The Complainant is Novartis AG of Basel, Switzerland, represented by Selarl Marchais De Candé, France.
The Respondent is I Singh of San Jose, California, United States of America.
The disputed domain name <sentinelfordogs.com> is registered with Wild West Domains, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2010. On April 28, 2010, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On April 30, 2010, Wild West Domains, Inc. 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 May 3, 2010 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 amendment to the Complaint on May 4, 2010. The Center verified that the Complaint together with the amendment to the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2010. On May 26, 2010, Mr. Jeffrey Sonnabend submitted an extension request to file a Response. Also filed as of that date was a declaration of Mr. I. Singh, in which he indicated that he had instructed Mr. Sonnabend to request an extension of time to respond to the Complaint.
The Center appointed J. Christopher Thomas as the sole panelist in this matter on June 2, 2010. 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.
After accepting his appointment, the Panel granted an extension of time (until June 17, 2010) to the Respondent in order to permit it to file its Response. The Response was received on June 15, 2010.
On June 21, 2010, the Center received a supplemental filing from the Complainant, which was forwarded to the Panel on the same day. On June 29, 2010, the Center received a supplemental filing from the Respondent, which was also forwarded to the Panel on the same day. In light of its earlier direction, the Panel decided not to consider the said supplemental filings from the both parties and it has restricted its analysis of the matter to the Complaint and the reply thereto.
The Complainant, Novartis AG, is a large pharmaceutical company which, among other things, has a business unit known as Novartis Animal Health. One of that unit's most popular products is Sentinel, an oral broad-spectrum anthelmintic and flea control product described for dogs.
The Complainant is the owner of a number of trademarks, including international trademark SENTINEL, No. 539057, registered on May 18, 1989 and duly renewed on May 18, 2009. Evidence of registrations in various national jurisdictions was submitted with the Complaint. These registrations were made prior to the registration of the disputed domain name on October 29, 2007.
The following summary of the parties' submissions does not attempt to record each and every point made by the parties. The Panel has carefully reviewed the parties' submissions and has found it necessary only to record the salient points of the submissions.
The Complainant observes that the disputed domain name, <sentinelfordogs.com>, reproduces entirely the trademark SENTINEL which, it asserts, is highly distinctive in relation to the goods at stake, namely, veterinary products. The only difference between the Complainant's trademark and the disputed domain name is the adjunction of the terms “fordogs” placed at the end of the name. It is submitted that this does not distinguish the disputed domain name from the Complaint's trademarks since these words are completely descriptive and generic.
It is contended further that the addition of “fordogs” does not serve to distinguish the domain name from the trademark, but may reinforce the association of the disputed domain name with the Complainant's trademark since the product is a veterinary product. The addition of the words “fordogs” strengthens a likelihood of confusion between the trademark and the disputed domain name.
With respect to the issue of legitimate interests in respect of the disputed domain name, the Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register the domain name including the above-mentioned trademarks. There is no relationship whatsoever between the involved parties. It is contended therefore that the respondent has adopted the trademark for its own use and incorporated into its domain name without the Complainant's authorisation.
With respect to the issue of bad faith, the Complainant contends that the Respondent has registered the disputed domain name in bad faith in order to make unfair benefit of the Complainant and its SENTINEL product's reputation. The disputed domain name has been registered to the purpose of attracting Internet users to the Respondent's website, and creates a likelihood of confusion between Novartis' trademark and the disputed domain name. The Complainant contends that the Respondent was clearly aware of the trademark because it combines the trademark and the descriptive words “fordogs” which clearly referred to the Complainant's product dedicated for dogs.
The disputed domain name leads to a website which reproduces the Complainant's official logo and trademark of SENTINEL products. It is therefore contended that the Respondent was undoubtedly aware of the risk of deception and confusion that would follow when it registered the disputed domain name. A visitor to the site is directed to a third party's website “www.entirelypets.com” on which the Complainant's competitors' veterinary products are advertised for sale. Thus, it is evident that the Respondent has registered the disputed domain name for the purpose of disrupting the Complainant's business and this is further evidence of bad faith.
The complainant therefore requests the Panel to issue a decision that <sentinelfordogs.com> be transferred to the Complainant
In his May 26, 2010, declaration, filed in affidavit form dated June 8, 2010, the Respondent asserted that he acquired the disputed domain name to use in connection with the promotion and sale of genuine Sentinel brand goods, and only Sentinel brand goods. Annexed to his affidavit was a true and correct copy of the home page of the website currently operated by the Respondent. It was asserted that visitors to the domain who wished to purchase Sentinel brand products are directed to a store front page that clearly identifies itself as being operated by an entity that is unaffiliated with the Complainant. The Respondent contended that the website in question has always forwarded potential purchasers to a retail website operated by an authorised and/or clearly branded reseller, and further that he does not operate any other domains incorporating the word “sentinel”.
