Complainant is Novartis AG of Basel, Switzerland, represented by Dreyfus & associés, France.
Respondent is Radu Luca of Bucharest, Romania. 2. The Domain Name and Registrar
The disputed domain name is registered with DomainContext, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2016. On December 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 22, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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” 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 Respondent of the Complaint, and the proceedings commenced on January 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 7, 2017.
The Center appointed Leticia Caminero as the sole panelist in this matter on February 13, 2017. 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
Complainant is Novartis AG, a Swiss company, in pharmaceutical products with head office at Basel, Switzerland. It has an international presence including in Romania, where it has several offices.
Complainant owns numerous RITALIN trademark registrations around the world. Complainant is in particular the owner of the following trademark registrations: European Union Trademark RITALIN with Registration Number 002712818, filed on May 27, 2002 and registered on January 8, 2004 and duly renewed, covering goods in class 5; International Trademark RITALIN designating Romania with Registration Number 278969, registered on January 25, 1964, duly renewed and covering goods in classes 1, 2, 3 and 5.
In addition, Complainant is the owner of the domain name registered on March 6, 2000, which incorporates the trademark RITALIN.
The pharmaceutical product Ritalin is indicated for the treatment of Attention Deficit Hyperactivity Disorder (“ADHD”) and narcolepsy in children and adults. Ritalin was first marketed during the 1950s and is available in over 70 countries. In 2014 sales, Ritalin has been classified among the top 20 pharmaceutical products.
The Respondent registered the disputed domain name on October 7, 2016. The disputed domain name resolves to a website entitled “Ritalin™ (Methylphenidate) Online” commercializing Ritalin-branded products without prescription.
Before starting the present proceeding, Complainant made some efforts to resolve this matter amicably. On October 27, 2016, Complainant sent a cease-and-desist letter to Respondent via registered letter and email on the basis of its trademark rights. The cease-and-desist letter requested Respondent to cease the use of the disputed domain name and to cancel it. Respondent never replied to Complainant’s cease-and-desist letter despite several reminders. 5. Parties’ Contentions A. Complainant
As a first argument, Complainant expresses that the disputed domain name is confusingly similar to the trademark RITALIN in which the Complainant has rights. The disputed domain name entirely reproduces Complainant’s trademark RITALIN. This trademark as being uphold as widely known and recognized across the world by a previous UDRP panel (Novartis AG v. Radu Luca,WIPO Case No. D2015-1029). Complainant argues that the reproduction of its trademark RITALIN with the association of the acronym “adhd”, enhances the risk of confusion. Given that the acronym “adhd” stands for Attention Deficit Hyperactivity Disorder which is a health disorder treated by the medicine RITALIN. Furthermore, Complainant states that previous UDRP panels have found that the use of acronym does not confer any distinctiveness to the disputed domain name, on the contrary leads the public into believing that Respondent is offering services linked to the acronym (La Francaise des Jeux v. Malveau Serge,WIPO Case No. D2008-1928). Complainant also explains that 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 (Accor v. Noldc Inc.,WIPO Case No. D2005-0016). The mere adjunction of a generic Top-level Domain (“gTLD”) such as “.com” is irrelevant as it is well established that the gTLD is insufficient to avoid a finding of confusing similarity (L’Oréal v. Tina Smith,WIPO Case No. D2013-0820; Titoni AG v. Runxin Wang,WIPO Case No. D2008-0820 and Alstom v. Itete Peru S.A.,WIPO Case No. D2009-0877).
Secondly, Complainant claims that Respondent has no rights or legitimate interests in respect to the disputed domain name. Since Respondent is not affiliated with Complainant in any way nor has he been authorized by Complainant to use and register its trademark, or to seek registration of any domain name incorporating said mark and to use photographs of the product belonging to Complainant. Then Complainant cited prior decisions where Panels found that in the absence of any license or permission from Complainant to use such widely-known trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed (Groupe Auchan v. Gan Yu,WIPO Case No. D2013-0188; LEGO Juris A/S v. DomainPark Ltd, David Smith, A Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138). Additionally, the registration of the RITALIN trademark preceded the registration of the disputed domain name for years. The disputed domain name and its website are so similar to the well-known RITALIN trademark of Complainant, that Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name. Likewise, Respondent did not demonstrate use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Consequently, Respondent is making a non-legitimate use of the disputed domain name, with intent for commercial gain to misleadingly divert consumers from Complainant’s official website. Moreover, it is likely that Respondent uses the disputed domain name to possibly sell counterfeit RITALIN products without prescription. Additionally, Respondent never answered to Complainant’s cease-and-desist letter despite Complainant’s reminders. Panels have repeatedly stated that when respondents do not avail themselves of their rights to respond to complainants, it can be assumed that respondents have no rights or legitimate interests in the disputed domain name (AREVA v. St. James Robyn,WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269).
