The Complainant is NOVARTIS AG of Basel, Switzerland, represented by Dreyfus & associés, France.
The Respondent is ANONYMOUSSPEECH of Tokyo, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2018. On May 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name. The Center sent an email communication to the Complainant on May 15, 2018 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 May 18, 2018.
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 May 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 14, 2018.
The Center appointed Frank Schoneveld as the sole panelist in this matter on June 28, 2018. 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.
On July 18, 2018 the Center notified the parties of the Panel’s decision to extend the decision due date until July 29, 2018.
The Complainant has submitted a copy of the Registration Agreement which is in English. Paragraph 11(a) of the Rules provides that, subject to the authority of the Panel, the language of the proceedings shall be the same as the language of the Registration Agreement unless the Parties have otherwise agreed to proceeding in a different language. In the absence of any such agreement, these proceedings are therefore in English. 4. Factual Background
The Complainant is a prominent healthcare company with an international presence, headquartered in Basel, Switzerland. One of the Complainant’s products is “Ritalin” indicated for the treatment of attention deficit hyperactivity disorder (ADHD) and narcolepsy in children and adults.
The Complainant is the owner of the following trademark registrations:
- International trademark RITALIN, registration number 689728, registered on February 13, 1998; and
- European Union trademark RITALIN, registration number 002712818, registered on January 8, 2004.
The Complainant is also the owner of the domain name registered on March 6, 2000.
The disputed domain name was registered on October 26, 2017, and resolves to a website containing photographs of the Complainant’s products and offering for sale products that are described as being those of the Complainant.
Before starting these proceedings the Complainant sent to the Respondent a cease-and-desist letter dated January 24, 2018, by registered mail and by email, via Internet Foundation in Sweden (the registry for inter alia the “.nu” country code Top-Level domain (“ccTLD”). The Internet Foundation in Sweden confirmed to the Complainant that the cease-and-desist letter was forwarded to the Respondent. The Complainant never received any reply to this letter. 5. Parties’ Contentions A. Complainant
The Complainant states that it has a diversified portfolio of healthcare solutions including generic and patent-protected medicines that it researches, develops, manufactures, distributes, and sells in a wide variety of therapeutic areas, including the Complainant’s product Ritalin which was first marketed during the 1950s and is available in over 70 countries.
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s trademark RITALIN and that a previous panel has considered the trademark RITALIN as widely known and recognized across the world (referring to Novartis AG v. Leloy Nuijens / Whois Privacy Corp.WIPO Case No. D2016-0487), emphasizing that in many UDRP decisions, panels have considered that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered mark.
The Complainant contends that the disputed domain name entirely reproduces the Complainant’s trademark RITALIN with the association of the term “kopen” which means “buy” in the Dutch language, and as a result the risk of confusion is enhanced, since Internet users may think that the disputed domain name is related to the Complainant’s RITALIN online store. The Complainant argues that:
(a) other panels have found that the use of a generic term such as “kopen” does not prevent the likelihood of confusion with the trademark; and
(b) the extension “.nu” is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademarks and the disputed domain name since the mere adjunction of a ccTLD such as “.nu” is irrelevant as it is well established that the ccTLD is insufficient to avoid a finding of confusing similarity.
The Complainant asserts that the Respondent is not affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register a domain name incorporating the Complainant’s trademark RITALIN and to use photographs of the product belonging to the Complainant. The Complainant notes that in previous decisions, panels have found that in the absence of any license or permission from the complainant to use a widely known trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed.
The Complainant argues that the Respondent has no prior rights or legitimate interest in the disputed domain name, pointing out that the registration of the RITALIN trademark preceded the registration of the disputed domain name by many years. Additionally, the Complainant asserts that the disputed domain name and its website are so similar to the well-known RITALIN trademark of the Complainant, that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name, and besides, the Respondent did not demonstrate use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services. Indeed, the disputed domain name resolves towards a website commercializing RITALIN products without prescription. The Complainant concludes that hence, in fact, it cannot be inferred that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name but rather the Respondent is illegitimately selling the products of the Complainant, or their imitation, by exploiting the Complainant’s fame.
