The Complainant is Novartis AG of Basel, Switzerland, represented by Dreyfus & associés, France.
The Respondent is , Domain Admin,Privacy Protection Service INC d/b/a PrivacyP of Queensland, Australia / Sergei Lir of Blagoveschensk, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2016. On August 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 20, 2016, 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 August 22, 2016 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 amended Complaint on August 24, 2016.
The Center verified that the Complaint together with the amended 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 August 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 15, 2016.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on September 27, 2016. 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 was founded in 1966 from the merger of the companies Ciba-Geigy and Sandoz, and is currently one of the world leaders in the pharmaceutical industry.
The Complainant has used the NOVARTIS trademark for decades and owns international trademark registrations for that brand since at least 1996. For instance, the Complainant is the owner of International trademark no. 666218 NOVARTIS (word mark), registered on October 31, 1996 for services in international classes 41 and 42.
The Respondent registered the disputed domain name on June 30, 2016.
The disputed domain name resolves to a website containing a reproduction of the Complainant’s trademark NOVARTIS, offering pharmaceutical products for sale, in particular “growth hormone”. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant enjoys a worldwide reputation and owns numerous NOVARTIS trademark registrations around the world. The disputed domain name is confusingly similar to the trademark NOVARTIS and reproduces the Complainant’s trademark in its entirety. The addition of the generic term “bio” is insufficient to avoid any likelihood of confusion. Actually, the likelihood of confusion is rather enhanced by the addition of the generic term “bio” since Novartis has established the Novartis International Biotechnology Leadership Camp known as “BioCamp”. The descriptive term “bio” can also refer to Complainant’s environmental activities. Furthermore, previous UDRP panels have come to the conclusion that hyphenation in domain names isinsufficient to distinguish the respondent’s domain names from the complainant’s mark because the dominant portion of each domain name is the complainant’s trademark. The extension “.com” is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademarks and the disputed domain name. The likelihood of confusion emanating from the disputed domain name and its website is strong. The Complainant has used the trademark NOVARTIS in connection with a wide variety of products and services around the world. Consequently, the public has learnt to perceive the goods and services offered under this mark as being those of Complainant. Therefore, the public would reasonably assume that the disputed domain name would be owned by Complainant or at least assume that it is related to Complainant.
- The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with the Complainant in any way nor has it been authorized by Complainant to use and register its trademark, or to seek registration of any domain name incorporating said mark. Furthermore, the registration of the NOVARTIS trademarks preceded the registration of the disputed domain name for years. Additionally, the disputed domain name is so similar to the Complainant’s well-known NOVARTIS trademark that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name. Moreover, the Respondent is not commonly known by the name “Novartis”, in any way affiliated with the Complainant, nor authorized or licensed to use the NOVARTIS trademark, or to seek registration of any domain name incorporating said mark. Additionally, the disputed domain name directs towards a website which displays the Complainant’s logo NOVARTIS as well as images of medical products which have been manipulated to include the disputed domain name. The fraudulent website commercializes drugs under the name of the Complainant. Hence, as a matter of fact, it cannot be inferred that Respondent is making a legitimate noncommercial or fair use of disputed domain name. Also, it seems that the Respondent registered the disputed domain name using a privacy shield service to hide its identity and prevent the Complainant from contacting it. Thus, such a behavior highlights the fact that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The disputed domain name was registered and is being used in bad faith.
- Registration in bad faith. The Respondent knew or should have known of the Complainant’s trademark rights and, nevertheless registered a domain name in which it had no rights or legitimate interests. It is unlikely that the Respondent was unaware of the Complainant when it registered the disputed domain name. Firstly, the Complainant and its numerous trademarks are well-known throughout the world. Secondly, previous UDRP panels have mentioned its worldwide reputation, making it unlikely that the Respondent was not aware of the Complainant’s proprietary rights in the trademark. Thirdly, in view of the composition of the disputed domain name which entirely reproduces the Complainant’s trademark it cannot be inferred that the Respondent was not aware of the Complainant’s existence at time of the registration of the disputed domain name. Finally, with regards to the fake website displaying the Complainant’s logo, description and products, doubts concerning the Respondent’s knowledge about the Complainant’s activities cannot even arise. Furthermore, the Respondent registered the disputed domain name through a privacy shield service to hide its identity and contact details, thus, preventing the Complainant from contacting it, what also indicates registration in bad faith.
