Complainant is Novartis AG, Switzerland, represented by Dreyfus & associés, France.
Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2021. On July 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 14, 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. 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 July 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 9, 2021. The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on August 13, 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, Novartis AG, a global healthcare company based in Switzerland, was created in 1996 through a merger of Ciba-Geigy and Sandoz. Novartis and its predecessor companies trace their roots back over 250 years. Novartis products reach more than 750 million people globally and are available in about 155 countries, reaching nearly 1 billion people globally in 2017. Approximately 126,000 people from 145 nationalities work at Novartis around the world. Novartis has more than 200 products in its clinical pipelines and 500 clinical trials are in progress. Novartis also has an international presence including in the United States and has several offices/subsidiaries located in various parts of America. Novartis Corporation is a wholly owned subsidiary of Novartis AG. It develops pharmaceutical, consumer health, generic, and eye care. XIIDRA is one among the various pharmaceutical products manufactured by Novartis. XIIDRA is a prescription eye drop solution designed to treat the signs and symptoms of dry eye disease. It is approved to treat signs and symptoms of dry eye disease in multiple markets including the United States of America, Canada, and Australia, and is under regulatory review in a number of additional markets. Complainant owns numerous XIIDRA and XIIDRA IINSIDER trademark registrations around the world, including, for example: - International trademark XIIDRA No. 1350341, registered on March 18, 2017, designating various jurisdictions, including Colombia, Israel, New Zealand, and Singapore; In addition, Complainant operates various domain names reflecting its trademark to promote its services, including: - Respondent registered the Domain Name on March 5, 2021. The Domain Name resolves to a parking page displaying links to third party sites. Examples of the links include: “Free Virtual Doctors”, “Walkin Doctors Near Me”, “Physicians”, “Doctor RX”, “Medical Doctor”, “Online Doctor who Prescribe”, and “Medical Doctors Nearby.” These links further direct Internet users to what appear to be third party commercial sites. 5. Parties’ Contentions A. Complainant Complainant contends that (i) the Domain Name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith. In particular, Complainant contends that it has trademark registrations for the XIIDRA marks and owns domain names incorporating the XIIDRA marks. Complainant contends that Respondent registered and is using the Domain Name to confuse Internet users looking for bona fide and well-known XIIDRA products and services. Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s marks, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainant’s rights. Finally, Complaint states that the Domain Name is configured for email, which increases the risk of phishing activities. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed, Complainant must satisfy the Panel that: (i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and (iii) the Domain Names were registered and is being used in bad faith. Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the XIIDRA marks, which have been registered since at least as early as March 2017, well before registration of the Domain Name on March 5, 2021, as noted above. Complainant has also owned the domain names With Complainant’s rights in the XIIDRA marks established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain (“TLD”) in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. Here, the Domain Name is confusingly similar to Complainant’s XIIDRA mark. The XIIDRA mark is recognizable in the Domain Name. The XIIDRA mark is entirely reproduced with the incorporation of the letter “l” between the mark and the word “insider”. These additions do not prevent a finding of confusing similarity between Complainant’s XIIDRA trademark and the Domain Name registered by Respondent. Further, with respect to the Complainant’s XIIDRA IINSIDER mark, the Panel finds that the Domain Name amounts to a typosquatting variation, replacing the initial upper-case “I” in the mark with a lower-case “l”, which are nearly indistinguishable. As such, the Domain Name is confusingly similar to the XIIDRA marks. Thus, the Panel finds that Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a Domain Name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the XIIDRA marks, and does not have any rights or legitimate interests in the Domain Name. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the XIIDRA trademarks or to seek registration of any Domain Name incorporating the trademarks. Respondent is also not known to be associated with or commonly known by the XIIDRA marks. In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant provided evidence that the Domain Name resolves to a parking page displaying links to third party sites. Examples of the links include: “Free Virtual Doctors”, “Walkin Doctors Near Me”, “Physicians”, “Doctor RX”, “Medical Doctor”, “Online Doctor who Prescribe”, and “Medical Doctors Nearby.” These links further direct Internet users to what appear to be third party commercial sites. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g. , Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration,WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name. Further, the nature of the Domain Name carries a risk of implied affiliation with Complainant (see WIPO Overview 3.0, section 2.5.1). Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Names in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely: “(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; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.” The Panel finds that Complainant provided ample evidence to show that registration and use of the XIIDRA and XIIDRA IINSIDER marks predate the registration of the Domain Name by Respondent. Complainant is also well established and known. Indeed, the record shows that Complainant’s XIIDRA and XIIDRA IINSIDER marks and related services are widely known and recognized. Therefore, the Panel finds that Respondent knew or should have known of the XIIDRA and XIIDRA IINSIDER marks when it registered the Domain Name. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. The Panel also finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007. As discussed above, the Domain Name redirects to third party websites. Examples of the links include: “Free Virtual Doctors”, “Walkin Doctors Near Me”, “Physicians”, “Doctor RX”, “Medical Doctor”, “Online Doctor who Prescribe”, and “Medical Doctors Nearby.” These links further direct Internet users to what appear to be third party commercial sites, which are in the same field – the medical and pharmaceutical fields – as Complainant. Such use is misleading to Internet users, creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website. It is also potentially disruptive to Complainant’s business activities and may result in tarnishing Complainant’s reputation and good will. See WIPO Overview 3.0, section 3.3. Moreover, Complainant has provided evidence demonstrating that the Domain Name has active MX records for the Domain Name, enabling the use of the Domain Name for email. This could be perceived as an intent to use the Domain name in connection with phishing activities in relation to the Domain Name and further supports a finding of bad faith use. See, Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Yogesh Bhardwaj,WIPO Case No. D2017-1225. Here, the present circumstances, including the distinctiveness and reputation of the XIIDRA and XIIDRA IINSIDER marks, the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and the implausibility of any good faith use to which the Domain Name may be put, support a finding of bad faith. Accordingly, the Panel finds that Respondent has registered and is using the Domain Name in bad faith and Complainant succeeds under the third element of 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 Domain Name, Kimberley Chen Nobles
- International trademark XIIDRA IINSIDER No. 1545139, registered on June 29, 2020, designating various jurisdictions, including Australia, China, the European Union, Japan, Mexico, Singapore, and the Russian Federation.
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Sole Panelist
Date: August 24, 2021
Full & Egal Universal Law Academy