The Complainant is Novartis AG, Switzerland, represented by Dreyfus & associés, France.
The Respondent is Tech Inc, Tech Inc, United States of America (the “US”). 2. The Domain Name and Registrar
The disputed domain name is registered with 1API GmbH (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2019. On July 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 1, 2019, 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 1, 2019, 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 5, 2019.
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 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 29, 2019.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on September 4, 2019. 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 the registered owner of numerous trademark registrations for RITALIN, such as US trademark RITALIN no. 0517928, filed on July 9, 1948, and registered on November 22, 1949, for goods in class 5, and European Union trademark no. 002712818, filed on May 27, 2002, and registered on January 8, 2004, for goods in class 5. Both marks have been duly renewed and are in force.
The Respondent registered the disputed domain name on February 15, 2018. It results from the evidence submitted by the Complainant that the disputed domain name used to resolve to a website purportedly offering RITALIN-branded medication for sale without prescription, and currently resolves towards a page under construction displaying ‘GetRit Alin Shoes – get the right shoes; make the right choice’.
On March 27, 2018, the Complainant sent a cease-and-desist letter to the Respondent by registered letter and email, requesting the Respondent to cease the use of the disputed domain name and to transfer it to the Complainant, free of charge. Despite several reminders, the Respondent did not reply. On September 17, 2018, the Complainant sent another request to the Respondent to transfer the disputed domain name. Again, the latter did not reply. However, following the Complainant’s cease-and-desist letter, the website at the disputed domain name changed from offering RITALIN medication for sale to the page under construction. 5. Parties’ Contentions A. Complainant
The Complainant is one of the world leaders for pharmaceutical products. One of the Complainant’s key products is RITALIN, a pharmaceutical product for treatment of attention deficit hyperactivity disorder and narcolepsy in children and adults. According to the Complainant’s undisputed allegations, 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.
First, the Complainant contends that the disputed domain name is at least confusingly similar to its trademarks RITALIN, which are entirely reproduced in the disputed domain name and which is widely known and recognized across the world. The mere association of this trademark with the generic terms “get” and “online” enhances the risk of confusion, since it will push consumers to believe that the disputed domain name leads to a RITALIN online store.
Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, there is no business relationship between the Parties and the Complainant has never granted the Respondent any license, partnership or authorization. Furthermore, nothing in the record or WhoIs information shows that the Respondent is commonly known by the disputed domain name. Furthermore, the disputed domain name’s current use in addition to an email server being configured on the domain name does neither constitute any bona fide offer of products or services from the Complainant nor other legitimate, noncommercial or fair use.
Thirdly, the Complainant contends that the Respondent registered and uses the disputed domain name in bad faith. According to the Complainant’s allegations, it is implausible and unlikely that the Respondent had no knowledge of the Complainant’s trademarks at the time of the disputed domain name’s registration. Furthermore, the Complainant’s trademarks rights predate the registration date of the disputed domain name. The Complainant further contends that there is no plausible explanation for the Respondent’s registration of the disputed domain name other than targeting the Complainant’s trademark. Therefore, the Complainant concludes that the Respondent was intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled:
(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.
The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
It results from the evidence provided that the Complainant is the registered owner of various trademark registrations for the verbal element RITALIN. Reference is made, in particular, to US trademark RITALIN no. 0517928, filed on July 9, 1948, and registered on November 22, 1949, for goods in class 5, and European Union trademark no. 002712818, filed on May 27, 2002, and registered on January 8, 2004, for goods in class 5, which have both been duly renewed.
Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainS, Inc.,WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0464). This Panel shares this view and notes that the Complainant’s registered trademark RITALIN is fully and identically included in the disputed domain name.
Furthermore, the addition of the further dictionary terms “get” and “online” to the Complainant’s trademark in a domain name is insufficient in to avoid a finding of confusing similarity under the first element of the UDRP (cf. section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Panel finds the incorporated trademark to constitute the dominant or principal component of the disputed domain name, while the mere addition of the two descriptive terms will rather be understood as indicating an online shop, where users can “get RITALINE online” (see F. Hoffmann-La Roche AG v. James Maher, Maher / Wuxi Yilian LLC,WIPO Case No. D2015-1335;F. Hoffmann-La Roche AG v. Private Whois ,WIPO Case No. D2012-0422; F. Hoffmann-La Roche v. Whois Agent, Whois Privacy Protection Service,WIPO Case No. D2014-0496).
