The Complainant is Novo Nordisk A/S, Denmark (hereinafter “Complainant”), represented by Zacco Denmark A/S, Denmark.
The Respondent is Vassana Sattayabanthid, Thailand (hereinafter “Respondent”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2021. On May 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 19, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain name. 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 May 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 10, 2021. Respondent filed an informal response filed with the Center on May 24, 2021. The Center sent a possible settlement email to the Parties on May 25, 2021. Upon the Parties agreement, the Center suspended the matter so that the Parties could pursue settlement. The Parties attempted to settle the dispute, which attempt was made primarily in the Thai language. Efforts at settlement failed, and the Center confirmed that the language of the proceeding is English. Upon Complainant’s request, the Center reinstituted the proceeding on June 11, 2021. The Center appointed M. Scott Donahey as the sole panelist in this matter on June 16, 2021. 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 a global healthcare company, with 90 years’ experience, and a special focus on diabetes care. Complainant also specializes in hemophilia care, growth hormone therapy, and hormone replacement therapy. Complainant is headquartered in Denmark and employs more than 45,000 employees in 80 countries. Complainant markets its products in more than 180 countries. Its annual turnover in 2020 was EUR 17.1 billion. Complaint, Annex 1. Its shares are listed on the NASDAQ OMX Copenhagen, and its ADRs are listed on the New York Stock exchange. Complaint, Annex 1. Complainant has 30 trademark registrations worldwide for the trademark SAXENDA. Complaint, Annex 2. Complainant also possesses a registered mark in Thailand for the mark SAXENDA, the jurisdiction in which Respondent is located. The mark with registration no. 171108715 was registered on December 8, 2015 in Thailand. Complaint, Annex 3. The SAXENDA product was approved by the Thailand Food and Drug Administration on January 17, 2018. Complaint, Annexes 7.1 and 7.2. Respondent registered the disputed domain name on April 21, 2021. Complaint, Annex 4. The disputed domain name resolves to a web site on which Respondent purports to sell Complainant’s trademarked SAXENDA product. The website is in both Thai and English. Complaint, Annexes 5.1 and 5.2. SAXENDA is a prescription medication and is not available over the counter. It is unlawful to sell such a product directly to consumers online or “over the counter,” unless it is being dispensed by a licensed pharmacy. Complaint, Annex 6. Respondent has not alleged that it is a licensed pharmacy. 5. Parties’ Contentions A. Complainant Complainant alleges that the disputed domain name is confusingly similar to Complainant’s registered trademark. Complainant contends that Respondent has no rights or legitimate interests in respect to the disputed domain name. Complainant asserts that Respondent has registered and is using the disputed domain name in bad faith and in an unlawful matter. B. Respondent Respondent contends that it has “closed” the disputed domain name, but has refused to sign the settlement agreement to which the Complainant understood Respondent had agreed. 6. Discussion and Findings “A Panel shall 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 directs that the complainant must prove each of the following: (i) that the domain name registered by the respondent 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 domain name; and, (iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant contends that the disputed domain name is confusingly similar to Complainant’s SAXENDA trademark, in that it consists of that mark followed be the English word “Thai,” indicating that it is available to residents of Thailand. The Panel agrees and finds that the disputed domain name is confusingly similar to Complainant’s registered SAXENDA trademark. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the almost impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. In the present case, Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith Respondent registered the disputed domain name long after Complainant had obtained trademark registrations around the world, including one in the country of Thailand. Respondent is using the disputed domain name to resolve to web sites in English and Thai, which are for purposes of this analysis virtually identical to Complainant’s web site. Respondent is offering Complainant’s SAXENDA pharmaceutical product for sale on its web site, and Respondent has offered no proof that it is a licensed pharmacy nor has any other right to make the medication available for purpose online. Therefore, the Panel finds that Respondent has registered and is using the disputed domain name 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, M. Scott Donahey
Sole Panelist
Date: June 17, 2021
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