WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novartis AG v. R. Hall
Case No. D2011-2112
1. The Parties
The Complainant is Novartis AG, Basel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is R. Hall, Minnesota, United States of America, represented by William C. Halls, Attorney at law, United States of America (the “United States”).
2. The Domain Name and Registrar
The disputed domain name <virashield.com> is registered with GoDaddy.com, LLC
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2011. On December 2, 2011, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On December 2, 2012, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 December 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 27, 2011. The Response was filed with the Center on December 27, 2011. A supplemental submission was filed by the Complainant with the Center on February 15, 2012 in response to a few points made in the Response filed. On January 9, 2012 the Complainant requested the Center suspend the proceedings for the purpose of settlement negotiations with the Respondent. On the same day, the Center suspended the proceedings. On February 7, 2012 the Complainant informed the Center that the parties had not reached any settlement and therefore requested the Center to re-institute the proceedings. The proceedings were re-instituted on February 15, 2012 and the Center proceeded with the Panel appointment.
The Center appointed Francine Tan as the sole panelist in this matter on February 20, 2012. 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
The Complainant was established in 1996 following a merger of Ciba-Geigy and Sandoz, and is one of the world’s leading pharmaceuticals company, with operations in more than 140 countries around the world. One of the Complainant’s primary business units is that of “Animal Health” which involves the research, development and commercializing of treatments for domestic and farm animals. A leading product in its portfolio, amongst others, is cattle vaccine, sold under the VIRA SHIELD trade mark. It was originally developed and marketed by Grand Laboratories, Inc. in 1986. In January 2002, the Complainant took on the VIRA SHIELD product line as well as the corresponding trademark portfolio. The Complainant’s sales of VIRA SHIELD products in the year 2001 is said to have reached an estimate of US D10 million, with a market share of about 10%. The Complainant further states that in the preceding three years, the annual advertising expense for the VIRA SHIELD trade mark has been in the region of US D1 million, and today, cattle vaccine sold under the VIRA SHIELD trade mark is the second highest selling cattle vaccine in the US, with a market share of 15%.
The Complainant asserts that its VIRA SHIELD is a well-known mark in relation to its pharmaceutical products. The mark has been registered in countries such as the United States, Australia, China, Estonia, Cyprus, the European Community, Egypt, Republic of Korea, Turkey and Vietnam.
The Complainant states that the Respondent, a private individual, is not in any way connected with or known to the Complainant. Apart from the disputed domain name, he is said to have registered many other domain names (e.g. <alpharice.com>, <dolwe.com>, <alfaenergy.com>, <olllo.com>, <jagulan.com> and <zweepz.com>). The Complainant asserts that that all of these domain names are used solely in relation to domain name parking services and offered for sale.
The disputed domain name was registered on April 4, 2004 and resolves to a domain parking service hosted by GoDaddy.com. The Complainant points out that Internet visitors to the webpage are allowed to bid for the disputed domain name, which means that the disputed domain name has never been used for content. Instead, the Respondent or Registrar “monetizes type-in traffic by placing advertisement listings and links targeted on the predicted interest of the visitor”. In May 2011 when the Complainant made a bid for the disputed domain name for USD250, the Respondent responded with a demand for USD50,000.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights; the Respondent has no rights or legitimate interests in respect of the disputed domain name; and the disputed domain name has been registered and is being used in bad faith (paragraph 4(a)(i)-(iii) of the Policy).
In relation to the first element of paragraph 4(a) of the Policy, the Complainant submits that the absence of a blank between the words “vira” and “shield” is irrelevant as it is common place to connect two words to create “an admissible domain name (e.g. <whitehouse.gov> for “The White House” or <alfaromeo.com> for “Alfa Romeo”)”. The disputed domain name is therefore identical or confusingly similar to the Complainant’s VIRA SHIELD trade mark.
As regards the second element of paragraph 4(a) of the Policy, the Complainant points out that the Respondent registered the disputed domain name four years after the Complainant’s trade mark was registered in the United States and more than 15 years after the Complainant’s VIRA SHIELD product had been launched in the United States. Furthermore, by then, about USD10 million in sales turnover of VIRA SHIELD products had been reached. The Complainant asserts that:
(i) no relationship between the Complainant and the Respondent exists that would give rise to any license, permission, or authorization by which the Respondent could own or use the disputed domain name;
(ii) the fact that the Respondent has not published any “real content” in relation to the disputed domain name since 2004 is a clear indication that he has no rights or legitimate interests in respect of the disputed domain name.
