WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novo Nordisk A/S v. CDMS Invest
Case No. D2012-0676
1. The Parties
Complainant is Novo Nordisk A/S of Bagsværd, Denmark, represented by Wallberg IP Advice, Denmark.
Respondent is CDMS Invest of Ikast, Denmark.
2. The Domain Name and Registrar
The disputed domain name <novonordisk.xxx> is registered with Larsen Data ApS.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2012. On March 30, 2012, the Center transmitted by email to Larsen Data ApS. a request for registrar verification in connection with the disputed domain name. On April 13, 2012, Larsen Data ApS. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 4, 2012.
The Center appointed Halvor Manshaus as the sole panelist in this matter on May 22, 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 a global healthcare company with its headquarters in Denmark. Complainant has existed for close to 90 years, and is regarded as leading within diabetes care, haemophilia care, growth hormone therapy and hormone replacement therapy. Complainant sells and markets its products in almost 180 countries.
Complainant is the owner of a number of trademark registrations worldwide for NOVO NORDISK, including Community Trademark No. 000144923 NOVO NORDISK and Danish trademark ref. No. 215107 NOVO NORDISK.
Additionally, Complainant owns numerous domain names containing NOVO NORDISK, including <novonordisk.com>.
Respondent is CDMS Invest of Ikast, Denmark, having registered on December 2011 the disputed domain name through Larsen Data ApS.
5. Parties’ Contentions
Complainant asserts that the disputed domain name <novonordisk.xxx> is identical to Complainant's trademark NOVO NORDISK.
Further, Complainant holds that Respondent holds no rights or legitimate interests in respect of the disputed domain name. Respondent has never received any consent or license to the use of the trademark NOVO NORDISK in any way, nor does Respondent, to Complainant's knowledge, trade under the name “Novo Nordisk”, and Respondent does not have any products with names identical or similar to the name. Respondent does not use the website corresponding to the disputed domain name for any bona fide offering of goods and services.
Moreover, Complainant holds that the disputed domain name was registered and is being used in bad faith. Complainant finds that there is no evidence of Respondent using the disputed domain name in a fair or legitimate way; rather, Complainant holds that Respondent has been trading off Complainant's well-known name by deliberately trying to mislead web users and consumers to the website, thus tarnishing Complainant's trademark. Previously, the website contained highly graphical pornographic content, whereas the site is now blank. However, Complainant holds that Respondent creates a likelihood of confusion with Complainant's trademark in order to achieve commercial gain, as the site previously had banners to dating sites. Respondent is engaged with the development of various dating sites.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) 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.
A. Identical or Confusingly Similar
Complainant has demonstrated its rights to the mark NOVO NORDISK through both the use and registration of said mark. The disputed domain name <novonordisk.xxx> incorporates in full Complainant's NOVO NORDISK mark.
The Panel does not find that the use of the top level domain “.xxx” makes the disputed domain name any less identical or confusingly similar.
Thus, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant's mark NOVO NORDISK.
B. Rights or Legitimate Interests
Complainant has not given Respondent any license, authorization or consent to use Complainant's mark NOVO NORDISK in any way.
Further, according to Complainant, Respondent is not known as “Novo Nordisk”, nor does Respondent trade under said name or have any products or services called “Novo Nordisk”.
Respondent cannot claim any bona fide or legitimate use of the mark. The website previously contained pornographic content, without any references to Complainant or Complainant's mark NOVO NORDISK, whereas it now simply is a blank website.
It follows from previous UDRP decisions that it is sufficient for a complainant to make a prima facie showing of its assertion under paragraph (4)(c) of the Policy, cf. the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second edition (“WIPO Overview 2.0”), paragraph 2.1. The presented evidence and circumstances referred to by Complainant is, in the Panel's view, sufficient to establish a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name.
Thus, the Panel concludes that Respondent does not have any rights to or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel notes that the website corresponding to the disputed domain name does not, at the time of this decision, have any active content of any kind. The question is whether the passive holding of the disputed domain name can constitute a domain name being used in bad faith. Reference is made to Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; in which the panel found that such passive holding does not prevent a finding of bad faith use under the Policy.
From the presented documentation, it seems clear that Respondent was aware of Complainant's well-known name and mark at the time of registration. Further, it is highly likely that the disputed domain name was registered for the purpose of misleading and diverting potential customers of Complainant to Respondent's website. Respondent's website previously contained pornographic material as well as various banners to dating sites. The Panel agrees that it is likely that this was done as an attempt to attract Internet users to Respondent's site for commercial gain by creating a likelihood of confusion with Complainant's mark.
The next question is whether the actual use – or lack thereof, as the site is now blank – of the disputed domain name is done in bad faith. In other words: Is the passive holding of the disputed domain name may be considered in some circumstance as a use in bad faith? The Panel concludes that in light of all the communications of this case the use of the site constitutes a bad faith use, putting emphasis on the following:
- Complainant's trademark has a strong reputation and is well-known globally;
- Respondent has failed to present any evidence of any good faith use with regard to the disputed domain name;
- The disputed domain name is identical with Complainant's name and trademark, and is thus suited to divert or mislead potential web users from the website they are actually trying to visit (Complainant's site);
- The site was originally set up in order to achieve commercial gain.
The Panel therefore concludes that the disputed 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 disputed domain name <novonordisk.xxx> be transferred to Complainant.
Dated: June 8, 2012