WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novartis International AG v. Chiron INC
Case No. D2007-0898
1. The Parties
The Complainant is Novartis International AG, Basel, Switzerland, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Chiron INC, Quebec, Canada.
2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2007. On June 21, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On June 21, 2007, Network Solutions, 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”), 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 June 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 19, 2007.
The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on August 1, 2007. 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 Swiss company that is a famous international manufacturer and supplier of pharmaceuticals, generics, vaccines and medication. In 2006 it acquired the remaining 58% that it did not then own of Chiron Inc., a company incorporated in the United States of America (“Chiron”). Chiron was itself famous, as in 1986 it discovered the hepatitis C virus leading to the development of the first test to screen blood for the virus.
Chiron and consequently the Complainant have trademark interests in a large number of trademark registrations around the world for CHIRON. It is not necessary to list them all here, but some of the most significant of these trademarks are as follows:
(a) Registered trademark No.1, 454,789 for CHIRON registered with the United States Patent and Trademark Office) (“USPTO”) on September 1, 1987;
(b) Registered trademark No. 1,773, 951 for CHIRON registered with USPTO on June 1, 1993;
(c) Registered trademark No. 1, 942, 920 for CHIRON registered with USPTO on December 19, 1995.
Chiron also registered the domain name in 1996 and Chiron and the Complainant have subsequently maintained a website at “www.” which provides consumer information on Chiron goods and services.
The Respondent registered the disputed domain name on August 15, 1997.
5. Parties’ Contentions
A. Complainant
The Complainant alleges that the contentious domain name should no longer be registered with the Respondent, but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of Paragraph 4(a) of the Policy, the domain name is identical or confusingly similar to the Complainant’s registered trademark CHIRON, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on the registered CHIRON trademarks to which reference has already been made (together referred to as “the trademark”). It then says that it is self-evident that the domain name, is identical or confusingly similar to the CHIRON mark because the domain name contains the entirety of the trademark.
The Complainant then contends, to establish the second element, that the Respondent has no rights or interests in the domain name because the facts show that the Respondent must have been aware of the world-renowned fame of the trademark at the time of the registration of the domain name; there is no relationship between the Complainant and the Respondent giving rise to a licence, permission or authorization for the Respondent to use the trademark; the Respondent has no legitimate right to use the mark and there is no evidence to suggest that the Respondent is known by the domain name or has ever done business under that name.
Finally, the Complainant contends that the domain name was registered and is being used in bad faith. It contends that this is so because the Respondent is using the entirety of the trademark in the domain name, is using the domain name to direct internet traffic to other websites based on confusion with the Complainant’s trademark, is profiting by click-through revenue generated by displaying those links and has provided a false email address, all of which are said to be evidence of bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and past UDRP panels have said many times that despite the absence of a submission from a Respondent, a Complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.
However, as the Panel will illustrate later, it is possible to draw inferences from the evidence that has been submitted and in some cases from silence. Indeed, Paragraph 14 of the Rules incorporates both of those notions into the procedures of the Panel.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the Complainant to succeed it must prove, within the meaning of Paragraph 4(a) of the Policy, that:
A. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
B. The Respondent has no rights or legitimate interests in respect of the domain name; and
C. The domain name has been registered and is being used in bad faith.
It is to be noted that Paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.
A. Identical or Confusingly Similar
The Panel finds that the domain name is identical to the Complainant’s trademark CHIRON because it incorporates the whole of the trademark into the domain name. The domain name itself consists entirely of the trademark, except for the gTLD suffix “. net” and it has long been held that suffixes of that sort are to be ignored for the purpose of making the comparison.
The Complainant has therefore made out the first of the three elements that it must establish.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.
But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to 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 you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
Thus, if a respondent proves any of these elements or indeed anything else that shows it has a right or legitimate interest in the domain name, the complainant will have failed to discharge its onus and the complaint will fail.
The Panel’s task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when the registrant is in default and does not file a Response or any other form of submission. The Respondent in the present case was given notice that it had until July 17, 2007 to send in its Response, that it would be in default if it did not do so and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.
It is also well established that, as it is put in paragraph 2.1 of theOverview of WIPO Panel Views on Selected UDRP Questions, “…a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name.
The Respondent chose, without the Complainants’ authorization, the famous CHIRON name and trademark as its domain name. It then linked the domain name to a “link farm” website containing links to businesses providing services in direct competition to the Complainant and other goods and other services to which the Complainants’ own name has been falsely linked.
It has been held many times that, as it was put in Baudville, In. v. Henry Chan, WIPO Case No. D2004-0059, “…no rights or legitimate interest derive from this type of use of another’s trademark”. Accordingly, the conduct of the Respondent calls for an explanation, which the Respondent could have given but has not. In the absence of such an explanation by the Respondent, the Panel draws the inference that “any evidence of the Respondent would not have been in [its] favour”: Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273.
The Respondent has not made any attempt to rebut this prima facie case, and the Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain name.
The Complainant has therefore established the second of the three elements that it must establish.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Paragraph 4(b) of the Policy sets out four circumstances, any one of which is evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
“(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to 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 site or location.”
The Panel finds that the Complainant has made out its case under paragraphs 4(b)(iii) and (iv) of the Policy.