The Complainant states that the Respondent is making a non-legitimate use of the domain name, with intent for commercial gain to misleadingly divert consumers from the Complainant’s official website, and moreover, it is likely the Respondent uses the disputed domain name to sell counterfeit items that could be hazardous to people’s health, and such behavior cannot be regarded as a legitimate or fair use of the disputed domain name. The Complainant also contends that the Respondent never answered the Complainant’s cease-and-desist letter and that other panels have repeatedly stated that when the Respondents do not avail themselves of their rights to respond to the Complainant, it can be assumed that the Respondents have no rights or legitimate interest in the disputed domain name.
The Complainant argues that bad faith can be found where a respondent knew or should have known of the complainant’s trademark rights and nevertheless registered a domain name in which it had no rights or legitimate interest and that it is implausible and unlikely that the respondent was unaware of the complainant when it registered the disputed domain name. The Complainant asserts that indeed, the Complainant and its numerous trademarks are widely known throughout the world and it is impossible that the Respondent did not have the Complainant’s trademark in mind while registering the disputed domain name.
The Complainant contends that previous panels have established that knowledge of the Complainant’s intellectual property rights, including trademarks, at the time of registration of the disputed domain name, proves bad faith registration and that in light of the reputation of the Complainant’s RITALIN trademark, the Respondent’s reproduction of the said trademark clearly proves that the Respondent was aware of the existence of the Complainant’s trademark. The Complainant notes that indeed, the Respondent has registered a domain name that reproduces the Complainant’s trademark and resolves to a website commercializing what seem to be the Complainant’s products.
The Complainant submits that, in addition, bad faith has already been found in other UDRP decisions where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith and given the reputation of the RITALIN trademark, registration in bad faith can be inferred. The Complainant also argues that “it would have been pertinent for Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with Complainant and its products” (referring to Bouygues v. Chengzhang, Lu Ciagao,WIPO Case No. D2007-1325). The Complainant asserts that in this proceeding the Respondent neither tried to defend his rights nor stated any valid arguments to justify the registration of the domain name in response to the Complainant’s cease-and-desist letter.
The Complainant contends that previous panels have considered that in the absence of any license or permission from the complainant to use a widely known trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed and in addition, the use of photographs of the complainant’s products without any authorization also suggests bad faith. The Complainant argues that it is likely the Respondent registered the domain name to prevent the Complainant from reflecting its trademark in the disputed domain name and that this type of conduct constitutes evidence of the Respondent’s bad faith.
The Complainant submits that the Respondent’s use of the trademark in bad faith is evidenced by:
- there is no doubt that many Internet users attempting to visit the Complainant’s website have ended up on the web pages set up by the Respondent, and as the disputed domain name is confusingly similar to the Complainant’s trademark, previous panels have found that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site; and
- it is most likely that the website to which resolves is offering imitations of the products which can be hazardous for consumer’s health; and
- the use of a third party’s trademark without any prior consent to promote products and services that are similar to the products and services of the trademark, supports a finding of bad faith.
The Complainant contends that in similar UDRP cases involving the same complainant, the panel observed that “the danger of diverting customers of the legitimate RITALIN products to a website selling similar products under the trademark RITALIN but not manufactured by the Complainant, which can be hazardous for consumer’s health. The Respondent’s use of a picture of genuine Novartis’ RITALIN medicine pack only contributes to misleading Internet customers.” (Novartis AG v. Radu Luca,WIPO Case No. D2015-1029, and Novartis AG v. Radu Luca,WIPO Case No. D2016-0087).
The Complainant concludes by asserting that the clear inference to be drawn from the Respondent’s operations is that it is trying to benefit from the fame of the Complainant’s marks to commercialize fake products and to make undue profit, and in other words, it is more likely than not, that the Respondent’s primary motive in registering and using the disputed domain name was to capitalize on or otherwise take advantage of the Complainants’ trademark rights, through the creation of confusion. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to UDRP paragraph 4(a), in order to have a domain name transferred or cancelled the complainant must prove that each of the following three elements are present:
(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.
The Rules at paragraph 15(a) require that “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” In the absence of any response from the Respondent to the Complainant’s assertions, the Panel therefore proceeds on the basis of the Complaint and in accordance with the Policy, the Rules and any rules and principles of law that are applicable. A. Identical or Confusingly Similar
The Complainant has provided evidence showing that for more than ten years prior to registration of the disputed domain name it was (and remains) the holder of the RETALIN trademark registered internationally and in the European Union, and has rights arising from such registered trademarks. The Respondent did not challenge such evidence or respond to the contentions the Complainant has submitted.