(iii) there is no indication of a legitimate or bona fide use of the disputed domain name. The term VIRA SHIELD is neither a generic term nor is the content offered on the Respondent’s parking site in any way related to this term.
In relation to the third element of paragraph 4(a) of the Policy, the Complainant contends that the circumstances referred to in paragraph 4(b)(i) and (iv) of the Policy are applicable in this case: firstly, it is implausible that the Respondent was not aware of the Complainant’s VIRA SHIELD trade mark when registering the disputed domain name; secondly, the Respondent has been using the disputed domain name as a parking site, allowing visitors to bid for it; and thirdly, the very purpose for the Respondent’s registration of the disputed domain name was obviously for the purpose of profit by attracting misdirected Internet users searching for the Complainant’s cattle vaccine to his website where pay-per-click links can be found. WIPO UDRP panelists have in previous decisions concluded that a domain name is registered in bad faith if the registrant willfully closes his eyes to colliding third-party rights in a trade mark. Reference was made to the cases Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462; The Law Society v. RareNames WebReg / Rarenames, Inc., WIPO Case No. D2009-0720; and Moari Television Service v. Damien Sampat, WIPO Case No. D2005-0524.
The Complainant argues that the Respondent must be considered a “sophisticated domainer who regularly registers domain name for use as [pay-per-click] landing pages”. The circumstances indicate that the Respondent registered the disputed domain name primarily for the purpose of selling the domain name to the Complainant or one of its competitors and meanwhile producing profit with misled Internet users looking for the Complainant’s products. The Respondent has no legitimate interest in holding the disputed domain name. Although he registered the domain in early 2004, he has not made any attempt to use it for any real content yet. The fact that the Respondent had asked for USD50,000 for the sale of the disputed domain name clearly indicates that he was aware of the Complainant’s trademark and its value as a domain name.
The Respondent states that he is the President and Chief Executive Officer of Enzacta LLC, a company registered in the State of Nevada, in the business of producing a line of nutritional supplements and whole food derivatives based primarily on rice. It operates through various affiliates and subsidiary companies in Columbia, Ecuador, El Salvador, Guatemala, Republic of Korea, Mexico, the Philippines, Spain and the United States. He claims that he has reserved domain names, including the disputed domain name, for several future potential products and product categories for Enzacta’s use.
The Respondent claims that when registering domain names, he does not take active steps to prevent the registrar, GoDaddy.com, from parking the domain names with the standard GoDaddy parking page. His understanding is that GoDaddy does this as a matter of course and there is no particular commercial significance to the practice. He argues that:
(i) While the Complainant has registered the trade mark VIRA SHIELD, it is not the sole nor even the first party to claim rights to “VIRA SHIELD”. Registration rights in the United States have also been asserted by other entities.
(ii) His reservation of the disputed domain name for Enzacta’s potential use of the name “ViraShield” is for nutritional supplements. Such a use would not conflict with the Complainant’s trademark rights in respect of veterinary vaccine for the prevention of disease caused by viruses in the bovine species.
(iii) The Complainant’s trademark registration rights do not extend to many of the countries in which Enzacta does business.
(iv) The Complainant’s registered trade mark VIRA SHIELD is for use in relation to veterinary bovine vaccine market in certain countries and does not preclude other uses of the term “vira shield” in other product categories or other countries. The Complainant does not have exclusive rights to the term “vira shield”. Other companies have previously developed and marketed and are currently developing and marketing products with the trade mark VIRA SHIELD, VIRASHIELD or VIRA-SHIELD. A search of the US trade mark database is sufficient to show that there are many other products and categories that use the trade mark VIRA SHIELD /VIRASHIELD other than the Complainant’s use.
(v) The Respondent’s anticipated use of the domain name is for Enzacta’s current market of human nutritional supplements.
(vi) The Respondent and/or Enzacta have spent considerable time, energy and funds in developing products and product categories that capitalize on those registered names. Examples are: <AlfaEnergy.com> (for use with an existing Enzacta product, Alfa Energy), and <Alfarice.com> (for use with the Enzacta product category of “Alfa” rice derived nutritional supplements) and <dolwe.com>, <Jagulan.com>, <Olllo.com> and the disputed domain name are all for use in potential future products or categories.
(vii) The Respondent has not registered the disputed domain name in bad faith as he has a legitimate business interest (namely Enzacta) in protecting a domain name for a product or product category that they are developing.
(viii)The Respondent asserts that rather than being evidence of bad faith, his counter-offer of US $50,000 is actually evidence of the substantial value he/Enzacta associates with its product development and other costs it has incurred in connection with the disputed domain name.
