The Complainant is Novartis AG of Basel, Switzerland and Novartis Corporation of Summit, New Jersey, United States of America (“United States”), represented by Dreyfus & associés, France.
The Respondent is Amy Tucker, Macroserve of Cambridge, Massachusetts, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2017. On October 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar 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” 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 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2017.
The Center appointed David Perkins as the sole panelist in this matter on December 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 4.A Complainants
4.A.1 The Complainants are Novartis A.G. of Basel, Switzerland and its wholly owned subsidiary, Novartis Corporation of New Jersey, United States. As will be noted below, they are the proprietors of the registered trade mark RITALIN in, respectively, Switzerland (and other jurisdictions) and the United States.
4.A.2 Novartis A.G. (“Novartis”) was created in 1966 from the merger of Ciba-Geigy and Sandoz. It originated as three companies, Geigy a chemicals and dyes trading company founded in Basel in the mid‑18th Century; Ciba a dye manufacturing company founded in 1859 and Sandoz a chemical company founded in 1886. Today, it is a global healthcare company. It employs some 123,000 people of 142 nationalities and in 2016 its products were sold in approximately 155 countries worldwide to approximately one billion people. For the purposes of this Decision, Novartis AG and Novartis Corporation are referred to collectively as ‘Novartis’.
A.4.3 From Annex 3 to the Complaint, it is noted that Novartis has operations at some 24 different locations in the United States, including Cambridge, Massachusetts. The Respondent’s address is given in the WhoIs for the disputed domain name as Cambridge, Massachusetts.
4.A.4 Among Novartis many pharmaceutical products is RITALIN. RITALIN is indicated for the treatment of attention deficit syndrome (ADHD) and narcolepsy in both children and adults. It was first marketed in the 1950s and is available in over 70 countries. The Complaint states that in 2014 RITALIN was “classified among the top 20 pharmaceutical products.” The RITALIN trade marks
4.A.5 The Complaint states that the Complainants own numerous trade mark registrations for RITALIN around the world. Exhibited to the Complaint are particulars of the following registrations.
Jurisdiction
Registration Number
Mark
Class of Goods
Dates filed/registered
United States
517,928
RITALIN
5
Filed: July 9, 1948
Registered November 22, 1949
International Registration
(IR)** 689,728
RITALIN
5
Registered February 13, 1998
* The proprietor of the United States RITALIN registration is Novartis Corporation.
** The proprietor of the RITALIN IR is Novartis A.G. The mark is registered in Switzerland and some 13 other jurisdictions.
The RITALIN domain names
4.A.6 Novartis A.G. is the registrant of the domain names created on April 11, 2000 and created on March 6, 2000. 4.B Respondent
4.B.1 In the absence of a Response, what is known of the Respondent is derived from the Complaint and its annexes.
4.B.2 The disputed domain name was registered on April 19, 2017.
4.B.3 That domain name resolves to a website depicting the Complainants’ RITALIN product and logo offering sales of that product online.
4.B.4 A “Cease & Desist” letter was sent to the Respondent dated May 23, 2017, with reminders on May 30 and June 6, 2017. No Response was received from the Respondent to that letter or to the reminders. 5. Parties’ Contentions. 5.A Complainants
5.A.1 Consolidation
The Complainants request that the Complaint filed, as noted above, by Novartis A.G. and by Novartis Corporation be consolidated on the ground that they constitute an “entity” for the purposes of paragraph 3(c) of the Rules. Three decisions under the Policy are cited in support. One of them, L’Oréal, Laboratoire Garnier et Compagnie, Lancôme Parfums et Beauté et Compagnie v. Zhao Ke, Zeng Wei, Zhu Tao, Yang Yong, Ma Yun, Ye Genrong, Ye Li, ChinaDNS Inc., DomainJet, Inc., Hao Domains Services,WIPO Case No. D2011-1608 concerned consolidation against a number of respondents. The other two concerned consolidation of complainants where the several trade mark registrations relied upon were owned by entities in the same corporate group, namely L’Oreal: L’Oréal, Helena Rubinstein, Lancôme Parfums et Beauté & Cie. v. Spiral Matrix,WIPO Case No. D2006-0869 and Lancôme Parfums Et Beauté Et Compagnie, Laboratoire Garnier EtCompagnie, L'Oréal S.A. v. Cong Ty Co Phan Phununet,WIPO Case No. D2010-0603. The decision inWIPO Case No. D2006-0869 cited two earlier decisions where, in the same circumstances, consolidation was allowed applying the “one entity” finding. They were Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri,WIPO Case No. D2002-0760 and Compagnie Générale des Etablissements Michelin CGEM – Michelin & CieMichelin Recherche et Technique S.A.v. Horoshiy Inc.,WIPO Case No. D2004-0752.
5.A.2 Identical or Confusingly Similar
5.A.2.1 The Complainants’ case is that the disputed domain name incorporates its RITALIN trade mark in its entirety and that, for the purposes of the Policy, the generic words “buy” and “online” should be ignored, as should the use of hyphens.
5.A.2.2 Further, that the likelihood of confusion is reinforced by the content of the website to which the disputed domain name resolves. The content of that website is described in paragraph 4.B.3 above.