It is clear that the disputed domain name incorporates the Complainant’s RITALIN trademark in its entirety and simply adds the Dutch word “kopen” which means “buy” in the Dutch language.
A distinguishing feature of the disputed domain name is the coined term “retalin” which reproduces the Complainant’s RITALIN trademark. In the Panel’s view the incorporation of the word “kopen” to the Complainant’s trademark does not distinguish the disputed domain name, which is confusingly similar to the Complainant’s trademark RITALIN. Further, the ccTLD “.nu”, does not affect the assessment that the disputed domain name is confusingly similar to the Complainant’s RITALIN trademark (see, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 1.11).
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the RETALIN trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The evidence provided indicates that the RITALIN trademark is associated with the Complainant and the Complainant’s (or its licensees) pharmaceutical products marketed under that name, while there is no evidence of any right or legitimate interest of the Respondent in the disputed domain name which predominantly contains RITALIN. The evidence provided by the Complainant indicates that:
(i) the Respondent is not affiliated with the Complainant in any way whatsoever;
(ii) the Respondent is using the Complainant’s RITALIN trademark for its own purposes and has incorporated it into the disputed domain name without the Complainant’s authorization;
(iii) the Respondent has never been authorized by the Complainant to use or register its RITALIN trademark or to seek to register any domain name incorporating the Complainant’s RITALIN trademark; and
(iv) the Respondent’s name bears no resemblance to the word “ritalin” (the dominant part of the disputed domain name) and there is no evidence, including in the WhoIs record for the disputed domain name, that suggests the Respondent is known by the disputed domain name.
The disputed domain name resolves to a website commercializing RITALIN and using photographs of the pharmaceutical product applying the trademark of the Complainant. This suggests that the disputed domain name has some sort of sponsorship or endorsement by the Complainant, or that the Respondent has a right to use the RITALIN trademark in the disputed domain name. However, the Complainant makes it clear that it has given no license or authorization to the Respondent to use the trademark, and that its use without the Complainant’s authorization violates the Complainant’s rights in its RITALIN trademark. At the same time there is no evidence that the Respondent has any right or legitimate interest in the Disputed Domain Name.
The evidence provided by the Complainant, together with the fact that the RETALIN mark is being used without authorization on the website to which the disputed domain name resolves, means there is likely to be very limited circumstances in which the Respondent might have any rights or legitimate interest in the disputed domain name.
In the absence of any evidence of the Respondent having any right or legitimate interest in the disputed domain name, a prima facie case has been established that it is more likely than not that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has, however, failed to provide any response to rebut this prima facie case. In those circumstances, the Panel finds that the Respondent has no rights or legitimate interest in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Panel accepts that the use of the Complainant’s trademark RITALIN as a prominent part of the disputed domain name would be likely to confuse Internet users into thinking the disputed domain name is affiliated with or sponsored or endorsed by the Complainant when it clearly is not. Because of this confusion, Internet users attempting to visit the Complainant’s website could well have ended up on the website to which the disputed domain name resolves, and could have been more convincingly confused by the unauthorized use of pictures and descriptions of RITALIN products marketed on this website. Internet users would have been led into thinking that the disputed domain name was that of the Complainant when in fact it was that of the Respondent. Such confusion would be very likely to result in the diversion of Internet traffic from the Complainant’s website to the Respondent’s website at the disputed domain name. Further, having diverted traffic from the Complainant’s website to the Respondent’s website using the disputed domain name, the Respondent is clearly, without any prior consent from the Complainant, using the Complainant’s RITALIN trademark to promote products that are similar to the products of the Complainant.
The use of the word “kopen” together with the Complainant’s trademark in the disputed domain name and the marketing promotion in Dutch (at the website to which the disputed domain name resolves) to buy “Ritalin” brand medicinal products through the website, together with the unauthorized use of photographs of the Complainant’s products on this website, indicates that the Respondent is using the disputed domain name to trade off the goodwill associated with the Complainant’s trademark and corresponding products. The Panel finds that the disputed domain name was registered and is being used to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the website to which the disputed domain name resolves. The Respondent did not rebut any of the above.
In the above circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith. 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 disputed domain name be transferred to the Complainant.
Frank Schoneveld
Sole Panelist
Date: July 29, 2018
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