The Complainant is Novartis AG, Switzerland, represented by Dreyfus & associés, France.
The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Gabriella Garlo, Brazil.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2021. On November 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 30, 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 November 30, 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 December 2, 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 December 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2022.
The Center appointed Mihaela Maravela as the sole panelist in this matter on January 14, 2022. 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 BackgroundAccording to evidence provided by the Complainant, and uncontested by the Respondent, the Complainant is a global healthcare company based in Switzerland. The Complainant’s products are available in about 155 countries, and they reached nearly 1 billion people globally in 2017. One of the Complainant’s pharmaceutical products is RITALIN, which was first marketed in the 1950’s and is indicated for the treatment of attention deficit hyperactivity disorder (“ADHD”) and narcolepsy in children and adults.
The Complainant has registered several trademarks consisting of RITALIN including the European Union Trade Mark registration No. 002712818 registered on January 8, 2004, covering goods in class 5 and the International trademark registration No. 689728, registered on February 13, 1998, covering goods in class 5.
The Complainant has several domain names which incorporate the trademark RITALIN including
The disputed domain name was registered on April 15, 2021, and according to unrebutted information from the Complainant it is used to direct Internet users to a parking page displaying commercial links related to various medications, including RITALIN. The Complainant has sent a cease-and-desist letter to the Respondent via the Registrar on April 29, 2021, but except for an automated message from the Registrar informing that the matter was being investigated, no further action was taken. The Complainant has also sent a notification to the hosting company on June 28, 2021, and the website at the disputed domain name was deactivated. Nevertheless, the website at the disputed domain name was reconfigured later.
5. Parties’ Contentions A. ComplainantThe Complainant argues that the disputed domain name exactly reproduces the Complainant’s trademark RITALIN, associated with the generic terms “buy” and “online”, which does not prevent a likelihood of confusion. On the contrary, according to the Complainant, the use of its trademark in its entirety with the addition of these terms can lead Internet users into believing that the disputed domain name will direct them to a website that offers information and the possibility of buying the Complainant’s product RITALIN online. The Complainant concludes that the disputed domain name is confusingly similar to the Complainant’s famous trademark RITALIN.
As regards the second element, the Complainant argues that the Respondent is neither affiliated with the Complainant 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 disputed domain name or the name “ritalin”, in accordance with paragraph 4(c)(ii) of the Policy. Moreover, the Complainant argues that the disputed domain name resolves to a parking page displaying commercial links directly targeting its field of activity and product, which are likely to generate revenue. Such behavior cannot be regarded as a legitimate or fair use of the disputed domain name.
In what concerns the third element, the Complainant argues that the Respondent must have been aware of the Complainant’s rights in the RITALIN trademark, given its renown worldwide. According to the Complainant, the composition of the disputed domain name that entirely reproduces the Complainant’s well-known trademark RITALIN, with the addition of the generic terms “buy” and “online”, confirms that the Respondent was aware of the Complainant and its trademark.
As regards the use, the Complainant argues that the Respondent is using the disputed domain name to intentionally attract Internet users to his website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the services offered on the Respondent’s website, in accordance with paragraph 4(b)(iv) of the Policy. The Respondent uses the disputed domain name to redirect Internet users to a parking page displaying commercial links related to various drugs, including Ritalin. According to the Complainant, the drug RITALIN is subject to specific conditions to be sold and cannot, in any way, be sold without a prescription nor can its trademark be used to promote the selling of drugs that are not linked to the Complainant. Such use of the disputed domain name demonstrates the Respondent’s intention to abusively benefit from the Complainant’s reputation and its trademarks.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsNo communication has been received from the Respondent in this case. However, given that the Complaint was sent to the relevant address disclosed by the Registrar, the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it can proceed to determine the Complaint based on the statements and documents submitted by the Complainant as per paragraph 15(a) of the Rules and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:
(i) that the disputed domain name 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 disputed domain name; and
(iii) that the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has proved its rights over the RITALIN trademark. The trademark is reproduced in its entirety in the disputed domain name. The addition of the words “buy” and “online” does not prevent a finding of confusing similarity with the Complainant’s trademark, which is recognizable in the disputed domain name. The fact that a domain name wholly incorporates a complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. The addition of an additional term (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0“).
It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.info”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. See section 1.11 of the WIPO Overview 3.0.
This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsUnder paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:
(i) before any notice to it of the dispute, the respondent’s use of, or 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; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial 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.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] 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.”
According to the unrebutted evidence put forward by the Complainant, at the date of the Complaint the Respondent was using the disputed domain name to host a parked page comprising pay-per-click (“PPC”) links to various drugs, including RITALIN. According to section 2.9 of the WIPO Overview 3.0. “Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.” The Complainant submitted that the Respondent has not been authorized, licensed, or otherwise permitted by the Complainant to register and/or use the disputed domain name. This evidence indicates that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services within the circumstances of paragraph 4(c)(i) of the Policy. As the PPC links at the disputed domain name operate for the commercial gain of the Respondent or of the operators of those linked websites, or both, such use cannot amount to a legitimate noncommercial or fair use of the disputed domain names within the circumstances of paragraph 4(c)(iii) of the Policy. See Government Employees Insurance Company (“GEICO”) v. 林彦晓 (Yan Xiao Lin),WIPO Case No. D2021-2026.
Also, there is no evidence that the Respondent is commonly known by the disputed domain name.
Furthermore, the nature of the disputed domain name carries a risk of implied affiliation and cannot constitute a fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0.
The Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because she did not respond to the Complainant’s contentions.
With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad FaithAccording to paragraph 4(a)(iii) of the Policy, the Complainant must 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.
The disputed domain name was registered many years after the Complainant has obtained registration of its RITALIN trademarks. The website associated with the disputed domain name contains PPC links related to the products offered by the Complainant. Under these circumstances, the Panel considers that the Respondent has registered the disputed domain name with knowledge of the Complainant and its trademark and that it targeted that trademark.
As regards the use of the disputed domain name, from the evidence put forward by the Complainant and not rebutted by the Respondent, it results that the disputed domain name redirects Internet traffic to a website displaying PPC advertisements for Complainant-related goods. Given the confusing similarity between the Complainant’s RITALIN trademark and the disputed domain name, and that the PPC links operate for the commercial gain of the Respondent or of the operators of those linked websites, or both, the Panel considers that the disputed domain name is intended to attract Internet users by creating a likelihood of confusion with the Complainant’s RITALIN trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or other online location of a service offered on such other online location within the terms of paragraph 4(b)(iv) of the Policy.
Also, there appears to be a pattern of abusive registrations by the Respondent, as the unrebutted evidence in the case file shows that the Respondent was involved in other UDRP proceedings where similar factual situations caused the concerned UDRP panels to decide in favor of the complainants. This fact also supports a finding grounded on paragraph 4(b)(ii) of the Policy, referring to a respondent registering “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”.
Further, the Respondent’s failure to respond to the Complainant’s cease-and-desist letter and to the Complaint is additional evidence of bad faith.
In the Panel’s view, the circumstances of the case represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is fulfilled.
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
Mihaela Maravela
Sole Panelist
Date: January 28, 2022