5.A.3 Rights or Legitimate Interests
5.A.3.1 The Complainants’ case here is as follows. First, the Complainants have neither licensed nor otherwise authorised the Respondent to use the RITALIN trade mark. Further, the Respondent has no affiliation with the Complainants, or either of them.
5.A.3.2 Second, the Respondent has no prior rights in the RITALIN trade mark, which was registered many years before registration of the disputed domain name in April 2017. See, in that respect, paragraph 4.A.5 above.
5.A.3.3 Third, the Respondent’s use of the disputed domain name is not bona fide. Not only is online sale of a prescription medicine like RITALIN not permitted, but also — as noted above — use of the confusingly similar disputed domain name will likely confuse Internet purchasers into believing that the offer to sell is coming from the Complainants. In the circumstances, the Respondent cannot demonstrate rights or legitimate interests under either of paragraphs 4(c)(i) or (iii) the Policy.
5.A.3.4 Fourth, the Complainants say that an email server has also been configured on the disputed domain name and, consequently, there may be a risk that the Respondent is engaged in a phishing scheme, especially in view of the content of the webpage to which it resolves.
5.A.3.5 Finally, that the Respondent’s failure to respond to the “Cease & Desist” letter sent on behalf of the Complainants— see, paragraph 4.B.4 above — is inconsistent with any entitlement to rights or legitimate interests in the disputed domain name.
5.A.4 Registered and Used in Bad Faith
5.A.4.1 Given that Novartis is a very well-known healthcare company and that its RITALIN products have been sold since the mid-1950s in many countries worldwide, including in the United States — the Respondent’s country of residence – the Complainants say that it is inconceivable that the Respondent was unaware of the RITALIN trade mark when registering the disputed domain name. This is reinforced, the Complainants say, by the fact that the disputed domain name incorporates the RITALIN trade mark in its entirety and that it resolves to a page wrongly offering RITALIN products (or their imitation) without a prescription. That webpage even depicts Novartis’ RITALIN products and logo — see, paragraph 4.B.3 above.
5.A.4.2 Further, the Complainants say that even a quick trade mark search would have revealed the RITALIN registrations and the Complainants as the registered proprietors.
5.A.4.3 Still further, the Complainants submit that the Respondent’s failure to response to Complainant’s cease-and-desist letter is indicative of bad faith.
5.A.4.4 The Complainants say that the Respondent’s lack of rights or legitimate in the disputed domain name is indicative of bad faith use.
5.A.4.5 The Complainants further submit that the content of the Respondent’s said website — described in paragraphs 4.B.3, 5.A.3.3, 5.A.3.4 and 5.A.4.1 above — demonstrates circumstances evidencing bad faith use of the disputed domain name under paragraph 4(b)(iv) of the Policy.
5.A.4.6 Finally, the Complainants also submit that the Respondent registered the disputed domain name to prevent them from reflecting the RITALIN trade mark in that domain name within paragraph 4(b)(ii) of the Policy. 5.B Respondent
As noted, the Respondent has not submitted a Response. 6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
(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 has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
6.5 Request for Consolidation
6.5.1 As noted in paragraph 5.A.1 above, the Complainants’ case is that consolidation should be permitted under paragraph 3(c) of the Rules. While this Panel is not altogether persuaded by the “one entity” approach adopted by earlier panels in the cited decisions, the Panel would in any event allow the Request under its general discretion to consolidate contained in paragraph 10(e) of the Rules applying the guidance contained in section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”). That section reads:
“In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether
(i) complainants have a specific common grievance against the respondent or the respondent has engaged in common conduct that has affected the complainants in a similar fashion; and
(ii) it would be equitable and procedurally efficient to permit the consolidation.”
In the Panel’s view, in the circumstances of this Complaint, the Complainants meet both the above considerations. 6.A Identical or Confusingly Similar
6.A.1 The Complainants clearly have trade mark rights in the RITALIN mark.
6.A.2 Since the disputed domain name contains that trade mark in its entirety, it is confusingly similar to that mark.
6.A.3 Additionally, the Complainants’ case summarised in paragraph 4.A.2.2 is, in the Panel’s opinion, well made out.
6.A.4 Accordingly, the Complaint meets the requirements of paragraph 4(a)(i) of the Policy. 6.B Rights or Legitimate Interests
6.B.1 The Panel finds that the Complainants’ case summarised in paragraph 5.A.3 above is well made out.
6.B.2 Accordingly, the Complaint satisfies paragraph 4(a)(ii) of the Policy. 6.C Registered and Used in Bad Faith
6.C.1 With the exception of the submission in relation to paragraph 4(b)(ii) of the Policy, the Panel finds that the Complainants’ case summarised in paragraph 5.A.4 above is also well made out. Indeed, on the facts before it, the Panel cannot conceive of any circumstances in which the Respondent could show good faith registration or use of the disputed domain name.
6.C.2 Accordingly, the Complaint satisfies paragraph 4(a)(iii) 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 Novartis A.G..
David Perkins
Sole Panelist
Date: December 27, 2017
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