WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novo Nordisk A/S. v. Prescriptions Plus, Inc.
Case No. D2001-1171
1. The Parties
The Complainant is Novo Nordisk A/S, a Danish company, with its principal place of business at Novo Allé, DK-2880 Bagsvaerd, Denmark, represented by its in-house trademark counsel
The Respondent is Prescriptions Plus, Inc. of 12773 Forest Hill Boulevard, Wellington, 33414 Florida, United States of America, represented by Mr. Frank Suess.
2. The Domain Names and Registrar
The domain names at issue are <novolin.org> and <novolin.net>.
The Registrar is Melbourne IT Ltd., d.b.a. Internet Names Worldwide of Level 2, 120 King Street, Melbourne, Victoria 3000, Australia
3. Procedural History
The Complaint was received by email on September 25, 2001, and in hard copy on September 26, 2001, by the WIPO Arbitration and Mediation Center [the Center]. In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy [the Rules] as approved by ICANN on October 24, 1999, and the Center's own Supplemental Rules in effect as of December 1, 1999 [the Supplemental Rules], the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy adopted by ICANN on October 24, 1999 [the Policy], the Rules and the Supplemental Rules. The Complaint was submitted in English and the proceedings have been conducted in English. The Complainant has paid the specified fee to the Center.
The Center transmitted the requisite Registrar Verification request to Melbourne IT d.b.a. Internet Names Worldwide, on September 27, 2001, and received an email response on September 28, 2001, confirming that the domain names at issue are both registered with Internet Names Worldwide, being a division of Melbourne IT Ltd., and that the Respondent, Prescriptions Plus, Inc., is the current registrant of the domain names <novolin.org> and <novolin.net>.
Proceedings in this case were formally commenced on October 4, 2001, when the Center sent a copy of the Complaint to the Respondent by courier to the postal address recorded in the Administrative Contact details for the domain name at issue and by email to the recorded Administrative Contact details, and additionally to different email addresses associated with the Respondent. One email was rejected as "not a valid juno user". From the FedEx tracking records, it also appears that the original postal address was incorrect, although the tracking records then show that the courier package was accepted (presumably at a redirected address) on October 8, 2001. The notification to the Respondent advised that a Response would need to be submitted to the Center no later than October 24, 2001, to be sure of being considered in these proceedings. No Response was received by the specified deadline. Consequently, on October 25, 2001, the Center issued a "Notification of Respondent Default", which was duly transmitted to the Respondent and to the Complainants' representative by email.
On November 13, 2001, the Center invited Mr. Keith Gymer to serve as single Panelist in these proceedings and received his "Statement of Acceptance and Declaration of Impartiality and Independence" on the same day. The Center appointed Mr. Gymer as Panelist on November 15, 2001, and notified the Respondent and the Complainants' representative of this appointment by email on the same day.
4. Factual Background
According to the Registrar's records, the domain names <novolin.org> and <novolin.net> were both registered to the Respondent on September 29, 1999.
Novo Nordisk A/S is a Danish pharmaceutical company which has manufactured and sold Insulin under the brand name NOVOLIN since at least the second half of the 1980's. A description of NOVOLIN products may be found on the Complainant's US homepage at http://www.novolin.com/view.asp?ID=1177. The Complainant claims to hold trade mark registrations for the trade mark NOVOLIN in 72 countries, all covering "diabetic preparations" in international class 5 for which the trade mark is used. Novo Nordisk A/S provided specific evidence of its ownership of:
(i) US trade mark registration no. 1,384,926, registration date March 4, 1986, registered for "anti-diabetic preparations in class 5; and
(ii) Danish trade mark registration no. VR00.469 1988, registration date January 29, 1988.
After becoming aware of the Respondent's registration of the domain names and their use only for holding pages apparently provided by the Respondent's hosting service provider, the Complainant initially tried, reportedly unsuccessfully, to send a warning e-mail letter to the administrative contact of the Respondent at the specified email address <email@example.com>. [This is the email address which was rejected as not being a valid juno address.] Thereafter, the Complainant sent a letter of May 10, 2001 by registered mail to the Respondent, in which the Complainant requested the assignment of the two domain names. In reply the Complainant received an e-mail response of May 15, 2001 from Frank Suess asking what association the Complainant had "with the Yugoslav Volleyball team Vodjvodina Novolin". [The Respondent had apparently altered the <www.novolin.net> homepage to refer to this team after receiving the Complainant's letter - see Section 5 below.] The Complainant replied to the e-mail on May 16, 2001 maintaining its request for assignment of the domain names. Further e-mails were exchanged on 17th and 18th May 2001. The subject heading of the e-mail of May 17, 2001 referred to the Yugoslav volleyball team and additionally to the "Captain Novolin Super Nintendo Game". [Captain Novolin is apparently also a Novo Nordisk registered trade mark, although evidence to support this claim was not included in the Complaint]. Frank Suess, the Respondent's contact, e-mailed again on June 6, 2001 to request payment of € 1200 allegedly as expenses for his web designer. The Complainant responded on June 11, 2001 offering only to reimburse the actual costs of registration, estimated at $70, this amount being considered appropriate in view of the fact that no websites had been made prior to the Complainant's contact with the Respondent. The Complainant therefore contended that the Respondent intended to use the claim of web design expenses as means to gain a considerable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain names.
