WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novo Nordisk A/S v. Kenobi, LLC.
Case No. D2012-0883
1. The Parties
The Complainant is Novo Nordisk A/S, Bagsværd, Denmark, represented by Wallberg IP Advice, Denmark.
The Respondent is Kenobi, LLC., Middletown, New York, United States of America (the “US”).
2. The Domain Name and Registrar
The disputed domain name <novologflexpen.org> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2012. On April 25, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On April 25, 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 May 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2012.
The Center appointed Martine Dehaut as the sole panelist in this matter on June 8, 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, Novo Nordisk A/S, is a major player in the field of health care, and in particular in the field of diabetes care.
It is the owner of a series of trademarks over the words “novolog” and “flexpen”, including in particular the following US Federal registrations:
- NOVOLOG no. 2,413,874
- FLEXPEN no. 2,516,689
Novolog is used for a fast acting insulin, and Flexpen is used for a prefilled pen to be used with Novolog. As evidenced by the Complainant, both trademarks are often used side by side. The Complainant is even the owner of a domain name that combines both brands: <novologflexpen.com>.
No information is available in the file concerning the Respondent and its activities.
The Respondent registered the disputed domain name on January 1, 2012. It hosts a website which, at first glance, displays information concerning the accurate use of Novolog and Flexpen: “Before you decide to try any new medication, including the Novolog Flexpen, it’s vital that you read the usage instructions. Even if you’ve used other types of insulin delivery, if you have is this one and make sure you’re up to speed on how it works, how to use it and how it will make you feel”. At the bottom of the home page appears the following message: “Novolog Flexpen Dot Org is a participant in the Amazon Services LLC Associates Program, an affiliate advertising program designed to provide a means for sites to earn advertising fees by advertising and linking to (“your website name” (amazon.com, or endless.com, MYHABIT.com, SmallParts.com, or AmazonWireless.com)”. When clicking on one of the menus that are available on the right side of the home page (for example Novolog Flexpen Basics), users get access to other pages were there are displayed, in particular, a number of sponsored links under the heading “diabetic resources on the Web”.
5. Parties’ Contentions
The following are the most significant arguments put forwards by the Complainant, for each of the three criteria provided for by the Policy.
Concerning, firstly, the identity or confusing similarity, the Complainant indicates in particular that “when the two components of the disputed domain names are identical to the marks of the Complainant the domain name shall be deemed to be confusingly similar to the Complainant’s marks for the purpose of the UDRP. This confusing similarity is further underlined by the fact that the Complainant often uses the two marks in exactly this combination”.
Secondly, with respect to the rights or legitimate interests of the Respondent, the Complainant indicates that the Respondent is not a licensee, does not use the disputed domain name in connection with a bona fide offering of goods and services, and is falsely displaying unbiased and noncommercial information.
Concerning, bad faith registration and use, the Complainant alleges that “because of the distinctive nature and intensive (use) of the Complainant’s trademarks, the Respondent is likely to have had constructive notice as to the existence of the Complainant’s trademarks at the time the Respondent registered the domain names. Such constructive notice suggests that the Respondent acted with opportunistic bad faith in registering the domain name”. The Complainant further states that “the Respondent uses the domain name to divert Internet traffic to a site that generates revenue to the Respondent through the Amazon affiliate advertising program”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, and notwithstanding the default of the Respondent, the Complainant must prove that the following three criteria are met:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii)); and
(iii) the disputed domain name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
Each of these elements will be reviewed separately in the following developments:
A. Identical or Confusingly Similar
The disputed domain name <novologflexpen.org> reproduces fully and without any alteration, the trademarks NOVOLOG and FLEXPEN of the Complainant. The mere fact that these trademarks are combined together in a single domain name does not prevent the existence of a very strong confusing similarity. This is all the more true here where the Complainant has established that both marks are often displayed and used together, for the treatment of diabetes. The Complainant itself has combined these trademarks, in the same order, when registering the domain name <novologflexpen.com>.
As a result the first element of the Policy is met.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name. These are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy is that “[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” See paragraph 2.1 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”
The Respondent has failed, indeed, to allege any right or legitimate interest in the disputed domain name. In particular, this Panel holds the view that the information displayed on the website concerning in particular the administration of the Complainant’s medicines does not qualify as legitimate interest. Indeed and as rightly explained in the Complaint, the webpage hosted under the disputed domain name <novologflexpen.org> is primarily designed to generate incomes to the Respondent through a pay per click interface.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
In the Panel’s view, it is undisputable that the Respondent has registered and is using the domain name <novologflexpen.org> in bad faith.
The Respondent has chosen to associate in a single domain name two trademarks of the Complainant, which are often displayed and used together. This demonstrates a good knowledge of the Complainant’s trademarks. This knowledge is further underlined by the content of the page hosted under the domain name, which contains information concerning diabetes in general, and the correct use of the Complainant’s products Novolog and Flexpen in particular.
Now, the decisive element here is that the disputed domain name has also been registered and used for the sole objective of generating income for the Respondent. Indeed, the webpage offers a number of sponsored links, precisely in the field of diabetes. These links are likely to divert users to competitors of the Complainant. They are also likely to harm the image of the Complainant and of its brand. Indeed, some users could believe that this webpage is somehow linked to the Complainant, and may then be surprised with the insertion of ads and of sponsored links. This is all the more so as the website does not contain any disclaimer.
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, <novologflexpen.org> be transferred to the Complainant.
Dated: June 22, 2012