The Complainant is Novartis AG of Basel, Switzerland, represented by Dreyfus & associés, France.
The Respondent is Domain Admin, Whois protection, this company does not own this domain name s.r.o. of Prague, Czech Republic / Alexandra Raluca Cristea of Barcelona, Spain. 2. The Domain Name and Registrar
The disputed domain name is registered with Gransy, s.r.o. d/b/a (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2018. On February 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 27, 2018, 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 February 27, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In response to the Center’s email communication to the Complainant on February 27, 2018, the second-named Respondent sent an email to the Center on February 27, 2018 stating: “we want to transfer our domain from your server please give me authorize to transfer my domain from your you.”
The second-named Respondent sent another email to the Center on March 1, 2018, stating: “Please unlock my domain. We will move the domain to another Registrar. We are waiting for the Answer.”
In response to these two emails, the Center issued an e-mail on March 1, 2018, asking if the Parties wished to suspend the proceeding to explore settlement options. The Complainant replied by stating that unless the Respondent accepts to transfer the disputed domain name to the Complainant, there is no reason to suspend the proceeding. No further emails on possible settlement were received by the Center. The Complainant filed an amended Complaint on March 2, 2018.
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 March 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 27, 2018. Apart from emails dated February 27, 2018, and March 1, 2018, from the second-named Respondent (Alexandra Raluca Cristea), no formal Response was filed with the Center.
The Center appointed Andrew F. Christie as the sole panelist in this matter on April 9, 2018. 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 created in 1996 from the merger of the companies Ciba-Geigy and Sandoz. It is a global healthcare company based in Basel, Switzerland, with a history going back 150 years. Its products are available in about 155 countries and they reached nearly 1 billion people globally in 2016. It employs about 123,000 people around the world.
The Complainant’s Pharmaceutical Division offers innovation-driven, patent-protected medicines to patients and physicians. Among its key marketed products is Ritalin, which 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. Based on 2014 sales, Ritalin has been classified among the top 20 pharmaceutical products.
The Complainant owns numerous trademark registrations around the world for the word trademark RITALIN, including European Union trademark No. 002712818 (registered on January 8, 2004), and International trademark No. 278969 (registered on January 25, 1964). The Complainant is also the owner of the domain name registered on March 6, 2000.
The disputed domain name was registered on November 5, 2017. The Complainant has provided screenshots dated January 15, 2018, showing that the disputed domain name resolved to a website purporting to offer for sale the Complainant’s Ritalin product and another pharmaceutical product made by a competitor of the Complainant. At the time of this decision, the disputed domain name resolves to a website purporting to offer for sale the Complainant’s Ritalin product and another pharmaceutical product made by a competitor of the Complainant.
On December 6, 2017, the Complainant sent a cease and desist letter to the first-named Respondent (Domain Admin, Whois protection, this company does not own this domain name s.r.o.) on the basis of its trademark rights, requesting the first-named Respondent to reveal the identity of the registrant, to cease using the disputed domain name and to transfer it to the Complainant free of charge. After sending several reminders, the Complainant received a reply from the second-named Respondent stating “The Domain name: R has been Disabled and no Longer for Online sales.” Following this response, the Complainant noticed that the disputed domain name was still active and email servers were configured for it. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights because: (i) it entirely reproduces the Complainant’s word trademark RITALIN with the inclusion of the descriptive term “pharma”, which is a term directly linked to the Complainant’s field of activities; (ii) the Complainant’s RITALIN trademark stands out in the disputed domain name and leads the public to think that the disputed domain name is somehow connected to the owner of the registered trademark and its activities or products; (iii) the likelihood of confusion is reinforced because the disputed domain name resolves to a webpage purporting to offer for sale Ritalin products without prescription, and contains pictures of the Complainant’s pills, thereby leading Internet users to believe that the website is endorsed or authorized by the Complainant; and (iv) the addition of the generic Top-Level Domain suffix “.net” does not affect the likelihood of confusion.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because: (i) the Respondent is neither affiliated with the Complainant in any way, nor has it been authorized by the Complainant to use and register the Complainant’s trademark, to seek registration of any domain name incorporating that trademark or to use photographs of the product belonging to the Complainant; (ii) the registration of the RITALIN trademark preceded the registration of the disputed domain name by many years, and the Respondent has no prior rights or legitimate interests in the disputed domain name; (iii) the disputed domain name and the website resolving from it are so similar to the Complainant’s well-known RITALIN trademark that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name; (iv) the 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, as it resolves to a website commercializing Ritalin products without prescription; (v) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name as it resolves to a website that also offers a product of a competitor of the Complainant; (vi) the Respondent is using the disputed domain name to illegitimately sell the products of the Complainant or imitations of them by exploiting the Complainant’s fame; (vii) the Respondent is misleadingly diverting consumers from the Complainant’s official website for commercial gain; (viii) it is likely the Respondent is using the disputed domain name to sell fake items that could be hazardous to people’s health; (xi) the Respondent has lied to the Complainant by pretending to have disabled the disputed domain name and saying it is no longer available for online sales, when in fact it was still active and email servers were configured for it, suggesting the Respondent might be engaged in a phishing scheme; and (x) it seems that the Respondent registered the disputed domain name with a privacy shield service to hide its identity and prevent the Complainant from contacting it.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) it is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name as the Complainant and its numerous trademarks are widely known throughout the world including Europe, and the Respondent’s reproduction of the Complainant’s RITALIN trademark clearly proves that the Respondent was aware of its existence; (ii) 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; (iii) the Respondent’s use of photographs of the Complainant’s products on the website resolving from the disputed domain name without the authorization of the Complainant suggests bad faith; (iv) it is likely that the Respondent registered the disputed domain name to prevent the Complainant from reflecting its trademark in the disputed domain name; (v) Internet users might think that the website resolving from the disputed domain name is an official website of the Complainant and that the products offered for sale on it are endorsed by the Complainant and deemed to be safe, when it is likely they are imitations and may be hazardous for consumer health; (vi) 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; and (vii) the use of an
email address with the disputed domain name presents a significant risk whereby the Respondent could aim to steal valuable information such as credit card details from the Complainant’s clients or employees. B. Respondent
The Respondent sent two emails, detailed above in the Procedural History, proposing to move the disputed domain name to another registrar, but did not submit a formal response. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name incorporates the whole of the Complainant’s registered word trademark RITALIN, and adds the word “pharma”, which is commonly recognized as an abbreviation of either “pharmacy” or “pharmaceutical”. The distinctive component of the disputed domain name is the Complainant’s trademark. The addition of the descriptive abbreviation “pharma” does not lessen the confusing similarity of the disputed domain name with the Complainant’s trademark. This is particularly so, given that the Complainant produces and sells the pharmaceutical product Ritalin, which is typically purchased from a pharmacy. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its RITALIN trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a website offering for sale a range of products, some of which purport to be produced by the Complainant whilst others purport to be those of a competitor of the Complainant. The lack of any relationship between the Complainant and the operator of this website is not noted at the website, giving a misleading impression of association between the Complainant and the Respondent. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The disputed domain name was registered many years after the Complainant first registered its RITALIN trademark. The evidence on the record provided by the Complainant with respect to the use of its RITALIN trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time of registration of the disputed domain name, the Respondent knew of the Complainant’s trademark and knew that it had no rights or legitimate interests in the disputed domain name. Furthermore, the evidence on the record provided by the Complainant with respect to the Respondent’s use of the disputed domain name indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith. 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.
Andrew F. Christie
Sole Panelist
Date: April 23, 2018
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