The Respondent’s e-mail of June 6, 2001 included a post scriptum in which it was stated, "If you are ever in Florida, please stop by. We are retailing approx. 20.000 vials of Novolin yearly. Unfortunately, most physicians still prescribe Lilly products".
The Complainant confirmed the fact that the Respondent was reportedly retailing its insulin product NOVOLIN.
Otherwise, the Complainant made a number of further contentions by way of a Statement of Case in the Complaint. These are summarised or paraphrased below.
5. Parties’ Contentions
The Complainant asserts that:
- The domain names <novolin.net> and <novolin.org> are identical to its registered trade mark NOVOLIN as well as its domain name <novolin.com> registered on November 12, 1996 with Network Solutions, Inc.
- The Respondent has no rights or legitimate interest in the domain names. The domain names consist of the Complainant's trade mark rights, which were established in The US in 1986 and in Denmark 1988.
- Before the Complainant contacted the Respondent the corresponding web pages (accessible at www.novolin.net and www.novolin.org) merely resolved to "standard" holding pages provided by the Respondent's hosting service provider, Verio. Evidence confirming this was attached to the Complaint depicting the internet pages as at April 4, 2001).
- Following correspondence from the Complainant, the Respondent activated replacement pages (for www.novolin.net and for www.novolin.org, the latter being redirected to www.novolin.net/org/. [Copies of the replacement pages as of September 20, 2001 were provided as Annexes to the Complaint.]
[The replacement page for www.novolin.org purported to relate to a travel violin allegedly called the "Novolin"; the replacement page for <www.novolin.net> purported to be a fan page for a Yugoslav volleyball team apparently called "Novolin".]
- It is curious that a company called Prescriptions Plus Inc. (whose administrative email address is given as <firstname.lastname@example.org>) should suddenly be in the business of manufacturing and selling violins on <www.novolin.org>. It was also perhaps with an ironic sense of humour that a paragraph on the page marked "Attention Investors" should refer to a potential franchise opportunity in Denmark – the domicile of the Complainant, Novo Nordisk A/S.
- It is curious that a US company called Prescriptions Plus Inc. should suddenly should be sponsoring a fan homepage for a Yugoslav volleyball team. This reference also appears to have been made with a sense of humor since the pages depict two bulls tossing a ball bearing the Novolin mark. Novo Nordisk A/S’s corporate logo also depicts a bull with an orb between its horns.
- The domain names were obviously registered in order to prevent Novo Nordisk A/S, as owner of the trade mark NOVOLIN, from reflecting the mark in the corresponding domain names <novolin.org> and <novolin.net>.
- The Respondent has engaged in a pattern of such conduct, i.e. registering domain names in .org. and .net consisting of other company’s well known company names and trade marks. In particular, WHOIS results were provided to show that the Respondent had registered domain names <ventolin.net> and <ventolin.org>, both consisting of GlaxoSmithKline’s trade mark VENTOLIN for anti-asthmatic pharmaceuticals (cf. GlaxoSmithkline’s Internet page www.ventolin.com); Eli Lilly’s HUMULIN anti-diabetic trade mark had been registered as <humulin.net> and <humulin.org> (cf. Eli Lilly’s internet page www.humulin.com). Furthermore the Respondent had registered the company name of a Johnson & Johnson company, Lifescan, in the form of domain names <lifescan.net> and <lifescan.org> (cf. the "authentic" Lifescan Internet pages at www.lifescan.com). Prints of the relevant internet pages were attached as annexes to the Complaint.
- With the registration of <novolin.net> and <novolin.org> the Respondent is disrupting the Complainant's business. Further, the Respondent has tried to obtain a financial gain by trying to sell the domain names at a high price.
- The domain names have been registered in bad faith and are being used in bad faith. The registrant was no doubt aware of the Complainant's trade mark rights to NOVOLIN when the two domain names at issue were registered. (Note the Respondent's company name and the e-mail address of the administrative contact.) Furthermore, the Complainant's previous correspondence with the Respondent confirms and substantiates a claim of bad faith. In particular, the Respondent's admission that it was retailing the Complainant's NOVOLIN products clearly confirms the bad faith in which the two domain names have been registered by the Respondent and that the Respondent was aware of the Complainant's trade mark rights.
