WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novo Nordisk A/S v. PrivacyProtect.org / Andrey N Afanasev
Case No. D2012-0276
Complainant is Novo Nordisk A/S of Bagsvaerd, Denmark.
Respondent is PrivacyProtect.org / Andrey N Afanasev of Nobby Beach null, Queensland, Australia and Pavlodar, Kazakhstan, respectively.
2. The Domain Name and Registrar
The disputed domain name <buyprandin.net> (the “Domain Name”) is registered with NetEarth One Inc. d/b/a NetEarth.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2012. On February 14, 2012, the Center transmitted by email to NetEarth One Inc. d/b/a NetEarth a request for registrar verification in connection with the Domain Name. On the same date, NetEarth One Inc. d/b/a NetEarth transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 16, 2012 providing the registrant and contact information disclosed by NetEarth One Inc, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on February 20, 2012.
On March 16, 2012, the Center requested Complainant to confirm that a copy of the Complaint, including any annexes had been sent or transmitted to NetEarth One Inc. On March 20, 2012, Complainant transmitted to NetEarth One Inc. d/b/a NetEarth a copy of the Complaint, including any annexes.
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 Respondent of the Complaint, and the proceedings commenced on February 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 18, 2012. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 19, 2012.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on March 27, 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
Complainant is the owner of the trademark, PRANDIN, which has been registered in the United States and the European Union and dates from 1997. The trademark is registered for a pharmaceutical product used in the treatment of diabetes.
The Domain Name was registered on October 6, 2011.
5. Parties’ Contentions
The Domain Name is confusingly similar to a trademark or service mark in which Complainant has rights
Complainant has submitted evidence to show that it is has registered rights in the PRANDIN trademark. Complainant explains that the Domain Name consists of the mark PRANDIN and the prefix “buy.” The word “buy” is an ordinary and descriptive word. It indicates that Prandin products are being offered for sale on the website and reinforces a connection in the mind of the public between the Complainant’s trademark and the Domain Name and therefore increases the risk of confusion.
Respondent has no rights or legitimate interests in respect of the Domain Name
Complainant states that it owns the domain name <prandin.com>, which directs consumers, patients and health care professionals to Complainant’s website where information on Prandin products can be found. Complainant asserts that Respondent has no rights or legitimate interests in using Complainant’s trademark. There is no contractual or other agreement between the parties and Complainant has not authorized Respondent to use its trademark in any way.
Respondent registered the Domain Name in bad faith
Complainant contends that Respondent has activated the Domain Name and is using it to offer Prandin products and other pharmaceutical preparations made by various other pharmaceutical companies for sale. Complainant has submitted supporting evidence of Respondent’s website. Complainant asserts that by so registering and using the Domain Name, Respondent is intentionally using it to attract Internet users to Respondent’s website thereby creating a likelihood of confusion. Respondent is attempting to attract for commercial gain users to its website by creating the impression that Respondent’s website is somehow associated with Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(ii) the Domain Name has been registered and is being used in bad faith.
The onus of proving these elements is on Complainant.
A. Identical or Confusingly Similar
To prove this element, Complainant must have rights in a trademark or service mark, and the Domain Name must be identical or confusingly similar to Complainant's trademark or service mark.
Complainant has registered trademarks for its PRANDIN trademark, as discussed above. The Panel is therefore satisfied that Complainant has registered trademark rights in PRANDIN.
Respondent has used Complainant's trademark in its entirety and added the word “buy”. Prior UDRP decisions have held that a domain name is confusingly similar to a trademark when a respondent uses the complainant's trademark and adds a neutral or generic word that fails to distinguish the disputed domain name from the trademark (see, for example, Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102). In the present case, the word “buy” can be considered a generic word that does not effectively distinguish the Domain Name from Complainant's PRANDIN trademark but instead accentuates the risk of confusion.
The Panel therefore finds that, in the circumstances of this case, the Domain Name is identical or confusingly similar to Complainant's PRANDIN trademarks. Consequently, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Complainant asserts that Respondent has no rights or legitimate interest in using Complainant’s PRANDIN trademark and that Respondent has been using the Domain Name, without authorization, to host a website that offers for sale Prandin products and other pharmaceutical preparations.
The Panel is satisfied that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Respondent did not use the Domain Name in connection with a bona fide offering of goods or services, inasmuch as the website linked to the Domain Name featured pharmaceutical products and thus created a false association with Complainant. Respondent, by failing to provide a Response, has failed to demonstrate any rights or legitimate interests.
Accordingly, this Panel finds that Respondent has no rights to or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is intentionally using the Domain Name to attract Internet users to Respondent’s website for commercial gain, thereby creating the confusing impression that Respondent’s website is somehow associated with Complainant.
Respondent registered the Domain Name more than 13 years after Complainant registered its PRADIN trademark in the United States and European Union, and then linked the Domain Name to a website offering pharmaceutical products. The word “buy” is added to Complainant’s PRANDIN trademark to signal what an Internet user might find on the website. In the Panel’s view, this is strong evidence that Respondent must have been aware of Complainant and its PRANDIN trademark when it registered the Domain Name. Respondent has provided no response to explain or justify its actions in light of these facts and Complainant’s submissions.
The Panel finds that Respondent registered and is using the Domain Name intending to trade on Complainant’s reputation as a provider of pharmaceutical products and to unfairly divert Complainant’s existing and potential consumers.
Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <buyprandin.com>, be transferred to the Complainant.
Christopher S. Gibson
Dated: April 23, 2012