- Use in bad faith. Previous UDRP panels have considered that in the absence of any license or permission from the complainant to use such a widely-known trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed. Moreover, it is likely that the Respondent registered the disputed domain name to prevent Complainant from reflecting its trademark in the disputed domain name. There is no doubt that many Internet users attempting to visit the Complainant’s website have ended up on the webpage set up by the Respondent. Indeed, the disputed domain name directs towards a website which displays the Complainant’s logo NOVARTIS as well as images of its medical products which have been manipulated to include the disputed domain name . It also contains information about the Complainant and its products. The fraudulent website commercializes drugs under the name of Complainant and therefore impersonates the Complainant. The Respondent is thus not accurately disclosing its relationship with the trademark by falsely suggesting it is the trademark owner and its website is an official website. Obviously, the Respondent is making a non-legitimate use of the disputed domain name, with intent for commercial gain to misleadingly divert consumers from the Complainant’s official website. Moreover, it is likely the Respondent uses the disputed domain name to sell the Somatropin drug under the Complainant’s NOVARTIS trademark without any authorization that could be hazardous to people’s health. Such behavior cannot be regarded as a legitimate or fair use of the disputed domain name. It is more likely than not, that the Respondent’s primary motive in registering and using the disputed domain name was to capitalize on or otherwise take advantage of the Complainant’s trademark rights, through the creation of initial interest of confusion. Consequently, it is established that the Respondent both registered and used the disputed domain name in bad faith in accordance with Paragraph 4(a)(iii) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Annex 4 to the Complaint shows international registrations of NOVARTIS trademarks obtained by the Complainant since at least 1996.
The trademark NOVARTIS is wholly encompassed within the disputed domain name.
The disputed domain name differs from the Complainant’s trademark only by the addition of a hyphen and the word “-bio” after the element “novartis”, as well as the generic Top-Level Domain (“gTLD”) “.com”.
The Panel also notes that the Complainant has established an international biotechnology leadership camp known as “BioCamp”, and hosts several other environmental initiatives (a field in which the use of the word “bio” is common). On this subject, previous UDRP Panels have found that generic additions do not alter a domain name, so as to avoid confusing similarity. See, e.g., Inter-IKEA Systems B. V. v. Evezon Co. Ltd.,WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc.,WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork,WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc.,WIPO Case No. D2000-0927.
It is also well established that the addition of a gTLD extension such as “.com” is typically considered irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples, without limitation, of how a respondent can demonstrate rights or legitimate interests in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is 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 at issue.
Based on the Respondent’s default and on the prima facie case made out by the Complainant, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.
The present record provides no evidence to demonstrate the Respondent’s intent to use or to make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. In this regard, the Respondent is currently using the Complainant’s trademark NOVARTIS on the website under the disputed domain name in order to offer “growth hormone” for sale, without any authorization.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 the 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, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
When the disputed domain name was registered by the Respondent in June 2016, the trademark NOVARTIS was already well-known worldwide and directly connected to the Complainant’s activities in the pharmaceutical business.
The disputed domain name encompasses the trademark NOVARTIS, together with a hyphen and the generic word “bio”. Also, it resolves to a website that contains a reproduction of the Complainant’s trademark, offering pharmaceutical products for sale. Moreover, at the “Who We Are” section of that website, the Respondent informs that “Novartis-Bio is a global healthcare company based in Switzerland that provides solutions to address the evolving needs of patients worldwide”, and that “Our branch is situated in China Shanghai”. In the Panel’s view this evidence may be regarded as an attempt by the Respondent to impersonate the Complainant.
Therefore, the Panel concludes that it would not be reasonable to conclude that the Respondent was unaware of the Complainant’s trademark, nor that the adoption of the expression “novartis-bio” in the disputed domain name could be a mere coincidence.
Actually, in doing so, the Respondent:
(i) creates a likelihood of confusion with the Complainant’s trademark; and
(ii) potentially obtains revenue selling pharmaceutical products; and
(iii) deprives the Complainant from selling its products to prospective clients who are looking for the Complainant.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element of the Policy. 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 be transferred to the Complainant.
Rodrigo Azevedo
Sole Panelist
Date: October 11, 2016
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