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 / Mike Smith, MP4U, United States of America.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2021. On September 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 21, 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 September 22, 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 September 24, 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 September 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2021.
The Center appointed Daniel Peña as the sole panelist in this matter on November 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 BackgroundThe Complainant is a global healthcare company based in Switzerland. It was created in 1996 through a merger of Ciba-Geigy and Sandoz.
The Complainant’s products are available in about 155 countries and they reached nearly 1 billion people globally in 2017. About 126,000 people of 145 nationalities work at Novartis around the world. The Complainant’s Pharmaceuticals Division is one of the world leader in offering innovation-driven, patent-protected medicines to patients and physicians. The Pharmaceuticals Division researches, develops, manufactures, distributes and sells patented pharmaceuticals in a wide variety of therapeutic areas.
The Complainant has more than 200 products in its clinical pipelines and 500 clinical trials are in progress. Among the innumerable key-marketed products, RITALIN, first marketed in the1950’s, is indicated for the treatment of attention deficit hyperactivity disorder (ADHD) and narcolepsy in children and adults.
The Complainant is the owner of the following RITALIN trademark registrations:
- European Union trademark RITALIN n° 002712818, filed on May 27, 2002 and registered on January 8, 2002, duly renewed and covering goods in class 5.
- United States of America trademark RITALIN n° 0517928, filed on July 9, 1948 and registered on November 22, 1949, duly renewed and covering goods in class 5.
- International trademark RITALIN n° 689728, registered on February 13, 1998, duly renewed, covering goods in class 5 and designating inter alia Australia, Iceland, Norway, Singapore and China.
The disputed domain name was registered on June 30, 2021 and resolved to a website displaying pay-per- click (“PPC”) commercial links.
5. Parties’ Contentions A. ComplainantThe Complainant and its predecessor companies trace roots back more than 250 years, with a history of developing innovative products. From beginnings in the production of synthetic fabric dyes, the companies that eventually became Novartis branched out into producing chemicals and ultimately pharmaceuticals.
The disputed domain name
The Respondent has created a likelihood of confusion with the Complainant’s trademark. It is likely that the disputed domain name could mislead Internet users into thinking that it is, in some way, associated with the Complainant.
The Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating said trademark. Furthermore, the Respondent cannot claim prior rights or legitimate interests in the disputed domain name as the RITALIN trademarks precede the registration of the disputed domain name for years.
The Respondent is not commonly known by the trademark RITALIN.
The Respondent did not assert that, before any notice of this dispute, he was using, or had made demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services,
The Respondent registered the disputed domain name with a privacy shield service to hide his identity and prevent the Complainant from contacting him.
The composition of the disputed domain name entirely reproducing the Complainant’s trademark RITALIN, which is a widely known trademark with the mere addition of dictionary terms, confirms that the Respondent was aware of the Complainant and its trademark.
The Respondent uses the disputed domain name to direct Internet users to a webpage displaying commercial links of various content. Such use of the disputed domain name demonstrates the Respondent’s intention to abusively benefit from the Complainant’s reputation and particularly from the latter’s trademark RITALIN to benefit from the fame of the Complainant’s marks.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsTo succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(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.
Considering these requirements, the Panel finds as follows:
A. Identical or Confusingly SimilarThe Panel finds that the disputed domain name is confusingly similar to the Complainant’s RITALIN marks. The Respondent’s incorporation of the Complainant’s mark in full in the disputed domain name is evidence that the disputed domain name is confusingly similar to the Complainant’s marks. Mere addition of the dictionary words “buy”, “online” “in” as well as the geographical abbreviation “usa” to the Complainant’s trademark RITALIN do not prevent a finding of confusing similarity with the Complainant’s marks. Furthermore, the addition of the generic Top-Level Domain (“gTLD”) “.com” is not sufficient to prevent the confusing similarity either.
The Panel is satisfied that the disputed domain name is identical or confusingly similar to the Complainant’s mark and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsPursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant bears the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent, will lead to this ground being set forth.
Refraining from submitting any Response, the Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that the Respondent has rights or legitimate interests in the disputed domain name.
The Panel will now examine the Complainant’s arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain name.
The Complainant claims that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner.
The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
Furthermore, the disputed domain name resolves to a web page displaying commercial links, which are likely to generate a commercial profit. Such use for deliberately attracting Internet users in the mistaken belief that this website is linked to or authorized by the Complainant supports a finding that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
In the Panel’s view, a finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the disputed domain name. In this case, the Complainant submits that at the date of registration of the disputed domain name the Respondent would have had constructive, if not actual knowledge of the Complainant’s mark RITALIN.
The Panel takes into account the evidence of the use being made of the disputed domain name. It is apparent, as it is pointed out by the Complainant, that the Respondent registered the disputed domain name with the terms “buy”, “online”, “in” as well as the geographical abbreviation “usa” in an attempt to cause a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites.
The Complainant also relies upon the fact that an email server has been configured on the disputed domain name and thus, there might be a risk that the Respondent is engaged in a phishing scheme.
The Complainant points out that the Respondent is hiding its identity behind a WhoIs privacy wall. It is well established that this, too, can be further prima facie evidence of bad faith.
Having considered the Complainant’s submissions and in the absence of a Response, the Panel accepts the Complainant’s submission that on the evidence there is no plausible circumstance under which the Respondent could legitimately register or use the disputed domain name. Consequently, the Panel finds that the disputed domain name was registered and used by the Respondent in bad faith within paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Daniel Peña
Sole Panelist
Date: November 26, 2021