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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Novartis AG v. Whois Privacy Corp., Domain Admin

Case No. D2017-0566

1. The Parties

The Complainant is Novartis AG of Basel, Switzerland, represented by Dreyfus & associés, France.

The Respondent is Whois Privacy Corp., Domain Admin of Nassau, New Providence, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <ritalin-kopen.com> is registered with Internet Domain Service BS Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 22, 2017, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 19, 2017.

The Center appointed Alfred Meijboom as the sole panelist in this matter on April 28, 2017. 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 is a global healthcare company with a history going back more than 150 years. The Complainant produces “Ritalin”, which is a drug indicated for the treatment of attention deficit hyperactivity disorder (ADHD) and narcolepsy in children and adults. Ritalin was first marketed during the 1950s and is available in over 70 countries. In 2014, Ritalin has been classified among the top 20 pharmaceutical products. The Complainant is, inter alia, holder of the following registered trademarks:

- European Union trademark 2712818 RITALIN, registered on January 8, 2004, for goods in class 5;

- International trademark 278969 RITALIN, registered on January 25, 1964 for goods in classes 1, 2, 3 and 5; and

- International trademark 689728 RITALIN, registered on February 13, 1998 for goods in class 5.

(together the “RITALIN Mark”.)

The disputed domain name was registered on November 28, 2016 and previously resolved to a webpage page entitled “Ritalin Kopen” (“buy Ritalin” in Dutch) which commercialized pharmaceutical products under the RITALIN Mark without prescription and displaying pictures of the Complainant’s products. The disputed domain name subsequently directed to Google’s cache of “http://ritalin-kopen.com/” which invites the user to go to the website “www.ritalin-kopen.nl”, and presently lists websites which, inter alia, offer drugs under the RITALIN Mark.

5. Parties’ Contentions

A. Complainant

According to the Complainant the disputed domain name is confusingly similar to the RITALIN Mark, as the disputed domain name includes the RITALIN Mark in its entirety and merely adds “kopen”, which means “buy” in Dutch, thereby just adding a generic and descriptive term to the RITALIN Mark which does not influence the similarity between the RITALIN Mark and the disputed domain name. Moreover, the Complainant considers the likelihood of confusion to be reinforced by the webpages set up by the Respondent as the disputed domain name resolved to a page commercializing products under the RITALIN Mark without prescription so that Internet users may believe that such products are endorsed or authorized by the Complainant.

The Complainant also claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name as it is neither affiliated with the Complainant in any way nor has he been authorized by the Complainant to use and register the RITALIN Mark, or to seek registration of any domain name incorporating the RITALIN Mark and to use images of the Ritalin product of the Complainant. The Complainant alleges that such absence of a license or permission from the Complainant to use the RITALIN Mark does not allow the Respondent to claim actual or contemplated bona fide or legitimate use of the disputed domain name. According to the Complainant the Respondent is making a non-legitimate use of the disputed domain name, with intent for commercial gain to misleadingly divert consumers from the Complainant’s official website. Moreover, the Complainant argues that it is likely that the Respondent uses the disputed domain name to sell fake items that could be hazardous to people’s health. Such behavior can also not constitute legitimate or fair use of the disputed domain name.

The Complainant further considers the registration of the disputed domain name in bad faith as it is unlikely that the Respondent was unaware of the Complainant when it registered the disputed domain name as the Complainant and its numerous trademarks are widely known throughout the world including Europe. In this light the Complainant finds it impossible that the Respondent did not have the RITALIN Mark in mind while registering the disputed domain name. Also in light of the reputation of the RITALIN Mark, the Respondent’s reproduction of the RITALIN Mark clearly proves that the Respondent was aware of the existence of the RITALIN Mark. Furthermore, the Complainant claims that the Respondent registered the disputed domain name through a privacy shield service to hide its identity and contact details, thus, preventing the Complainant from contacting the Respondent. Prior UDRP panels confirmed that a deliberate concealment of identity and contact information may in itself indicate registration in bad faith.

