WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novartis AG v. C4, Alexey
Case No. D2013-1911
1. The Parties
The Complainant is Novartis AG of Basel, Switzerland, represented by Dreyfus & associés, France.
The Respondent is C4, Alexey of Minsk, Minskaia Olast, Belarus.
2. The Domain Name and Registrar
The disputed domain name <buyexelononlinenow.com> (the “Domain Name”) is registered with Todaynic.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2013. On November 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 14, 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. On November 18, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On November 19, 2013, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in both English and Chinese, and the proceedings commenced on November 26, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 18, 2013.
The Center appointed Linda Chang as the sole panelist in this matter on January 6, 2014. 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 internationally famous for pharmaceutical products, with more than 120,000 associates in 140 countries worldwide. “Exelon” is one of its key products in its Neuroscience Franchise, for the treatment of the symptoms of patients with Alzheimer’s disease.
The Complainant is the owner of a number of EXELON trademark registrations, inter alia, International Trademark Registration No. 597028 registered on January 12, 1993, and No. 644322 registered on September 20, 1995. Both have been granted territorial extension to Belarus in class 5 and are still valid.
The Domain Name <buyexelononlinenow.com> was registered on September 10, 2012. The Respondent was using the Domain Name to a website which features links of EXELON advertisements and contains a link redirecting users to an online pharmacy.
5. Language of the Proceedings
The Registrar confirmed the language of the Registration Agreement is Chinese. The Complainant filed its Complaint in English and later requested for English to be the language of the proceedings for the following reasons:
(a) It can be assumed that the Respondent has knowledge of English. The Domain Name includes English terms “buy”, “online” and “now”, and is pointing to a website in English.
(b) The Complainant has no knowledge of Chinese, and choosing a language other than English would place an undue burden on the Complainant and could delay the proceedings.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceedings by taking into consideration all relevant circumstances, to ensure fairness of both parties in the language selection.
The Panel notices that the Respondent has been given a fair opportunity to object to the use of English as the language of the proceedings but did not do so. The Panel finds the website at the Domain Name is displayed in English and views that using English as the language of the proceedings would not be prejudicial to the Respondent in its ability to articulate the arguments for the case, while if the proceedings are to be conducted in Chinese, additional expense and delay would likely be incurred.
The Panel thus decides that the language of the proceedings shall be English and the decision will be rendered in English.
6. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the trademark EXELON in which the Complainant has rights. The Complainant also contends that the addition of the generic terms “buy”, “online” and “now” does not limit the risk of confusion between the Complainant’s trademark and the Domain Name.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name in that it is not affiliated with the Complainant or has it been authorized to use and register its trademarks or to seek registration of any domain name incorporating said mark, nor has the Respondent demonstrated use of or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services.
The Complainant finally contends that the Respondent was aware of the existence of the Complainant’s trademark at the time of registration and registration in bad faith is found. The Complainant also contends that the Domain Name is being used in bad faith as the Respondent is taking undue advantage of the Complainant’s trademark to generate profits, by intentionally attempting to attract Internet users to its website through the creation of confusion.
The Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has adduced evidence to demonstrate its established rights in the EXELON trademark. The Complainant holds a number of EXELON trademark registrations, among others, International Trademark Registration No. 597028 registered on January 12, 1993, and No. 644322 on September 20, 1995. Both have been granted territorial extension to Belarus in class 5 and are still valid.
The Domain Name consists of “buy”, “exelon”, “online”, “now” and “.com”. The Panel agrees that “buy”, “online” and “now” are of generic nature. The Panel further agrees that the addition of the suffixes such as “.com” being the generic top-level domain does not function as a distinguishing factor.
Therefore, the Panel holds that the Domain Name incorporates the Complainant’s trademark EXELON and is confusingly similar to the Complainant’s trademark. The Panel further holds that the association of generic terms “buy”, “online” and “now” does not eliminate but instead reinforces the confusing similarity between the Domain Name and the Complainant’s trademark.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy and the Domain Name is confusingly similar to the Complainant’s trademark EXELON.
B. Rights or Legitimate Interests
There is no indication that the Respondent demonstrated, before notice to it of the dispute, use of or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. In fact, the Respondent is using the Domain Name to redirect Internet users to an online pharmacy offering not only purported EXELON trademarked products but also competing products. The Panel finds that the Respondent’s use of the Domain Name to divert Internet users to an unauthorized or competing website is not a bona fide use pursuant to paragraph 4(c)(i) of the Policy.
In the circumstances where the Complainant possesses exclusive rights to the EXELON trademark while the Respondent seems to have no trademark rights in EXELON and the Complainant claims it has never authorized the Respondent to use its trademark, the Panel is satisfied that the Respondent does not have rights or legitimate interests in respect of the Domain Name under paragraph 4(c) of the Policy.
It is well-established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent. See International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683. The Respondent however has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the Domain Name.
The Panel thus draws such inference as the Panel considers appropriate, which is that the Respondent appears to be unable to adduce evidence of any rights or legitimate interests to the Domain Name, and concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Complainant and its trademark EXELON enjoy a considerable reputation worldwide including in Belarus where the Respondent appears to reside. By the time when the Respondent registered the Domain Name, the EXELON mark has been registered and used for many years. The Panel finds it inconceivable that the Respondent had no actual notice of the Complainant’s trademark rights at the time of registering the Domain Name, especially given that the Respondent included a coined word “Exelon” in the Domain Name with the adjunction of the generic words “buy”, “online” and “now” and points the Domain Name to a page redirecting Internet users to an online pharmacy store. The Panel concludes the Domain Name was registered in bad faith and the Respondent was attempting to create an impression of association with the Complainant and its EXELON trademark at the time of registration.
The Complainant has introduced sufficient evidence to demonstrate that the Respondent is using the Domain Name in bad faith, including using the Domain Name to host a website which features advertisements of EXELON and contains a link redirecting Internet users to an online pharmacy offering not only purported EXELON trademarked products but also competing products to the Complainant. The Panel therefore holds that the Respondent is trading on the fame of the Complainant’s trademark for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites or the goods sold on or through the Respondent’s websites.
The Panel further notices that the Respondent appears to have engaged in a pattern of conduct of registering domain names reproducing trademarks of other companies and pointing to websites promoting an online pharmacy, which falls within the circumstances referred to in paragraph 4(b)(ii) of the Policy.
The Complainant had sent the Respondent a cease-and-desist letter followed with reminders. It is pertinent for the Respondent to provide an explanation of its choice of the Domain Name but the Respondent did not do so. The Respondent also failed to respond to the Complaint to rebut the contentions of the Complainant. The Panel views this reinforces the bad faith of the Respondent.
Based on the above facts and reasons, the Panel finally concludes that the Respondent registered and is using the 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 Domain Name <buyexelononlinenow.com> be transferred to the Complainant.
Date: January 28, 2014