other location (Policy, paragraph 4(b)(iv)).
Further, the Panel agrees with the decision rendered in WIPO Case No. D2000-0163, in which it was established that bad faith may be present where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”.
The use of the trademark PLAVIX with the addition of the letter “s” suggests that the Respondent is deliberately trying to free ride on the goodwill of the Complainant. This leads the Panel to conclude that the domain name was registered and is being used in bad faith.
The third requirement of the Policy has therefore been fulfilled.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <plavixs.com> be transferred to the Complainant.
Amund Grimstad Sole Panelist
Dated: May 8, 2006
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