WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novartis AG v. Oscar Tejero
Case No. D2001-1336
1. The Parties
1.1 The Complainant is Novartis AG, a corporation organized and existing under the laws of Switzerland, having its principal place of business in Basel, Switzerland.
1.2 The Respondent is Oscar Tejero, an individual having an address at Halcon 18, Valdemorillo, Madrid, Spain.
2. The Domain Name and Registrar
The domain name at issue is , which domain name is registered with R, Inc. ("R"), based in New York, New York, United States of America.
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on November 8, 2001, and the signed original together with four copies forwarded by express courier was received on November 13, 2001. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated November 15, 2001.
3.2 On November 16, 2001, a Request for Registrar Verification was transmitted to the registrar, R, requesting it to, among other things: (1) confirm that the domain name at issue is registered with R; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar�s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.
3.3 On November 16, 2001, the Registrar confirmed by reply e-mail that the domain name at issue is registered with R, is currently in active status, and that the Respondent is the current registrant of the domain name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.4 The WIPO Center determined that the Complaint satisfied the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Uniform Rules, and the Supplemental Rules. The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
3.5 No formal deficiencies having been recorded, on November 21, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, R and ICANN), setting a deadline of December 11, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by courier and by e-mail to the e-mail addresses indicated in the Complaint. In any event, evidence of proper notice is provided by the evidence in the record of the Respondent�s participation in these proceedings.
3.6 A Response was received on December 11, 2001. On December 12, 2001, the WIPO Center sent the Respondent an Acknowledgement of Receipt (Response) and a Notice of Deficiency, advising that the Response had failed to identify whether legal proceedings had been commenced or terminated in connection with the domain name.
3.7 On December 13, 2001, the WIPO Center received a Response correcting the deficiency, and indicating that there were no such proceedings.
3.8 On December 13, 2001, the WIPO Center responded to a request from the Respondent, requesting that the proceedings be conducted in the Spanish language. The Center advised the Respondent that as the language of the registration agreement was English, the proceedings are to be held in English unless the Panel determines otherwise, citing Uniform Rules, Rule 11(a).
3.9 On January 8, 2002, having received M. Scott Donahey�s Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which M. Scott Donahey was formally appointed as the Sole Panelist. The Projected Decision Date was January 22, 2002. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.
4. Factual Background
4.1 Complainant registered the trademark NOVARTIS with the World Intellectual Property Organization in conjunction with the Madrid Protocol by application dated February 15, 1996. The registration was notified on December 12, 1996, and rectified on January 5, 1997 (Complaint, Annex 3).
4.2 Complainant registered the trademark NOVARTIS with the Office for Harmonization in the Internal Market of the European Community, with an effective registration date of June 25, 1999. The application was filed July 5, 1996, and was published on January 4, 1999 (Complaint, Annex 3).
4.3 Complainant registered the domain name on April 2, 1996, and the domain name on April 25, 1998 (Complaint, Annex 4). Complainant's Spanish subsidiary also registered . The Spanish subsidiary had four trade names in Spain that were published in the Official Gazette as of December 17, 1997 (Complaint, Annex 5).
4.4 Complainant is a multi-national pharmaceutical company based in Basel, Switzerland, and is listed on the Swiss Stock Exchange and the New York Stock Exchange. For the year 2000, Complainant had US $17.2 billion in sales and US $3.9 billion in net income. Complainant operates in 140 countries around the world including Spain, the domicile of the Respondent.
4.5 Respondent registered the domain name at issue, , on December 7, 1999.
4.6 Respondent filed an application for a national trademark with the Spanish Patent and Trademark Office on August 16, 2000. At the time of the application, Respondent claims that Complainant had yet to furnish Respondent with proof of the existence of Complainant's trademarks, and Respondent contends that he was unaware of Complainant's trademarks at that time. Complainant submitted a challenge to Respondent's application. Respondent's application was denied on May 21, 2001, which denial was published in the June 16, 2001, Edition of the Spanish Official Gazette (Complaint, Annex 6).
4.7 Respondent registered the domain name at issue and applied for application of the trademark with the intent that it be used in the offering of unidentified goods and services in the telecommunications area, and Respondent is "developing a radiophonic project addressing new technologies." Respondent concedes that he has made no use of the domain name at issue in the more than two years since its registration. Respondent contends that he made studies to use the domain name, but failed to produce such studies.