The Complainant alleges that it is likely that the Respondent registered the disputed domain name to prevent the Complainant from reflecting the RITALIN Mark in the disputed domain name, which type of conduct constitutes evidence of the Respondent’s use of the disputed domain name in bad faith, just as the existing similarity between the disputed domain name and the RITALIN Mark and the circumstance that it is likely that the website under the disputed domain name offered imitations of the Complainant’s products which can be hazardous to consumers’ health, while Internet users might think that this website is an official website of the Complainant and that the products offered on the website are endorsed by Complainant and deemed to be safe. The Complainant further drawn a clear inference from the Respondent’s operations that it is trying to benefit from the fame of the RITALIN Mark to sell fake products and to make undue profit, while the Respondent also promotes competitors’ products on its website so that it is more likely than not that the Respondent’s primary motive in registering and using the disputed domain name was to capitalize on or otherwise take advantage of the Complainants’ trademark rights, through the creation of initial interest of confusion.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Respondent did not file a response. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), the consensus view of UDRP panelists is that the Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from the Respondent’s default, paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.

Under the Policy, the Complainant must prove that:

- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- 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.

A. Identical or Confusingly Similar

The disputed domain name is confusingly similar to the Complainant’s trademarks. The disputed domain name incorporates the RITALIN Mark in its entirety. It is consistently decided that adding a dictionary term – in this case “kopen” (which means “buy” in Dutch) – to an established trademark does not affect the finding that such domain name is confusingly similar to a trademark (e.g., Allianz, Compañia de Seguras y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942). The use of a hyphen actually increases the similarity between the disputed domain name and the RITALIN Mark as it enhances readability of the two elements. Furthermore, the addition of the generic Top-Level Domain “.com” is non-distinctive because it is required for the registration of a domain name.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s RITALIN Mark, and the first element is met.

B. Rights or Legitimate Interests

The Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (see, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Complainant has contended that the Respondent is not and has never been commonly known, either as a business, an individual or an organization in connection with the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use the RITALIN Mark as a domain name or in any other way. The disputed domain name resolved to a website which offered allegedly possible counterfeit drugs under the RITALIN Mark without prescription which could hazard public health and therefore the activity of the Respondent is in no way a legitimate noncommercial or fair use of the disputed domain name.

The Panel finds that the Complainant has made a prima facie case, calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name. The Panel accordingly finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

To succeed under the Policy, the Complainant must show that the disputed domain name has been both registered and used in bad faith, which is a double requirement.

The Complainant has claimed that the RITALIN Mark was a well-known trademark before the disputed domain name was registered. It would be highly unlikely that the Respondent had no knowledge notice of the RITALIN Mark when it registered the disputed domain name. Further, the Respondent’s choice of registering a domain name incorporating the Complainant’s mark, coupled with a website that offers drugs under the RITALIN Mark is further indicative of the Respondent’s bad faith as Internet users may believe the disputed domain name to be associated with and/or endorsed by the Complainant. The Panel therefore concludes that the registration of the disputed domain name was made in bad faith.

The Panel also concludes that the use of the disputed domain name is in bad faith. The disputed domain name was used to resolve to a website that offered possible counterfeit drugs under the RITALIN Mark, and subsequently directed to a Google cache site referring to the website “www.ritalin-kopen.nl”, which domain name was subject to an administrative procedure under the Dispute Resolution Regulations for .nl Domain Names, Novartis AG v. Anonymouse, WIPO Case No. DNL2016-0052, in which case the panel had similar findings of use of the domain name under dispute in bad faith as the Panel in the current case, and presently directs to list of websites which, inter alia, offer products under the RITALIN Mark for sale. The Panel agrees with the Complainant and the panel in Novartis AG v. Anonymouse, supra that it is most likely that the website to which the disputed domain name resolved – and also possibly one of more of the websites presently listed on the Respondent’s website – is offering counterfeit drugs under (at least) the RITALIN Mark which can be hazardous for consumers’ health, so that the use of the RITALIN Mark to promote products that are similar to the products of the RITALIN Mark supports a finding of bad faith.

On the basis of the evidence provided by the Complainant, and given the fact that the Respondent has not contested this evidence, in the absence of a formal response, the Panel concludes that the Respondent’s registration and use of the disputed domain name are in bad faith, pursuant to paragraph 4(b) of the Policy. Accordingly, the Complainant has satisfied the third element of the UDRP.

7. Decision

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 <ritalin-kopen.com> be transferred to the Complainant.

Alfred Meijboom
Sole Panelist
Date: May 2, 2017

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