Paragraph 4(b)(iii)
With respect to paragraph 4(b)(iii), the Panel finds, first, that the Respondent in all likelihood registered the domain name knowing full well of the existence and fame of the CHIRON trademark as a prominent name in the field of blood safety and in particular with reference to Chiron’s recent discovery of the hepatitis C virus leading to the development of the first test to screen blood to detect that disease. Secondly, the Panel therefore infers that the Respondent’s intention was to divert part of the Complainant’s potential market for its products in that and other fields to the Respondent’s own advantage by obtaining click-through revenue for internet traffic to the Respondent’s website and to other sites to which that site has been linked. It is difficult to believe that the domain name was registered for any reason other than to attract potential users to those websites and to make money from doing so.
The reality is that Chiron, its name and renown in medical science and its trademark CHIRON had became famous long before the registration of the domain name and it was in all likelihood chosen by the Respondent with the intention of trading on it and attracting internet users because of its fame. Those internet users, attracted to the domain name, would otherwise have been potential customers of the Complainant's and to divert them in this way and direct potential customers away from the Complainant and towards rival suppliers of similar goods and services can only be described as disrupting the business of the Complainant as a competitor.
It would be difficult, therefore, to contemplate a more obvious case of disrupting a trademark owner’s business than to urge potential customers not to buy its goods and services but rather to buy alternative products from rival manufacturers. That is clearly what the Respondent is doing and what the Panel finds that it intended to do.
Accordingly, the domain name was registered ‘… primarily for the purpose of disrupting the business of …” the Complainant.
Paragraph 4(b)(iv)
With respect to paragraph 4(b)(iv), the Panel finds that the Respondent’s actions also constitute bad faith in both registration and use within the meaning of paragraph 4(b)(iv) of the Policy. The reasons why that element has been made out are as follows.
First, the Respondent has undoubtedly been attempting to attract internet users to its website within the meaning of paragraph 4(b)(iv), both with respect to the registration of the domain name and its use. Looking at the website to which the domain name resolves, it is impossible to accept that this was done for any reason other than commercial gain in one form or another.
Secondly, by using the entirety of Complainant’s trademark CHIRON as its domain name, the Respondent created the likelihood of confusion with the trademark.
Thirdly, the confusion likely to be created is confusion with the CHIRON mark about the affiliation of various goods and services on the Respondent’s website and as to whether they are the Complainant’s products or endorsed by it or are in some way associated with it. Clearly, consumers who are using the disputed domain name have arrived at the website because they are seeking a specific company and brand name that they know exists, namely Chiron. When the website promotes goods and services described as “Chiron Products”, “Chiron Research” and “Chiron Stock”, as it does, consumers are entitled to believe that these goods and services are those of Chiron itself, which they are not.
When consumers also see pharmaceutical, medical and other products promoted on the website and the other sites to which it is linked, under headings like “Vaccines”, “Generic Pharma Products” and “Tissue Products”, they will in all probability assume that those goods and services are also being promoted or provided with the imprimatur of the Complainant and Chiron, which they are not.
There is therefore clear scope for confusion as to whether the goods and services being promoted on the website are associated with Chiron and the Complainant or not.
The Panel finds that these circumstances create confusion with the Complainant’s trademark as to the sponsorship, affiliation and endorsement of the Respondent’s site and the products and services on it and that the Respondent must be taken to have intended this confusion and to have been doing it for commercial gain in one form or another.
The facts therefore come within paragraph 4(b)(iv) of the Policy and constitute bad faith both in registration and use, a conclusion that has often been reached by UDRP Panels on analogous facts; see for example: Identigene, Inc. v. Genetest Laboratories WIPO Case No. D2000-1100; MathF v.Weiguang Huang, WIPO Case No. D2000-0743 and IndyMac Bank v. F.S.B. v. Jim Kato, FA 190366 (Nat. Arb. Forum). In this regard, the comments of the panelist in Identigene, Inc. v. Genetest Laboratories (supra) are apposite:
“Complainant has alleged and the Panelist finds that Respondent’s use of the domain name at issue to resolve to a website where services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site. This constitutes evidence of bad faith registration and use under the Policy, Paragraph 4(b)(iv). InfoS, Inc. v. Hari Prakash, WIPO Case No. D2000-0076; America Online Inc .v. Cyber Network LLP, WIPO Case No. D2000-0977”.
There are many other UDRP decisions to comparable effect, including the cases cited by the Complainant, Hallelujah Acres, Inc., v. Domainqueue c/o Domain Admin, FA 558207 (Nat. Arb. Forum); PRL USA Holdings, Inc., v. LucasCobb, WIPO Case No. D2006-0162 and Nintendo of America, Inc., v. P .et al., WIPO Case No. D2001-1020.
The Panel also accepts the submission of the Complainant that as the Respondent provided a false email address on registration of the domain name, that fact is also evidence of bad faith in the registration and subsequent use of the domain name; see the cases cited by the Complainant, Playboy Enterprises International, Inc., v. Universal Internet Technologies, Inc., WIPO Case No. D2001-0811 and Sources Minerales SA v. Jorge Clapes, WIPO Case No. D2001-0680.
For these reasons, the Panel finds that the Respondent both registered and used the domain name in bad faith and that the Complainant has therefore made out the third of the three elements that it must prove.
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 be transferred to the Complainant.
The Honourable Neil Anthony Brown QC
Sole Panelist
Dated: August 21, 2007
Full & Egal Universal Law Academy