WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novo Nordisk A/S v. Mr. Jonathan Valicenti
Case No. D2005-0563
1. The Parties
The Complainant is Novo Nordisk A/S, Bagsvaerd, Denmark, represented by Eva Borgen, Denmark.
The Respondent is Mr. Jonathan Valicenti, Montreal, Quebec, Canada.
2. The Domain Name and Registrar
The disputed domain name <novonordiskpharma.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2005. On June 13, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On June 14, 2005, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 29, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 20, 2005.
The Center appointed Mladen Vukmir as the sole panelist in this matter on August 15, 2005. 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 Background
According to the information available on the Complainant’s official website “www.novonordisk.com”, Novo Nordisk is a healthcare company and a world leader in diabetes care. The company has the broadest diabetes product portfolio in the industry, including the most advanced products within the area of insulin delivery systems. In addition, Novo Nordisk has a leading position within areas such as haemostasis management, growth hormone therapy and hormone replacement therapy. Novo Nordisk manufactures and markets pharmaceutical products and services that make a significant difference to patients, the medical profession and society. With headquarters in Denmark, Novo Nordisk employs approximately 20,250 full-time employees in 78 countries, and markets its products in 179 countries. Novo Nordisk’s B shares are listed on the stock exchanges in Copenhagen and London. Its ADRs are listed on the New York Stock Exchange under the symbol ‘NVO’.
The Complainant attached (Annex 3 of the Complaint) proofs for the following trademarks and registrations:
US 1637355 with the priority date March 12, 1991;
CTM 144923 with the priority date June, 19, 1998; and
CA 449961 with the priority date July 27, 1989.
5. Jurisdictional Basis
The Panel is satisfied that this dispute is properly within the scope of the Policy and that it has jurisdiction to decide the dispute.
The GoDaddy Registration Agreement (Annex 2 of the case file) incorporates the Policy. The disputed domain name was registered on March 13, 2005, and according to point 4 of GoDaddy’s Registration Agreement, the Policy is applicable to the domain name at issue. According to Article 11(a) of the Rules, the language of these proceedings is English.
6. Parties’ Contentions
The Complainant firstly asserted that the domain name is identical or confusingly similar to a trademark in which the Complainant has rights, because the domain name consists of the trademark NOVO NORDISK and the word “pharma”. The Complainant stated that the domain name is confusingly similar to the trademark NOVO NORDISK and that the word “pharma” merely indicates the Complainant’s business area – the pharmaceutical business which fact also adds to the risk of confusion.
The Complainant further claimed that the Respondent has no rights or legitimate interest in using the Complainant’s trademark because there is no contractual or other agreement between the parties and the Respondent has not been authorized to use the trademark in any way.
The Complainant finally asserts that the domain name was registered and is being used in bad faith. The Complainant submitted in Annex 4 a printout showing that the Respondent has activated the disputed domain name and that it has been using the domain name for the business of parallel trademark (Pharma Web), that is sale of pharmaceuticals from Canada to the United States of America. The Complainant stated that by using the domain name the Respondent is intentionally trying to attract internet users to the website by creating a likelihood of confusion with the Complainants trademark which would lead the customers to believe that the Respondent’s website is somehow associated with the Complainant.
The Respondent did not reply to the Complainant’s contentions. However, this fact does not mean that the Complainant may be awarded whatever it requested by default. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. The Panel notes that the Complainant did support its assertions with actual evidence and now turns to examine them in turn.
7. Discussion and Findings
The Panel performed a limited independent search (such authority has been confirmed by decisions Société des Produits Nestlé SA v. Telmex Management Services, WIPO Case No. D2002-0070, Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038, and Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No D2004-0014, see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions).
The Panel concluded that such search was necessary for several reasons. First reason is that the disputed domain name has not been correctly stated throughout the Complaint. On page 2 the Complainant mentions <novonordisk.com>, on page 7 the Complainant mentions <ovonordisk.com>. The Panel understands that in latter case it must have been a typographical error which is confirmed by the fact that no active site exists with such name, but in former case it had to perform a search to establish that <novonordisk.com> is the official site of the Complainant and is not a disputed domain name. Furtheron, the Panel found that the search was necessary to establish the content of the disputed website and to collect necessary information about the Complainant’s position in the market, which was insufficiently provided in the Complaint.
