The Complainant is Novartis AG of Basel, Switzerland, represented by Dreyfus & associés, France.
The Respondent is NaShan of Shenyang, Liaoning, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the "Registrar"). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on November 7, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 8, 2017, 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. On November 13, 2017, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese of the Complaint, and the proceedings commenced on November 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 13, 2017.
The Center appointed Matthew Kennedy as the sole panelist in this matter on December 18, 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
The Complainant is a pharmaceutical company that supplies products around the world. In China, the Complainant has an office in Beijing, a biomedical research and development center in Shanghai and other development departments near Suzhou. The Complainant owns various trademarks, including International trademark registration number 666218 for NOVARTIS, registered on October 31, 1996, designating multiple jurisdictions, including China, and specifying services in classes 41 and 42. That trademark registration remains current. The Complainant is also the registrant of domain names including , registered on April 2, 1996, that it uses in connection with its official website.
The Respondent is an individual located in China. The disputed domain name was registered on November 11, 2016 and resolves to a parking page displaying links to websites related to the Complainant and its competitors.
The Parties engaged in correspondence prior to the commencement of this proceeding regarding a possible transfer of the disputed domain name. In response to the Complainant's cease-and-desist emails, the Respondent stated that he was willing to transfer, or to consider transferring, the disputed domain name in return for compensation of USD 1,500 (December 20, 2016, in Chinese), USD 800 (March 16, 2017, in Chinese) and USD 500 (August 4, 2017 and August 14, 2017, both in English). 5. Parties' Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant's NOVARTIS trademark. The disputed domain name reproduces that trademark in its entirety. A Top-Level Domain ("TLD") suffix cannot negate identity or confusing similarity where it otherwise exists. In this case, the TLD suffix ".store" creates an association with the way in which the Complainant sells its products, that is, through retail drug stores.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant nor has he been authorized or licensed by the Complainant to use and register its trademark or to seek registration of any domain name incorporating the NOVARTIS trademark. The Respondent is not known by the name "Novartis". The Respondent uses the disputed domain name in connection with pay-per-click links that are likely to generate revenue, which evidences a clear intention for commercial gain.
The disputed domain name was registered and is being used in bad faith. It is implausible that the Respondent was unaware of the Complainant when he registered the disputed domain name. The Complainant is well-known throughout the world and has trademark registrations in many jurisdictions, including China. The disputed domain name is being used to direct Internet users to a parking page with sponsored links to websites related to the Complainant and its competitors. The Respondent offered to sell the disputed domain name for a price in excess of his out-of-pocket expenses. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
Paragraph 11(a) of the Rules provides that "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." The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that English be the language of the proceeding. Its main arguments are that translation of the Complaint into Chinese would impose an undue burden on the Complainant; the disputed domain name is in Latin characters; and two of the Respondent's emails to the Complainant are in English which indicates that he understands that language. The Respondent did not comment on the language of the proceeding.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the Parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel observes that the Complaint in this proceeding was filed in English and that the Respondent has engaged in correspondence with the Complainant in English, which demonstrates that he is able to understand that language. Moreover, having received notice of this proceeding in Chinese and English, the Respondent has expressed no interest in responding to the Complaint or otherwise participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and unnecessary delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. 6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that a complainant must prove each of the following 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
Based on the evidence submitted, the Panel finds that the Complainant has rights in the NOVARTIS trademark.
The disputed domain name wholly incorporates the Complainant's NOVARTIS trademark. The only additional element in the disputed domain name is the TLD suffix ".store". A TLD suffix may generally be disregarded in the comparison between a domain name and a trademark for the purposes of the Policy. See Lego Juris A/S v. Chen Yong,WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei,WIPO Case No. D2014-0080.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent's] use of, or 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; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel has already found that the disputed domain name is confusingly similar to the Complainant's trademark. The Complainant informs the Panel that the Respondent is not affiliated with the Complainant nor has he been authorized or licensed by the Complainant to use and register its trademark or to seek registration of any domain name incorporating the NOVARTIS trademark.
The mere fact that the Respondent has registered the disputed domain name does not confer rights or legitimate interests for the purpose of the Policy. The Policy is intended to provide a remedy for abusive domain name registrations and, if mere registration were a defence, no Complaint could ever succeed, which would be an illogical result. SeePharmacia & Upjohn Company v. Moreonline,WIPO Case No. D2000-0134.
The disputed domain name resolves to a parking page that generates links based on the trademark value of the NOVARTIS trademark. That does not constitute a bona fide offering of goods or services that would create rights or legitimate interests in the disputed domain name for the purposes of the Policy, and it indicates that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Moreover, according to the Registrar's WhoIs database, the Respondent's name is "NaShan" and there is no evidence that he has been commonly known as "Novartis".
In view of the above circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that prima facie case because he did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The first and fourth circumstances are as follows:
"(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name;
(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] 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 [the respondent's] website or location or of a product or service on [the respondent's] website or location."
The Respondent registered the disputed domain name in 2016, many years after the Complainant obtained its trademark registrations for NOVARTIS, including in China, where the Respondent is located. The Complainant has made extensive use of its NOVARTIS trademark, including in China. Indeed, the top search results for the term "novartis" in the Baidu Internet search engine refer to the Complainant and its official website. "Novartis" is not a dictionary word. The disputed domain name incorporates the Complainant's NOVARTIS trademark in its entirety as its only element besides the TLD suffix. The disputed domain name is used to attract Internet users to a parking page displaying links to other websites, where links are generated based on the trademark value of the Complainant's mark. This all gives the Panel reason to believe that the Respondent was aware of the Complainant and its NOVARTIS trademark at the time that he registered the disputed domain name and deliberately chose to register it as part of the disputed domain name in bad faith.
The disputed domain name is used to attract Internet users to a parking page displaying links to other websites related to the Complainant and to the Complainant's competitors. The disputed domain name operates by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the parking page. This use is intentional and either for the Respondent's own commercial gain, if he is paid to direct traffic to the other websites, or for the commercial gain of the operators of the linked websites, or both. In each scenario, these facts satisfy the requirements of paragraph 4(b)(iv) of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267.
In addition, the Respondent repeatedly offered to transfer the disputed domain name to the Complainant in return for prices ranging from USD 1,500 to USD 500. Although the Respondent described these amounts as compensation, they are clearly in excess of his out-of-pocket expenses directly related to the disputed domain name. These facts suggest that the Respondent's primary purpose in registering the disputed domain name was to sell it in the circumstances described in paragraph 4(b)(i) of the Policy.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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.
Matthew Kennedy
Sole Panelist
Date: December 21, 2017
Full & Egal Universal Law Academy