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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Novartis AG v. Ahmed L. Cook

Case No. D2020-2407

.1. The Parties

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

The Respondent is Ahmed L. Cook, United States of America (“United States” or “US”).

2. The Domain Name and Registrar

The disputed domain name <voltaren-diclofenac.com> is registered with Paknic (Private) Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2020. On September 16, 2020 and September 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 23, 2020, 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. Between September 29, 2020 and October 8, 2020, the Center and the Registrar exchanged email communications regarding the registrant and its 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 October 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 30, 2020.

The Center appointed Nayiri Boghossian as the sole panelist in this matter on November 5, 2020. 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 manufactures the medicine carrying the trademark VOLTAREN, which is one of the top topical pain reliever. The Complainant owns a number of registrations for the VOLTAREN trademark such as the US Registration No. 0960282 registered on June 5, 1973, and the Canadian Registration No. 193393 registered on August 17, 1973.

The disputed domain name was registered on August 10, 2016. According to the Complaint, the disputed domain name resolves to a webpage, which gives information about the Voltaren product and displays its visuals.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark VOLTAREN. The disputed domain name reproduces the Complainant’s trademark VOLTAREN in its entirety. The trademark VOLTAREN has been considered well known by previous UDRP panels.

The use of “voltaren” and “diclofenac” separated by hyphen reinforces the likelihood of confusion. Internet users will be led to believe that the website to which the disputed domain name resolves is the official website of the Complainant or will direct them to the official website. Also, neither the use of the term “diclofenac” nor the use of a hyphen would eliminate confusing similarity. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not prevent a finding of confusing similarity.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with nor authorized by the Complainant to use its trademark.

The Respondent does not seem to be commonly known by the disputed domain name. There is no evidence that the Respondent is using or preparing to use the disputed domain name in connection with a bona fide offering of goods or services.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent must have been aware of the Complainant’s trademark VOLTAREN as it is a distinctive word that has no meaning and a well-known trademark. Also, the registration of the trademark VOLTAREN significantly predates the registration date of the disputed domain name. Even if the Respondent was not aware of the Complainant’s trademark, a simply Internet search would have revealed the Complainant’s trademark. Hence, the disputed domain name was registered in bad faith.

The disputed domain name is being used in bad faith as there is no permission granted by the Complainant to use its widely known trademark. The disputed domain name resolves to a website which contains a link to an online pharmacy. The Respondent must have registered the disputed domain name in order to attract Internet users for commercial gain while taking unfair advantage of the Complainant’s rights.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant owns trademark registrations for the trademark VOLTAREN. The Panel is satisfied that the Complainant has established its ownership of the trademark VOLTAREN.

The disputed domain name comprises the Complainant’s trademark VOLTAREN in its entirety with the addition of the term “diclofenac”. The addition of this term as well as a hyphen do not prevent a finding of confusing similarity. The gTLD “.com” should typically be ignored when assessing confusing similarity as established by prior UDRP decisions.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that it never authorized the Respondent to use its trademark as part of the disputed domain name.

The Respondent has not provided evidence of circumstances of the types specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name.

Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant’s trademark is a well-known trademark and had been registered for few decades by the time the disputed domain name was registered. Also, the trademark VOLTAREN is fanciful as it does not have a dictionary meaning. Additionally, the website to which the disputed domain name resolves offers for sale the product of the Complainant branded VOLTAREN. Therefore, the Respondent must have been fully aware of the Complainant and its trademark when it registered the disputed domain name.

The webpage linked to the disputed domain name appears to sell products of the Complainant and from other companies. Internet users will be led to assume it is the Complainant’s online selling point. The Respondent is using the disputed domain name in order to attract traffic to its website and generate commercial gain.

Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

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 <voltaren-diclofenac.com> be transferred to the Complainant.

Nayiri Boghossian
Sole Panelist
Date: November 16, 2020

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