The Complainant is Novartis AG, Switzerland, represented by Dreyfus & associés, France.
The Respondent is Anonymize, Inc., 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 August 24, 2021. On August 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 24, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 25, 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 August 26, 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 August 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 22, 2021.
The Center appointed Nicholas Smith as the sole panelist in this matter on September 28, 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 company based in Switzerland, formed in 1996 through a merger though its predecessor companies have existed in various forms for over 250 years. The Complainant develops, manufactures and distributes a variety of pharmaceutical products and healthcare solutions. The Complainant’s products are available in over 155 countries and are used to treat over 750 million people globally. One of the Complainant’s best-known products is a non-steroidal anti-inflammatory drug known as Voltaren, which has been offered in various forms (by the Complainant or its predecessors in title) since the late 1980s, is generally available without prescription and claims to be the best-selling topical pain-reliever worldwide.
The Complainant holds a number of registered trade marks in various jurisdictions consisting of the word “Voltaren” (the “VOLTAREN Mark”) or devices containing the word “Voltaren”. This includes an International trade mark registration for the VOLTAREN Mark designating jurisdictions including France, Austria and Spain (registration number 215704) for medical goods in class 5, registered on December 20, 1958.
The Domain Name
The Complainant makes the following contentions:
(i) the Domain Name is identical or confusingly similar to the Complainant’s VOLTAREN Mark;
(ii) the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the VOLTAREN Mark having registered the VOLTAREN Mark in various jurisdictions around the world. The Domain Name wholly incorporates the VOLTAREN Mark along with the “.co” country code Top-Level Domain (“ccTLD”) and hence must be considered identical.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use the VOLTAREN Mark. The Respondent does not use the Domain Name for a bona fide purpose or legitimate noncommercial purpose. Rather the Domain Name resolves to a page with various sponsored links to advertisements targeted at the Complainant’s consumers, which does not provide the Respondent with rights or legitimate interests.
The Domain Name was registered and is being used in bad faith. Given the significant international reputation of the VOLTAREN Mark and the use to which the Domain Name has been put (links advertising pharmaceutical products), the registration of the Domain Name can only be taken as an attempt by the Respondent to gain an unfair benefit from the Complainant’s reputation. The Respondent is using the Domain Name for a pay-per-click site which amounts to bad faith use.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarTo prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the VOLTAREN Mark, having registrations for the VOLTAREN Mark as a trade mark in France and various other jurisdictions.
The Domain Name incorporates the VOLTAREN Mark in its entirety with the addition of the ccTLD “.co”. As the ccTLD may be disregarded in the comparison between a trade mark and a domain name the Panel finds that the Domain Name is identical to the Complainant’s VOLTAREN Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsTo succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. The Respondent has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the VOLTAREN Mark or a mark similar to the VOLTAREN Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods or services; the use of the Domain Name (which is identical to the Complainant’s VOLTAREN Mark) for what appears to be a parking page with pay-per-click links related to pharmaceutical products, which are products manufactured and distributed by the Complainant under the VOLTAREN Mark, does not amount to use for a bona fide offering of goods or services.
Furthermore, the Domain Name being identical to the Complainant’s trademark carries a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a response or evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithFor the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has 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 trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(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 the Respondent’s website or location (Policy, paragraph 4(b)).
The Panel finds that the Respondent must have been aware of the VOLTAREN Mark at the time the Respondent registered the Domain Name in 2021. The Complainant has offered its VOLTAREN product for over 30 years, with VOLTAREN being one of the best-selling topical pain-reliever worldwide. The Respondent has provided no explanation, and none is immediately obvious, why an entity would register a domain name identical to the VOLTAREN Mark (a coined word) and redirect it to a website containing links referring to pharmaceutical products unless there was an awareness of and an intention to create a likelihood of confusion with the Complainant and its VOLTAREN Mark. In these circumstances, the Respondent’s conduct in registering the Domain Name when it was aware of the Complainant’s rights and lacked rights or legitimate interests of its own amounts to registration in bad faith.
The Respondent’s Website offers what appear to be pay-per-click links purporting to sell pharmaceutical products in direct competition with the Complainant. In these circumstances where the Respondent has offered no plausible explanation for the registration of the Domain Name the Panel finds that the Respondent has used the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the VOLTAREN Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website. As such the Panel finds that the Domain Name is being used in bad faith as per paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under 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 Domain Name
Nicholas Smith
Sole Panelist
Date: September 29, 2021