WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi v. Genadij Zelenchuk

Case No. D2020-3080

1. The Parties

The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.

The Respondent is Genadij Zelenchuk, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <buyplavix.com> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2020. On November 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 2020, 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 November 19, 2020, 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 November 24, 2020.

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 November 25, 2020. The Center renotified the case on December 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2021.

The Center appointed Mihaela Maravela as the sole panelist in this matter on January 18, 2021. 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 is a French multinational pharmaceutical company ranking 4th world’s largest multinational pharmaceutical company by prescription sales, settled in more than 100 countries on 5 continents and employing 100,000 people. The Complainant engages in research and development, manufacturing, and marketing of pharmaceutical products for sale, principally in the prescription market, but the firm also develops over-the-counter medication. The Complainant offers a wide range of high-growth drugs, including Plavix, an anti-platelet agent indicated for a number of atherothrombotic conditions. The Complainant’s medicine sold under the trademark PLAVIX has been commercialized since 1998, first in the United States of America, and then in Germany and in the United Kingdom, and is now available in over 115 countries.

The Complainant is the owner of various registered trademarks that include PLAVIX in various jurisdictions throughout the world, including the following:

- The European Union Trade Mark registration No. 002236578 for PLAVIX, registered as of April 18, 2002, for products in Class 5;

- The French trademark registration No. 93484877 for PLAVIX, registered as of July 28, 1993, for products in Class 5; and

- The International trademark registration No. 613041 for PLAVIX, registered as of December 27, 1993, for products in Class 5.

The disputed domain name was registered on September 27, 2020, and at the date of the decision is used to direct users to a website in the English language that reproduces the PLAVIX trademark and appears to offer for sale products marketed as Plavix and containing information on the drug.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name entirely reproduces, as the distinctive and dominant component, the PLAVIX trademarks, and the addition of the term “buy” is purely descriptive of the act of purchase on the Internet, hence the disputed domain name is confusingly similar with its trademarks.

With respect to the second element, the Complainant argues that it has never licensed or otherwise authorized the Respondent to use its trademarks or to register any domain name including its trademarks. Also, the Complainant argues that the Respondent has not made a fair use of the disputed domain name as the disputed domain name is used by the Respondent to redirect Internet users to a website offering to sell goods in the pharmaceutical field – and supposedly Plavix products – by illegally riding on the Complainant’s goodwill and reputation. Furthermore, the website at the disputed domain name displays the product PLAVIX along with false, inaccurate, and misleading information which causes irrevocable damage to the Complainant’s reputation and overall goodwill, in addition to being misleading for healthcare professionals and patients, in particular as PLAVIX is sold as a prescription drug.

In what concerns the third element, the Complainant argues that given the famous and distinctive nature of the trademark PLAVIX, the Respondent is likely to have had, at least, constructive, if not actual notice, as to the Complainant’s trademarks at the time he registered the disputed domain name. Also, the disputed domain name has been registered for the purpose of attracting Internet users to the Respondent’s website by creating a likelihood of confusion between the PLAVIX trademarks of the Complainant and the disputed domain name. The Complainant further argues that the website at the disputed domain name directly competes with the Complainant’s renowned activities, hence the Respondent has clearly registered and used the disputed domain name for the purpose of disrupting the Complainant’s business, which constitutes further evidence of bad faith. The Complainant contends that the Respondent is trying to take advantage of the Complainant’s reputation, as the website at the disputed domain name leads to a competing website insofar as the website displays/offers for sale products at lower prices. Also, the website at the disputed domain name displays incorrect and unauthorized medical information about the PLAVIX drug.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Notwithstanding the fact that no Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable” paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.

Here, the Complainant proved rights over the PLAVIX trademark. As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name to the trademarks in which the Complainant holds rights. The disputed domain name incorporates the Complainant’s trademark PLAVIX in addition to the term “buy”.

Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. (See, Aldermore Bank Plc v. Hildegard Gruener, WIPO Case No. D2016-1617).