In similar cases involving same Respondent and Complainant, the Panel observed “the danger of diverting customers of the legitimate RITALIN products to a website selling similar products under the trademark RITALIN but not manufactured by the Complainant, which can be hazardous for consumer’s health. The Respondent’s use of a picture of genuine Novartis’ RITALIN medicine pack only contributes to misleading Internet customers”. Consequently, no right was recognized in favor of the Respondent (Novartis AG v. Radu Luca, supra and Novartis AG v. Radu Luca,WIPO Case No. D2016-0087).
Thirdly, Complainant states Respondent registered the disputed domain name in bad faith, since it must have had prior knowledge of its trademark, before registering the disputed domain name. Bad faith can be found where respondent “knew or should have known” of complainant’s trademark rights and, nevertheless registered a domain name in which he had no rights or legitimate interests (Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113). Complainant and its numerous trademarks are widely known throughout the world including Europe. Given this fact, it is impossible that Respondent did not have this trademark in mind while registering the disputed domain name. In light of the reputation of Complainant’s RITALIN trademark, Respondent’s reproduction of the said trademark clearly proves that Respondent was aware of the existence of Complainant’s trademark. Indeed, the latter has registered a domain name which reproduces Complainant’s trademark and additionally resolves to a website commercializing Complainant’s products. Moreover, Respondent has already been involved in two UDRP cases whereby his bad faith behind the registration and the use of the domain names has been recognized by the panels. Furthermore, it is likely that Respondent registered the disputed domain name to prevent Complainant from reflecting its trademark in the disputed domain name. This type of conduct constitutes evidence of Respondent’s bad faith (L’Oreal v. Chenxiansheng,WIPO Case No. D2009-0242). There is no doubt that many Internet users attempting to visit Complainant’s website have ended up on the web pages set up by Respondent. As the disputed domain name is confusingly similar to Complainant’s trademark, previous UDRP panels have ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from Complainant’s site to Respondent’s site” (MasterCard International Incorporated (“MasterCard”) v. Wavepass AS,WIPO Case No. D2012-1765; E, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095). It is more likely than not, that Respondent’s primary motive in registering and using the disputed domain name was to capitalize on or otherwise take advantage of Complainant’s trademark rights, through the creation of initial interest of confusion. Consequently, Respondent both registered and used the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
Complainant bears the burden of proof on each of these elements. Since Respondent did not present a response to the Complaint, the Panel may draw appropriate inferences from such a default. However, Complainant must still support its allegations with actual evidence to succeed in a UDRP proceeding. A. Identical or Confusingly Similar
The Panels finds that the disputed domain name is confusingly similar to several of the Complainant’s trademark RITALIN. The disputed domain name is a complete incorporation of Complainant’s trademark RITALIN, followed by “adhd” which may be attributed to the acronym of the health disorder treated by the medicine RITALIN, finally ending with a gTLD “.com”. Therefore, the Panel concludes that the additional components do not avoid a finding of confusing similarity.
The Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been met by the Complainant. B. Rights or Legitimate Interests
The Panel acknowledges that the disputed domain name has been used for commercial purposes, including the unauthorized use of Complainant’s trademark and photographs of its products. The Panels finds that there is no evidence that Respondent before any notice of the present dispute, used, or made 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. Likewise, there is no evidence that Respondent has been commonly known by the disputed domain name. Consequently, the Panel concludes that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not filed any Response to rebut Complainant’s prima facie case.
The Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been met by Complainant. C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name was registered and is being used in bad faith. Provided that there are previous cases concerning the same parties, the Panel recognizes that Respondent had prior knowledge of Complainant’s trademark RITALIN before the registration of the disputed domain name . Additionally, the apparent unauthorized commercialization of products bearing Complainant’s mark and use of Complainant’s trademark by Respondent through the website at the disputed domain name demonstrates the clear intention to attract, for commercial gain, Internet users to the disputed domain name’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website.
The Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met by Complainant. 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 Complainant.
Leticia Caminero
Sole Panelist
Date: February 27, 2017
Full & Egal Universal Law Academy