The Complainant is Novartis AG, Switzerland, represented by Dreyfus & associés, France.
The Respondent is Richard Eijpen, Netherlands.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2021. On September 6, 2021, the Center transmitted by email to SIDN a request for registrar verification in connection with the Disputed Domain Name. On September 7, 2021, SIDN 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 29, 2021, providing the registrant and contact information disclosed by SIDN, and requesting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on October 1, 2021. The Center verified that the Complaint as amended satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
On October 3, 2021, the Center received an email communication from the Respondent. On October 11, 2021, the Center suspended the proceedings on the Complainant’s request. On October 25, 2021, SIDN commenced the mediation process. On November 12, 2021, the Center extended the suspension on the Complainant’s request. On November 26, 2021, SIDN informed the Parties that the dispute had not been solved in the mediation process. On the same day, the Center received an email communication from each Party.
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 29, 2021. In accordance with the Regulations, article 7.1, the due date for Response was December 19, 2021. On December 4 and 19, the Center received email communications from the Respondent.
The Center appointed Moïra Truijens as the panelist in this matter on January 11, 2022. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.
4. Factual BackgroundThe Complainant, Novartis AG, is a pharmaceutical company with its headquarters in Basel, Switzerland, and presence around the world, including in the Netherlands where the Respondent is located. As a global leader in the pharmaceutical industry, Novartis has acquired and enjoys substantial goodwill worldwide.
The Complainant produces “Leqvio”, which is a drug for the treatment of adults with primary hypercholesterolemia (heterozygous familial and non-familial) or mixed dyslipidemia, as an adjunct to diet.
The Complainant is, inter alia, holder of the following registered trademarks:
- International trademark LEQVIO No. 1497681, registered on September 27, 2019, covering goods in class 5;
- European Union trademark LEQVIO No. 018105154, filed on August 9, 2019, registered on November 23, 2019, for goods in class 5;
- International trademark LEQVIO No. 1229713, registered on November 11, 2014, covering goods in class 5.
(hereinafter together also referred to as “the Trademarks”).
The Complainant uses its website “www.leqvio.com” in order to promote its goods and services.
SIDN informed the Center that the Disputed Domain Name was registered by the Respondent on February 2, 2021. At the time the Complaint was filed, the website under the Disputed Domain Name appeared to be inactive, which at the time of the decision was still the case.
5. Parties’ Contentions A. ComplainantThe Complainant’s contentions may be summarized as follows.
The Complainant asserts that the Disputed Domain Name is confusingly similar to the Trademarks, because the Disputed Domain Name consists of the Trademarks in their entirety with the addition of the extension “.nl”.
The Complainant also claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name as it is neither affiliated with the Complainant in any way nor has he been authorized by the Complainant to use and register the word “leqvio” as a trademark, or to seek registration of any domain name incorporating the Trademarks. Furthermore, the Complainant states that the Respondent is not involved in any type of legitimate business or services, since he offered the Disputed Domain Name for sale, and since email servers have been configured on the Disputed Domain Name so that there might be a risk that the Respondent is engaged in a phishing scheme.
The Complainant further considers the registration of the Disputed Domain Name in bad faith as it is unlikely that the Respondent was unaware of the Complainant when it registered the Disputed Domain Name as the Complainant and its numerous trademarks are widely known throughout the world, including in Europe. Furthermore, the correspondence between the Parties shows that the Respondent immediately offered to sell the Disputed Domain Name for a sum of EUR 1,500, which exceeds the Respondent’s out of pocket expenses for its registration. Additionally, the Respondent has registered the Disputed Domain Name shortly after the termination of a previous proceeding following mediation under the Regulations between the Complainant and the Respondent regarding another infringing domain name. For this reason, in combination with the immediate offer to sell the Disputed Domain Name for a sum of EUR 1,500, the Complainant argues that the Respondent registered the Disputed Domain Name in bad faith.
The Respondent did not submit a Response with any legal argumentation as to why he should be entitled to keep the Disputed Domain Name. However, several emails from the Respondent show that he was expecting a reasonable reaction to his offer to sell the Disputed Domain Name to the Complainant for EUR 1,500. The Respondent expresses his regret that the mediation process did not work out, unlike the previous case between the same Parties where a settlement was reached.
6. Discussion and FindingsPursuant to article 2.1 of the Regulations, the Complainant must prove each of the following three elements:
a. the Disputed Domain Name is identical or confusingly similar to:
I) a trademark, or trade name, protected under Dutch law in which the Complainant has rights; or
II) a personal name registered in the General Municipal Register (“Gemeentelijke Basisadministratie”) of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which the Complainant undertakes public activities on a permanent basis; and
b. the Respondent has no rights to or legitimate interests in the Disputed Domain Name; and
c. the Disputed Domain Name has been registered or is being used in bad faith.