A. Identical or Confusingly Similar
The Complainant has proven that the domain name is identical or confusingly similar to a trademark in which the Complainant has rights, namely the “NOVO NORDISK” mark.
In comparing the domain name to the Complainant’s mark, it is well established that the generic top-level domain, in this case .com”, must be excluded from consideration as being a generic or functional component of the domain name. (See Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Panel is satisfied with the Complainant’s argumentation that the disputed domain name <novonordiskpharma.com> integrate the trademark “Novo Nordisk” in its entirety. The Panel is convinced that it is likely that the consumers will think that the domain name is a variation of Complainant’s trademark.
The Complainant finally argued that the mere adjunction, within the contested domain names, of terms which are generic/descriptive such as “pharma” merely indicate the business area and that it – in fact – adds to the likelihood of confusion. The Panel refers to the Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709, where it was held that “the mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark”. The Panel agrees that the addition of the term “pharma”, which relates to the field of activity in which the Complainant operates, as well as to services the Complainant offers to its customers, is likely to enhance the confusion and to lead the consumers to believe that the disputed domain name is linked to, affiliated with, or at least endorsed by the Complainant.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, the presence of any of the following circumstances may demonstrate a respondent’s rights and interests to a domain name, in particular but without limitation:
(i) respondent’s 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 before any notice to them of the dispute, or
(ii) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights, or
(iii) respondent is 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 Complainant has argued that there is no contractual or other agreement between it and the Respondent and that the Respondent has not been authorized to use the trademark in any way.
The Panel notes that the Respondent is not using the Domain Name in bona fide. It rather appears that the Domain Name is used for diverting internet users to the Respondent’s website for its own profit by using the disputed Domain Name which is confusingly similar to the Complainant’s trademark.
Based on the case file, the Panel is satisfied that the Complainant has made an initial prima facie case that the Respondent lacks rights or legitimate interests. Once such case is made, the burden of proving shifts to the Respondent who has to prove the existence of, without limitation, any of the three circumstances listed in paragraph 4(c) of the Policy (see cases Croatia Airlines d.d. v. Modern Empire Internet Ltd,. WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Complainant has put forward its supported contentions and, absent any reply from the Respondent, the Panel finds the Complainant’s contentions credible and hence concludes that the Respondent has no rights or legitimate interests in the domain name at dispute.
C. Registered and Used in Bad Faith
In proving the existence of the final UDRP element the Complainant submitted a printout from the Respondent’s website and it appears that the Respondent uses the trademark NOVONORDISK to market its business – Pharma Web, and to sell its products through the disputed website. The Complainant rightfully states that by using the domain name the Respondent is intentionally trying to attract internet users to the website by creating a likelihood of confusion with the Complainants trademark which would lead the customers to believe that the Respondent’s website is somehow associated with the Complainant and to continue to perform its business on such site.
The Complainant makes reference to the case AventisPharma S.A., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037, where the panel held in a similar case that “The Respondent chose a domain name incorporating the trademark of a well known medicine, added the prefix ‘buy’, and used the domain to direct internet users to a website selling discount medicines. In these circumstances, the Panel finds that the Respondent’s choice of domain name was deliberate, with prior knowledge of the Complainants’ trademark, and with the intention to profit from reputation and goodwill of the Complainants’ trademark and medicine. The Respondent registered and has used the disputed domain name with the intention to attract, for commercial gain through increased sales to consumers of discount medicines, internet users to the websites “www.buylantus.com” and “www.canadadrugsdiscount.com by creating a likelihood of confusion with the Complainants’ trademark as to the source of products on the website (...) and as to sponsorship, affiliation or endorsement of the Respondent’s website (...)”.
The circumstances in this case are very similar to the ones from the cited decision. The Respondent used the Complainant’s trademark, added suffix pharma, created a domain name and redirected it to its official website where it sells pharmaceutical products online. Such act not only constitutes bad faith under the Policy but may also create a case of unfair competition.
Under the circumstances, the Panel concludes that the Respondent must have known of the Complainant’s trademarks when registering the contested domain name, even more so, since it deals in the pharmaceutical trade as the Complainant does.
For all the foregoing reasons, the Panel concludes that the Respondent registered and used the domain name <novonordiskpharma.com> in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <novonordiskpharma.com> be transferred to the Complainant.
Dated: August 25, 2005