Submissions, dated June 14, 2010, were also filed on behalf of the Respondent. Noting that a complainant must sure that each element of paragraph 4(a)(i)-(iii) must be proven, it was contended that the Complainant was unable to make out its Complaint because the Respondent was engaged in a legitimate use of the disputed domain name and the facts did not support a showing of bad faith registration or use of the disputed domain name.
The Respondent did not dispute the similarity of the disputed domain name and trademark at issue. He did however contend that he was using the disputed domain name in connection with the authorised promotion and sale of the Complainant's genuine goods. In this regard it was contended that the Respondent had not engaged in some type of “bait and switch” practice whereby users of the site would be directed to third party websites where competing brands would be available for sale when a customer clicked upon the “Buy Sentinel” button. Rather, by clicking one of the purchase options, the purchaser would be taken to a website that sells authentic Sentinel products, and only Sentinel products.
It was also contended that prior to the commencement of the dispute, the Respondent made demonstrable preparations to use the disputed domain name in connection with bona fide sales. It was observed that he had been making such preparations for Sentinel sales since the registration of the disputed domain name on October 27, 2007. In this regard it was contended that the Respondent need not show a fully operational business in order to prove demonstrable preparations, but rather must simply show that before notice of the dispute, he made preparations to use the disputed domain name, even if such preparations were perfunctory, superficial, or mechanical.
It was contended further that the retail sales were bona fide offerings of goods and reference in this regard was made to other UDRP panels which had found that parties acting as dealers in trademarked products were authorised to advertise the products under the mark and to draw attention to the mark.
The Respondent contended further that the website operating under the disputed domain name does not claim to be operated by the trademark owner and indeed purchases must be made from storefront domains. The retailers there are clearly identified as entities unaffiliated with the Complainant. It is therefore contended that customers cannot possibly be confused about whether they are ordering from the manufacturer or from a retailer.
Finally, with respect to the issue of bad faith, it was contended that the Respondent did not register the disputed domain name in bad faith. To the contrary, he registered with the good-faith intent to promote the legitimate sales of genuine Sentinel products. Reference was made to prior decisions which had held that as a matter of trademark law a purchaser of bona fide goods is entitled to resell those goods, and to truthfully advertise the goods bearing the trademark. It was contended that this was precisely the type of use here.
There is no dispute that the disputed domain name incorporates the Complainant's trademark and adds the descriptive “fordogs”. The Respondent, correctly in the Panel's view, did not dispute the similarity of the disputed domain name and trademark at issue.
As such, the Panel finds that first element of the Policy has been satisfied.
The resolution of this Complaint turns on the issues of legitimate interests and bad faith.
The evidence before the Panel is that there is no commercial relationship between the Complainant and the Respondent and that, in particular, the Respondent has not been authorised by the Complainant to use its trademark nor, for that matter has the Respondent concluded a sales and distribution contract with the Complainant.
This assumes seminal importance because the Respondent is not, contrary to his submissions, purchasing the trademark owner's product and reselling such goods with any sort of implied license to use the mark in connection with a genuine resale transaction. While the Respondent has emphasised his interest in acquiring the disputed domain name to promote the sale of genuine Sentinel products, no evidence was adduced in the Reply that the Respondent had ever purchased Sentinel products for further resale. Indeed the whole structure of his business is to intermediate between would-be purchasers of Sentinel products and Internet websites maintained by vendors that, among other things, have purchased and now offer Sentinel products for sale. The fact that clicking on the “Buy Sentinel” icon directs a would-be producer to a third-party website which is offering Sentinel products does not change this fundamental fact.
In the Panel's view, the Respondent has inserted the website operating under the disputed domain name between the Complainant and would-be producers of the Complainant's trademarked product. Moreover, the Panel's review of the operation of the website indicates that even where the “Buy Sentinel” products button is clicked, the third-party website “www.petcarerx.com” lists competing products on a “We Also Recommend” sidebar on the same page.
The Panel concludes that the Respondent has no rights or legitimate interests in respect of the domain name.
The foregoing finding is also relevant to the issue of bad faith. In the Panel's view, the disputed domain name has employed the Complainant's trademark so as to permit the Respondent to intermediate between would-be purchasers of Sentinel products and vendors of such products, thereby generating “click-through” revenues for the Respondent. Given the absence of any rights and legitimate interests, the obvious confusion created by the conjoining of “fordogs” to the Complainant's trademark, and notwithstanding the Respondent's disavowal of any intention to mislead, in this Panel's view it is concluded that the disputed domain name has been registered and is being used 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 disputed domain name <sentinelfordogs.com> be transferred to the Complainant.
J. Christopher Thomas
Dated: June 30, 2010