The Complainant requests that the domain names be transferred to the Complainant.
No Response to the Complaint was received from the Respondent.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer of a domain name to a Complainant under the Policy it is necessary that the Complainant must prove, as required by Paragraph 4(a) of the Policy, that
(i) the contested 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, Paragraph 5(e) of the Rules expressly requires the Panel to "decide the dispute based upon the complaint". Under Paragraph 14(a) of the Rules in the event of such a "Default" the Panel is still required "to proceed to a decision on the complaint", whilst under Paragraph 14(b) it "shall draw such inferences therefrom as it considers appropriate." It is clear that this does not mean a default decision is automatically to be issued in favour of the Complainant. If that were the intended result then there would be no need to appoint a Panel to decide the dispute. Consequently, the Panel must assess the Complaint on its merits.
Similarity and Existence of Rights in the Specified Trademark:
In the present case, the Complainant claims and has demonstrated to the Panelist's satisfaction that they own registered trade mark rights in the mark NOVOLIN, and that such rights predate the registration by the Respondent of the domain names at issue. The domain names at issue are <novolin.org> and <novolin.net>. The distinctive element, "novolin", in both the domain names is identical to the trade mark owned by the Complainant.
The Respondent made no submissions and did not make any challenge to the validity of the Complainant's rights.
The Panelist therefore accepts that the contested domain names are essentially identical to the mark (NOVOLIN) in which the Complainant has rights and that it has fulfilled the requirements of Paragraph 4(a)(i) of the Policy.
In the light of the distinctive nature of the "NOVOLIN" mark and the fact that the Complainant has established its claim to trade mark rights in the mark to the Panelist's satisfaction, the Panelist accepts the Complainant's submissions (as summarised at 5 above) that the Respondent has no legitimate rights of its own in the domain names at issue.
From the evidence, it is clear that, at most, the Respondent has acted as a non-exclusive retailer of the Complainant's NOVOLIN products. The Respondent was not authorised as Agent or as an exclusive Distributor to act on the Complainant's behalf in any matters relating to the registration or use of its NOVOLIN mark as a domain name or otherwise. Doing business as "Prescriptions Plus" and holding itself out to be contactable at <email@example.com>, the Respondent was undoubtedly aware of the Complainant's rights in the NOVOLIN mark, and must have known full well that its retail sales gave it no entitlement to any legitimate claims to appropriate the mark itself as a domain name.
Consequently, the Panelist concludes that the Respondent has no rights or legitimate interests in the domain names, so that the requirements of Paragraph 4(a)(ii) of the Policy are met.
The Respondent's defence to the Complainant's claims, insofar as it is possible to reach a view in the absence of any substantive Response, would appear to be based on the contention that the domain names have been put to use for websites for allegedly unrelated references to a Yugoslav volleyball team and a travel violin.
As the Complainant has recognised, in fact, it is evident that these websites have been constructed more with tongue-in-cheek and with allusions directed at poking fun at the Complainant, rather than with any serious bona-fide intent. They are in reality a mere contrivance and little more than a sham. The Respondent's use is no more valid in its defense in this case than was Mr. Toeppen's use of <panavision.com> to show pictures of Pana, Illinois - see Panavision International L.P. v. Toeppen 141 F.3d 1316.
In trade mark law it is well-established that the genuine proprietor of a trade mark has the right to oppose unauthorised registration of its mark by an agent or other representative - see e.g. Paris Convention for the Protection of Industrial Property Article 6septies. This right is also clearly recognised in the USA where a trade mark registration may be held void if the wrong party is identified as the applicant - see e.g. Huang v. Tzu Wei Chen Food Co., Ltd., 849 F.2d 1458.
In the Panelist's view, the situation in the present case is analogous. The Respondent is in the retail pharmaceutical business. The Respondent's registration of the domain names <novolin.net> and <novolin.org> was without authority. One way or another its objective in registering the domain names at issue was to obtain some unjustified benefit by way of association with or otherwise from the Complainant as the rightful owner of the NOVOLIN mark.
Furthermore, the Complainant's evidence, unchallenged by the Respondent, shows that this was not just a one-off (or perhaps more accurately a two-off in this case) but was part of a systematic pattern of the misappropriation as domain names of similar pharmaceutical marks of others.
This conduct plainly falls in the category of "bad-faith" registration and use of the domain names for the purposes of the Policy.
The Panelist therefore concludes that the requirement of Paragraph 4(a)(iii) of the Policy is also satisfied.
The Panelist decides that the Complainant succeeds with its Complaint and orders that the domain names <novolin.org> and <novolin.net> are to be transferred to the Complainant.
Dated: November 27, 2001