The fact that a domain name wholly incorporates a complainant’s trademark may be sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. See, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The addition of a descriptive term does not serve to distinguish the domain name from the trademark. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel finds that the addition of the word “buy” does not prevent a finding of confusing similarity. See also Sanofi v. Paul Jackson, WIPO Case No. D2012-1079.

It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark, see section 1.11 of the WIPO Overview 3.0.

This Panel concludes that the disputed domain name is confusingly similar to the trademarks of the Complainant and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a disputed domain name:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The consensus view of UDRP panels on the burden under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has established that it holds rights over the trademark PLAVIX and claims that the Respondent is not sponsored by or affiliated with the Complainant in any way and that the Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the term “plavix”. See ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957.

It is clear from the evidence in the case file that the disputed domain name is currently linked to a website offering PLAVIX medicines for sale. The website at the disputed domain name also contains some background information about PLAVIX, information about the medicine itself and its use (e.g. “Product description”, “Safety information”, “Side effects”, etc.). The Complainant has exclusive rights to the trademark PLAVIX and has not licensed or otherwise permitted the Respondent to use its trademark. There is no indication that the Respondent has registered or used the name “plavix” as a trademark or has ever been known by this name. Under these circumstances, the Panel cannot find that the offering of goods on the website at the disputed domain name is 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 trademark. Also, the Respondent is not an authorized reseller of PLAVIX, and the website does not accurately and prominently disclose the registrant’s relationship with the trademark holder (see Oki Data Americas, Inc. v. ASD, Inc., supra).

By not filing a Response, the Respondent has failed to invoke any circumstance which could indicate the existence of any right or legitimate interest he would have in the disputed domain name; or otherwise rebut the Complainant’s prima facie case that no such rights or legitimate interests exist.

With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

To fulfill the third requirement of the Policy, the Complainant must prove that the disputed domain name was registered and is used in bad faith.

The trademark PLAVIX is well known in the field of pharmaceutical products. (Sanofi v. Paul Jackson, supra). Therefore, the Respondent is most likely to have known of the Complainant, its products and trademarks prior to registering the disputed domain name. Also, the Respondent registered the disputed domain name more than two decades after the Complainant registered its trademarks. In view of the fame of the Complainant’s trademark, there is no doubt that the Respondent was aware of the trademark PLAVIX prior to registering the disputed domain name. This finding of the Panel is also evidenced by the fact that the Respondent’s homepage contains information concerning the product Plavix itself and its use, as well as pictures with the package in which the drug is sold. The reproduction of the Complainant’s trademark on the Respondent’s website, in connection with the offering of pharmaceutical products for sale, demonstrates actual knowledge of the trademark, and the Complainant’s rights in it, on the Respondent’s part. See Sanofi v. Alevtina Markelova, WIPO Case No. D2019-1197.

Also, given the evidence in the case file it appears that the Respondent has, by using the Complainant’s trademarks in its domain name, diverted Internet users to a website offering for sale inter alia PLAVIX drugs, reproducing the Complainant’s trademark and the description of the respective product, which is being offered for sale thereby intentionally creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website for commercial gain. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. Similarly, Sanofi v. Alla Landau, WIPO Case No. D2019-0168.

The Respondent has not put forward any argument to attempt to explain or defend its unauthorized use of the Complainant’s trademarks in the disputed domain name.

For the reasons above, the Panel concludes that the Respondent must have been aware of the Complainant’s trademarks at the time it registered the disputed domain name. Accordingly, and because the Respondent has also used the disputed domain name in bad faith to attract Internet users to a competing website offering for sale PLAVIX drugs, the Panel finds that the Complainant has satisfied its burden of proving that the Respondent registered and is using the disputed domain name in bad faith.

The Panel concludes that the disputed domain name was registered and is being used in bad faith.

7. Decision

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 <buyplavix.com> be transferred to the Complainant.

Mihaela Maravela
Sole Panelist
Date: February 1, 2021