5. Parties� Contentions
5.1 Complainant contends that Respondent has registered a domain name that is identical to the trademarks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
5.2 Respondent contends that he registered the domain name at issue without knowledge of Complainant's trademark rights, that Respondent intended to use the trademark in a legitimate business, and that Respondent registered the domain name in good faith.
6. Discussion and Findings
6.1 Rule 11(a) provides: "Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding." In its Response, filed in English, Respondent requests that the proceedings be held in Spanish, noting that Complainant has two Spanish subsidiaries. Since the request is made late in the proceedings, since Complainant's representative is based in Switzerland, and not Spain, and since the only item remaining is the completion of the decision, the Panel elects to follow the general rule which requires that the language of the proceeding be that of the registration agreement.
6.2 Rule 15(a) instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
6.3 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
3) that the domain name has been registered and is being used in bad faith.
6.4 It is clear that the domain name at issue is identical or confusingly similar to the mark in which Complainant has rights. Respondent does not dispute this.
6.5 Respondent contends that it has rights and interests in respect of the domain name in that it intends to use the domain name in the future in conjunction with a business related to the telecommunications field. Numerous panels have held that registration without use cannot constitute a legitimate interest. (See, e.g., Adobe Systems Incorporated v. Domain OZ, ICANN WIPO Case No. D2000-0057.) "Where a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion." "Evidence in the form of documents or third party declarations should be furnished in support of such assertions. A panel is not required to blindly accept assertions offered by a respondent, any more than it is required to accept unsupported assertions offered by a complainant." (See Do the Hustle, LLC v. Tropic Web, ICANN Case No. D2000-0624, �� 6.15 and 6.14.) Respondent has failed to offer such concrete evidence.
6.6 Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue.
6.7 The question that remains is "Has the domain name at issue been registered and is it being used in bad faith?"
6.8 Respondent's conduct does not come clearly within any of the examples of bad faith registration and use offered at paragraph 4(b) of the Policy. However, those examples are intended to be illustrative, rather than exhaustive. (See Telstra Corporation Limited v. Nuclear Marshmallows, ICANN WIPO Case No. D2000-0003 - "Telstra"). In Telstra it was established that "inaction can constitute bad faith use," and the Telstra decision has since been cited numerous times for that proposition and followed by subsequent panels. Telstra decided that whether "inaction" could constitute bad faith registration and use could only be determined by analyzing the facts in a given case.
6.9 In the present case the Panel finds that Complainant not only held registered trademarks effective in and had operations in Spain at the time that Respondent registered the domain name at issue, but also that Complainant had registered and , well prior to Respondent's registration of . The Panel finds that Respondent's contention that it was unaware of Complainant's rights in the trademark at the time it registered the domain name at issue to be incredible. If Respondent had done any trademark search of European Community marks or Madrid Protocol marks it would have discovered Complainant's rights. Moreover, if Respondent entered "novartis" on R's website, Respondent would have been notified that and had been taken, and could easily have found, through one click, that Complainant was the registrant. Respondent is charged with knowledge of Complainant's mark. (See Medisite S.A. R.L. v. Intellisolve Limited, ICANN WIPO Case No. D2000-0179.) Such knowledge of confusing similarity between domain names has been found to constitute bad faith registration and use. (See Fiber-Shield Industries, Inc. v. Fiber Shield LTD, ICANN Case No. FA92054.)
6.10 Respondent registered the domain name at issue and has made no use of the domain name in the more than two years since its registration. Failure to make use of the domain name over such a period has been held to be a factor in a finding of bad faith registration and use. (See Medisite S.A. R.L. v. Intellisolve Limited, ICANN WIPO Case No. D2000-0179.)
6.11 Accordingly, based on the above facts, the Panel finds that Respondent has registered and is using the domain name at issue in bad faith.
7. Decision
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical to the mark in which Complainant has rights, that Respondent has no rights to or legitimate interests in respect of the domain name at issue, and that Respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, and paragraph 15 of the Uniform Rules, the Panel requires that the registration of the domain name be transferred to Complainant.
M. Scott Donahey
Sole Panelist
Dated: January 11, 2002
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