6. Discussion and Findings
The Panel finds guidance from the following provisions in coming to its finding in these proceedings. Paragraph 10 of the Rules stipulates, inter alia, that:
“(a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.
(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel.
(d) The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.”
Paragraph 4 of the Policy provides that the Complainant shall establish the presence of each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it 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.“
On the preliminary issue of the admissibility and relevance of the supplemental submission made by the Complainant, the Panel is of the view that it would be appropriate for it to be admitted and taken into consideration as the points made therein and evidence submitted are relevant, and addressed questions and issues that had crossed the mind of the Panel in the course of reviewing the Complaint and Response. Parties should be given a fair opportunity to present their respective cases in as complete a manner, but within certain limitations, in particular, it should not impede the expeditious and timely conclusion of the proceedings.
A. Identical or Confusingly Similarity
The Complainant has shown that it has trade mark rights in VIRA SHIELD which is incorporated in its entirety in the disputed domain name. The disputed domain name is effectively identical to the Complainant’s trade mark. The Policy does not state that the trade mark has to be the only one subsisting on a trade marks register or that the Complainant has to show it is the only one possessing rights to the trade mark. The points submitted by the Respondent in relation to paragraph 4(a) of the Policy are therefore irrelevant for the purposes of the Policy.
The Panel therefore finds that the Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant is required to satisfy the requirements of paragraph 4(a)(ii) of the Policy. In this regard, previous panels have recognized the inherent difficulty in having to prove a negative, i.e. the absence of rights or legitimate interests on the Respondent’s part. In accordance with established practice, the Complainant is therefore only required to establish a prima facie case showing a lack of rights or legitimate interests on the Respondent’s part, after which the Respondent has a right of rebuttal as such, by showing the bases for his claim of rights or legitimate interests. (See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition.)
The Panel is of the view that the Complainant has satisfied its burden of establishing a prima facie case.
Paragraph 4(c) of the Policy sets out examples of how a respondent may show that he/it has rights or legitimate interests in respect of a domain name:
“(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 Respondent has made reference to his company, Enzacta, and asserted that the disputed domain name (amongst others) was registered for anticipated use in connecting with the company’s current and future business. He also states that he/Enzacta has “spent considerable time, energy and funds in developing products and product categories that capitalize on those registered names”. There was no evidence submitted which leaves the claim unsubstantiated. Considering the fact that the disputed domain name was registered a relatively long time ago, evidence of the alleged product development in relation to the disputed domain name should have, by the time of the commencement of these proceedings, been readily available and proffered in evidence by the Respondent.
There is nothing which shows “demonstrable preparations [by the Respondent or through his company, Enzacta] to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services”. There is also no evidence that the Respondent (as an individual or business) has been commonly known by the disputed domain name, even in the absence of any acquisition of trademark rights. The disputed domain name appears to have been simply “parked” with an open invitation for a bid for it since 2004.
In the circumstances, whilst there may be prima facie evidence of a legitimate business that the Respondent is engaging in through his company, Enzacta, the Panel has no basis on the present record for making a finding that the Respondent has rights or legitimate interests in respect of the disputed domain name.
In this Panel’s view, the Complainant has established paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy stipulates that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.“
Having considered all the circumstances of this case including the supplemental submission and evidence, the Panel is of the view that the Complainant has made out a case which corresponds with paragraph 4(b)(i) and (ii) of the Policy.
The Respondent has claimed that the disputed domain name was not registered in bad faith as he has a “legitimate interest in protecting a domain name for a product or product category that they are developing”. In the Panel’s view, this argument does not hold water. The disputed domain name involves the VIRAL SHIELD trade mark and not the ENZACTA mark. There is no trace of evidence that the Respondent has been intending to use the VIRA SHIELD/VIRASHIELD mark nor of steps taken to protect the mark in relation to such proposed use. The domain name parking pages (with options for bids for the corresponding domain names to be made) to which the Respondent’s domain name registrations resolve, the demand for USD50,000 which is significantly in excess of costs directly related to the disputed domain name, the domain name hoarding of over 800 domain names which, in the Panel’s view constitutes a “pattern of conduct”, all add up and create a very different picture from what the Respondent has sought to put forth in support of his case.
The Panel therefore concludes that the disputed domain name was registered and used in bad faith.
The Complainant has established paragraph 4(a)(iii) of the Policy.
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 <virashield.com> be transferred to the Complainant.
Dated: March 4, 2012