In accordance with article 10.3 of the Regulations, the Panel shall determine the admissibility, relevance and weight of the evidence submitted; if no response has been submitted, the Panel shall rule on the basis of the complaint; and the Complaint shall in that event be granted, unless the Panel considers it to be without basis in law or fact.
A. Identical or Confusingly SimilarThe Complainant has submitted copies of the registrations of the Trademarks. Consequently, the Panel finds that the Complainant has proven that it has rights in the Trademarks. The Disputed Domain Name incorporates LEQVIO in its entirety, making the Trademarks clearly recognizable in the Disputed Domain Name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.1
The ccTLD “.nl” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 3.0, section 1.11).
The Panel finds that the Disputed Domain Name is confusingly similar to the Trademarks and that the Complainant has thus established the first element of article 2.1(a) of the Regulations.
B. Rights or Legitimate InterestsA complainant bears the burden of prima facie showing that the respondent has no rights or legitimate interests in the domain name. If a complainant succeeds in making a prima facie case, the burden of production shifts to the respondent, which will then have to come forward with appropriate allegations and evidence demonstrating a right or legitimate interest in the domain name (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Article 3.1 of the Regulations provides circumstances in which the respondent may demonstrate such rights or legitimate interests. These circumstances include i) use of the domain name in connection with a bona fide offering of goods or services; ii) being commonly known by the domain name; and iii) making legitimate noncommercial or fair use of the domain name.
According to the evidence and the undisputed submissions of the Complainant, the Panel notes that the Respondent has not received the Complainant’s consent to use the Trademarks as part of the Disputed Domain Name, nor has it otherwise been authorized to use the Trademarks, and he is not commonly known by the Disputed Domain Name, has no connection or affiliation with the Complainant, and has not acquired trademark rights in the Disputed Domain Name. As the Disputed Domain Name does not resolve to an active website, there is no evidence that the Disputed Domain Name is being used for a bona fide offering of goods or services, or that the Respondent makes legitimate noncommercial or fair use of the Disputed Domain Name. This is further confirmed by the offering for sale of the Disputed Domain Name by the Respondent.
The Panel finds that, since the Disputed Domain Name incorporates the Trademarks in their entirety, it carries a high risk of implied affiliation (WIPO Overview 3.0, section 2.5.1).
The Panel concludes that the Complainant has established that the Respondent has no rights to or legitimate interests in the Domain Name.
The Panel concludes that the Complainant has met the second requirement of article 2.1(b) of the Regulations.
C. Registered or Used in Bad FaithIn accordance with article 3.2 of the Regulations, the Complainant must show that the Disputed Domain Name was registered or is being used in bad faith. Several circumstances put forward by the Complainant make that the Panel finds that this is so.
When the Respondent registered the Disputed Domain Name, the Trademarks had already been registered and were being used by the Complainant for its products and services. The Panel finds it highly unlikely that the Respondent did not know of the Complainant’s Trademarks when registering the Disputed Domain Name. This is supported by the fact that the Respondent had registered the Disputed Domain Name shortly after the termination of a previous procedure under the Regulations between the same Complainant and the Respondent regarding another disputed domain name. The Respondent repeatedly refers to that matter, expressing his expectation that the Complainant should pay him EUR 1,500 to obtain the Disputed Domain Name.
In all the circumstances, knowledge of the Complainant’s Trademarks at the time of registration of the Disputed Domain Name is evidence of bad faith (Alstom v. Domain Investments LLC,WIPO Case No. D2008-0287; NBC Universal Inc. v. Szk.com / Michele Dinoia, WIPO Case No. D2007-0077), as is the repeated offer to sell (see section 3.1.1. of WIPO Overview 3.0). In this context, the Panel further notes that the Respondent’s correspondence with the Complainant includes the following further statement: “I would accept every reasonable offer for the domain name and also was and still am willing against a fee both parties would agree for not registering domain names of Novartis in the future.”
The Panel concludes that the requirement of article 2.1(c) of the Regulations has also been met.
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name
Moïra Truijens
Panelist
Date: January 25, 2022
1 In view of the fact that the Regulations are substantially similar to the Uniform Domain Name Dispute Resolution Policy (“UDRP”), it is well established that both cases decided under the Regulations and cases decided under the UDRP, and therefore WIPO Overview 3.0, may be relevant to the determination of this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V.,WIPO Case No. DNL2008-0050).