Finally, and according to UDRP panel consensus, the applicable generic Top-Level Domain (“gTLD”) suffix “.com” in the disputed domain name is to be disregarded under the confusing similarity/identity test.
Hence, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
First, it results from the Complainant’s non-contested evidence that the disputed domain name used to resolve to a website purportedly offering RITALIN-branded medication for sale without prescription, and currently resolves to an under-construction page displaying ‘GetRit Alin Shoes – get the right shoes; make the right choice’. In addition, an email server was also configured on the disputed domain name. Such use cannot in this Panel’s view be qualified as a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy. In addition, the Respondent did not submit any contemporaneous evidence of bona fide pre-Complaint preparations to use the disputed domain name. In particular, it results from the Complainant’s uncontested allegations that it has not authorized the Respondent’s use of the trademark RITALIN for registering the disputed domain name comprising said trademark entirely.
Furthermore, the Panel notes that there is no evidence in the record or WhoIs information showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.
Finally, the Panel notes that there is no evidence in the record either showing that the Respondent might target a 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 pursuant to paragraph 4(c)(iii) of the Policy. In particular, the Panel is satisfied that the registered trademark RITALIN is distinctive and the combination with the further terms “get”/“online” is so striking that it is unlikely that the Respondent wanted to fairly use the disputed domain name, as the use was at some point commercial in nature. In fact, previous UDRP panels have found that domain names consisting of a complainant’s trademark plus additional terms carry a risk of implied affiliation, if they effectively impersonate or suggest sponsorship or endorsement by the trademark owner (see section 2.5.1, WIPO Overview 3.0). Furthermore, the Respondent did not provide any explanation for its choice of domain name and did not add any note, information or disclaimer on the website pointing out that it has actually no relationship with the Complainant.
It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, in particular but without limitation, be evidence of the disputed domain name’s registration and use in bad faith.
In light of the above, the Panel is satisfied that there is evidence of the disputed domain name’s registration and use in bad faith. First, the Panel notes that the disputed domain name contains the Complainant’s trademark, enjoying a high degree of recognition, in its entirety. In addition, the RITALIN trademark has been registered and used for decades, including in the US, where the Respondent is located. Therefore, this Panel has no doubt that the Respondent positively knew or should have known that the disputed domain name consisted of the Complainant’s RITALIN trademark when it registered the disputed domain name. Registration of the disputed domain name in awareness of a complainant’s mark and in the absence of rights or legitimate interests in this case amounts to registration in bad faith (see e.g. “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Petra Wirth,WIPO Case No. D2018-0246; KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812 and The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa,WIPO Case No. D2014-2100; Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320).
In the present case, the disputed domain name has been used to resolve to a website that purportedly offered for sale RITALIN-branded medication without prescription. The Respondent did not contest these allegations and failed to submit a response or to provide any evidence of actual or contemplated good-faith use. The Panel therefore finds that the Respondent has used the Complainant’s RITALIN trademark to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The current use of the disputed domain name does not change this finding of the Panel. As mentioned in the factual background above, the disputed domain name currently resolves to an under-construction page displaying “GetRit Alin Shoes – get the right shoes; make the right choice”. Previous UDRP panels have found that the non-use of a domain name (including a blank or “coming soon” page) does not prevent a finding of bad faith under the doctrine of passive holding. UDRP panels rather will look at the totality of the circumstances in each case. Factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put (see section 3.3, WIPO Overview 3.0.).
In addition, this finding of bad faith registration and use is supported by the further circumstances resulting from the case at hand, which are the following:
(i) the Respondent’s failure to submit a reply to the cease-and-desist letters;
(ii) the Respondent’s failure to submit a response or to provide any evidence of actual or contemplated good faith use;
(iii) the implausibility of any good faith use to which the disputed domain name may be put;
(iv) the Respondent changing the use of the disputed domain name after the cease-and-desist letter had been sent.
In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to 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 the Complainant.
Tobias Malte Müller
Sole Panelist
Date: September 18, 2019
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