The Complainant is Novartis AG, Switzerland, represented by Dreyfus & associés, France.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Morgan Edward, United States of America (“U.S.”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2021. On June 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 4, 2021, 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 June 8, 2021 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 June 8, 2021. 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 June 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 5, 2021. The Center appointed Jonathan Agmon as the sole panelist in this matter on July 12, 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 The Complainant, Novartis AG, was established in 1996 through a merger of Ciba-Geigy and Sandoz. The Complainant is a global healthcare company based in Switzerland that provides solutions to address the evolving needs of patients worldwide. The Complainant and its predecessor companies share a history of more than 250 years beginning from the production of synthetic fabric dyes to producing chemicals and ultimately pharmaceuticals. Currently, the Complainant uses innovative science and digital technologies to create transformative treatments in the areas of medical need. It is one of the global top-ranking companies investing in research and development. The Complainant’s products are available in about 155 countries and reached almost 1 billion people globally in 2017. It has more than 200 products in clinical pipelines and 500 clinical trials in progress. Among its products, Ritalin, was first marketed since the 1950s for the treatment of attention deficit hyperactivity disorder (“ADHD”) and narcolepsy in children and adults. The Complainant owns numerous trademark registrations incorporating the term “Ritalin” around the world, including in the U.S.: - U.S. Trademark Registration No. 2783136 for RITALIN LA registered on November 11, 2003; and The Complainant also owns the domain name The disputed domain name was registered on March 6, 2021, which previously resolved to an active website in Chinese that used the Complainant’s RITALIN mark and promoted the online sale of medications including Ritalin. At the time of filing of the Complaint, the disputed domain name was no longer active. 5. Parties’ Contentions A. Complainant The Complainant argues that the disputed domain name is confusingly similar to its RITALIN mark as the disputed domain name incorporates the RITALIN mark in its entirety and merely adding the geographic term “China”. The addition of the geographic term “China” fails to eliminate any confusion between the disputed domain name and the RITALIN marks. The addition of the generic Top-Level domain (“gTLD”) “.com” is a technical requirement and should not be taken into consideration when assessing confusing similarity. The Complainant also argues that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant did not license or authorize the Respondent to use its RITALIN mark and the Respondent is not commonly known by the disputed domain name. The disputed domain name resolved to a Chinese website named “Ritalin China Club” which attempts to pass off as the Complainant by featuring prominent use of the RITALIN marks and promotes the online sale of various medications including the Complainant’s Ritalin products which does not constitute a bona fide use of the disputed domain name. The Complainant further argues that the Respondent registered and is using the disputed domain name in bad faith by confusing the public as to the source, sponsorship, affiliation, or endorsement of the website to which the disputed domain name resolved to. The disputed domain name appears to give the false impression that it is intended for the Complainant’s consumers in the Chinese market and mislead the public into believing, falsely, that it is associated with and have a connection with the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A registered trademark provides an indication that the rights in the mark belong to its respective owner. The Complainant has registered rights in the trademark RITALIN. The Panel finds that the Complainant’s trademark has acquired goodwill and reputation as a result of its continuous and extensive use since at least 1998. The disputed domain name Further, it is well established that the addition of the gTLD “.com” is disregarded under the first element confusing similarity test as it is viewed as a standard registration requirement. (See WIPO Overview 3.0, section 1.11.1.) Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (see WIPO Overview 3.0, section 2.1). In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests. The Complainant has provided evidence that it owns a trademark registration for RITALIN long before the disputed domain name was registered. The Complainant is not affiliated with nor has it licensed or otherwise permitted the Respondent to use the Complainant’s trademark (see LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138). There is also no evidence on record showing that the Respondent is commonly known by the disputed domain name (see WIPO Overview 3.0, section 2.3). The disputed domain name appears to be used for the purposes of selling drugs such as Ritalin, Adderall and Vyvanse for treatment of ADHD using the Complainant RITALIN mark without authority or license. In addition, the use of a domain name for sale of illegal pharmaceuticals can never confer rights or legitimate interests on a respondent (see WIPO Overview 3.0, section 2.13.1). Further, the Respondent did not submit a Response in the present case and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain names to rebut the Complainant’s prima facie case. Moreover, the nature of the disputed domain name carries a risk of implied affiliation with the Complainant (see WIPO Overview 3.0, section 2.5.1). Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The Complainant must also show that the Respondent registered and is using the disputed domain name in bad faith (see Policy, paragraph 4(a)(iii)). The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its RITALIN trademark. Considering the use of the Complainant’s RITALIN mark in the disputed domain name, it is highly unlikely that the Respondent did not know of the Complainant and its RITALIN mark prior to registration of the disputed domain name. The disputed domain name incorporates the Complainant’s RITALIN trademark in its entirety with an additional geographical term, which the Panel finds is an attempt by the Respondent to confuse and/or mislead Internet users seeking or expecting the Complainant in the Chinese market. Previous UDRP panels have ruled that in such circumstances “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). The disputed domain name which resolved to a website in the Chinese language named “Ritalin China Club” offering for sale drugs such as Ritalin, Adderall and Vyvanse for treatment of ADHD under the Complainant’s RITALIN mark, cannot but be considered to have been registered and used in bad faith. The use of the Complainant’s trademark to sell what appears to be the Complainant’s own products as well as products of third parties is an indication of bad faith registration and use of the disputed domain name. Further, it is the Complainant’s evidence that its RITALIN products can only be sold under medical prescription and cannot be simply purchased online. The Respondent’s offer for sale of these drugs without prescriptions would appear to amount to illegal sale of controlled pharmaceuticals, which would also be an indication of bad faith registration and use of the disputed domain name. The Panel also considers the Respondent’s use of a privacy shield to hide its identity and contact information to be another indicator of bad faith. The Respondent did not submit a Response in this proceeding which is a further indication of the Respondent’s bad faith, which was considered by the Panel. The Panel also took into consideration the Complainant’s attempts to serve a cease and desist letter to the Respondent prior to the start of the proceedings but the Respondent never responded. Based on the evidence presented to the Panel, including the confusing similarity between the disputed domain name and the Complainant’s mark, the Respondent’s hidden identity behind privacy shield, the fact that the disputed domain name is being used to sell what appears to be the Complainant’s own products as well as products of third parties and the fact that no Response was submitted by the Respondent to the Complaint, and that any good-faith use of the disputed domain name is implausible, the Panel draws the interference that the disputed domain name was 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 Jonathan Agmon
- International Registration Trademark No. 689728 for RITALIN registered on February 13, 1998 designating and registered in Iceland.
Sole Panelist
Date: July 26, 2021
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