WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NOVARTIS AG v. David Sparkowich
Case No. D2013-1610
1. The Parties
The Complainant is NOVARTIS AG of Basel, Switzerland, represented by Dreyfus & associés, France.
The Respondent is David Sparkowich of Kittery, Maine, United States of America, self-represented.
2. The Domain Name and Registrar
The disputed domain name <buyomnitrope.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2013. On September 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 12, 2013, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2013. The Response was filed with the Center on October 5, 2013.
The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on October 18, 2013. 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 leading pharmaceutical company, with a global operation in healthcare involving more than 120,000 associates in 140 countries, having a global portfolio that includes more than 40 key marketed products.
One of the products included in the Complainant’s portfolio is Omnitrope, a United States Food and Drug Administration (“FDA”) approved recombinant human growth hormone indicated for pediatric and adult treatment. Human growth hormone is a protein that stimulates bones and cartilage to grow (Annex 5 of the Complaint).
Thus, the Complainant is the owner of the following trademark registrations (Annex 8 of the Complaint):
- US trademark n° 3357908 dated of December 18, 2007, covering goods and services in class 5;
- International trademark n° 917083 dated of March 9, 2007, covering goods and services in class 5;
- Community trademark n° 004065728 filed on October 7, 2004 and registered on January 3, 2006, covering goods and services in class 5.
In addition, the Complainant and its affiliates are the owners of several domain names that incorporate the trademark OMNITROPE (Annex 9 of the Complaint), in particular:
- <omnitrope.com> registered on September 02, 2004;
- <omnitrope.us> registered on April 21, 2006;
- <omnitrope.fr> registered on April 27, 2006.
The Complainant noticed that the domain name <buyomnitrope.com> had been registered by the Respondent. The disputed domain name resolves to a parking page displaying commercial links, some of which are related to pharmaceutical and/or medical products and/or services, including drugs, notably those of Complainant and its competitors (Annex 1 of the Complaint).
On November 30, 2012, the Complainant sent a cease-and-desist letter by email and registered letter to the Respondent on the basis of its trademark rights to request the transfer of the disputed domain name (Annex 6 of the Complaint). The Respondent never replied to the cease-and-desist letter.
The disputed domain name was registered on January 7, 2009. In his Response, the Respondent alleges that the disputed domain name “expired a number of years ago and [he has] not owned it for approximately four years time. [sic]” However, as confirmed to the Center by the Registrar, the disputed domain name will not expire until January 8, 2014, and the Respondent, David Sparkowich, continues to be the registrant of record.
5. Parties’ Contentions
The Complainant argues that it is a leading pharmaceutical company, with a global operation in healthcare involving more than 120,000 associates in 140 countries, having a global portfolio that includes more than 40 key marketed products.
One of the products included in the Complainant’s portfolio is Omnitrope, an FDA-approved recombinant human growth hormone indicated for pediatric and adult treatment. Human growth hormone is a protein that stimulates bones and cartilage to grow (Annex 5 of the Complaint).
The Complainant and its OMNITROPE trademark enjoy a worldwide reputation. Moreover, the Complainant argues that it owns several domain names that incorporate the trademark OMNITROPE.
The Complainant refers to several WIPO UDRP decisions on confusingly similar domain names to highlight the fact that a disputed domain name is confusingly similar to the trademarks of a complainant if it fully incorporates said trademarks with the mere addition of the generic term “buy”.
The Complainant also mentions WIPO UDRP decisions to underline that the addition of a generic term does not limit the risk of confusion between a complainant’s trademark and a disputed domain name.
The Complainant claims that the Respondent has no connection to the Complainant and has not been authorized to use and register its trademark or to seek a registration of any domain name incorporating said mark.
In addition, the Complainant contends that the Respondent has no rights related to OMNITROPE that legitimates it to either develop or pretend to develop an activity through the disputed domain name.
Finally, the Complainant argues that it is unlikely that the Respondent was unaware of the reputation of the Complainant’s OMNITROPE trademark when he registered the disputed domain name. Moreover, the combination of said trademark with the generic term “buy” clearly proves that the Respondent was aware of the existence of the trademark of the Complainant.
Despite the fact that the Respondent never officially replied to the Complainant’s cease-and-desist letter, on October 5, 2013, he sent a Response to the Center stating that he purchased the domain name from the Registrar and did nothing with it. At the time he purchased the disputed domain name, the Respondent argues he was not violating any rights and that he was using this website in an attempt to earn advertising revenue from Google.
Finally, the Respondent states he has no intentions of doing anything further with the disputed domain name.
6. Discussion and Findings
In order to obtain the transfer of a disputed domain name, a complainant must prove the three Policy elements, regardless of whether the respondent files a response to the complaint. The first element is that the “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights”. Policy, paragraph 4(a)(i). The second element a complainant must prove is that the respondent has “no rights or legitimate interests in respect of the domain name”. Policy, paragraph 4(a)(ii). The third element a complainant must establish is that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii).
A. Identical or Confusingly Similar
The disputed domain name <buyomnitrope.com> is confusingly similar to the Complainant’s well-known mark OMNITROPE.
As alleged by the Complainant, the disputed domain name is confusingly similar to the Complainant’s trademark because it fully incorporates said mark with the mere addition of the generic term “buy”. It has been held by previous Panels that the addition of a generic term does not limit the risk of confusion between a complainant’s trademark and a disputed domain name (Compagnie Générale des Etablissements Michelin and Michelin Recherche et Technique S. A. v. Eijiobara Obara, WIPO Case No. D2012-0047, Merck Sharp & Dohme Corp. v. GlobalCom, Henry Bloom, WIPO Case No. D2011-0700, and Fluor Corporation v. KMLOLO, WIPO Case No. D2010-0377).
B. Rights or Legitimate Interests
Following Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666, in order for a complainant to prove that a respondent has no rights or legitimate interests in the disputed domain name, UDRP case law has consistently held that it is sufficient for a complainant to prove a prima facie case. (See, amongst others, Croatia Airlines, d.d. v. Modern Empire Internet Limited, WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). Once a prima facie case is shown, the burden of production shifts to the respondent, who must demonstrate its legitimate rights to the Panel.
In the present case, the disputed domain name directs Internet users to a parking page displaying commercial links which are likely to generate revenue. Hence, as a matter of fact, it cannot be inferred that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name (Tracy Morgan v. Fundacion Private Whois / PPA Media Services, Ryan G Foo, WIPO Case No. D2013-0078, Credit Industriel et Commercial S. A. v. XUBO, WIPO Case No. D2006-1268, and Société nationale des télécommunications: Tunisie Telecom v. Ismael Leviste, WIPO Case No. D2009-1529).
The Panel finds that the second element of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The UDRP states that one way for the Complainant to prove bad faith registration and use is to show the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [the] 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] web site or location or of a product or service on [the] web site or location”. Policy, paragraph 4(b)(iv). The Complainant has made this showing.
The intention to use the disputed domain name for a commercial gain was expressly stated by the Respondent in his email dated October 5, 2013: “I would include google advertising in these websites in an attempt to earn advertising revenue from Google, when a reader of my blog website, clicked on google ads that appeared on the site”.
These facts lead to the common sense conclusion that, contrary to what the Respondent has stated, he intentionally registered and used the disputed domain name 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 <buyomnitrope.com> be transferred to the Complainant.
Gonçalo M. C. Da Cunha Ferreira
Date: October 29, 2013