WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novartis AG v Domains By Proxy, LLC/Manny Ghumman
Case No. D2014-0224
1. The Parties
The Complainant is Novartis AG of Basel, Switzerland, represented by Dreyfus & associés, France.
The Respondents are Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Manny Ghumman of Hayward, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <deramaxxpet.com> is registered with Wild West Domains, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") on February 13, 2014. On February 13, 2014, the Center transmitted by email to the Registrar a request for Registrar verification in connection with the disputed domain name. On February 13, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on February 14, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 18, 2014.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Disputed 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 February 24, 2014. In accordance with the Rules, paragraph 5 (a), the due date for response was March 16, 2014. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on March 17, 2014.
The Center appointed Archibald Findlay SC as the sole panelist in this matter on April 16, 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 following background facts and circumstances are to be found in the Complaint and its annexures and, in the absence of challenge, can be accepted as background.
The Complainant holds a series of registered trademarks particularly numerous DERAMAXX trademarks which are registered in many countries in the world including Australia, Canada, Mexico, New Zealand, Switzerland, the European Union and the United States of America.
In particular, the Complainant is the owner of DERAMAXX trademarks:
(a)in the United States of America, dated November 1, 2000;
(b)International Trademark, dated March 20, 2001;
(c)Community Trademark, dated February 2, 2006;
all of which trademarks are valid and have been duly renewed from time to time and cover services in Class 5.
In addition the Complainant operates among others a domain name reflecting its trademarks to promote its services, namely <deramaxx.com>, registered on January 11, 2001.
These word marks are not only very well-known but are used in connection with the Complainant's portfolio which focuses on broad areas of healthcare, pharmaceuticals, eye-care, generics, vaccines, consumer-based Over-The-Counter and animal health.
Complainant states that it produces and sells the product Deramaxx, which enjoys a substantial reputation worldwide in dogs' osteoarthritis field, for dogs over five years, inactive or overweight which suffer from joint injuries or predisposition to orthopedic disorders.
The Complainant also owns various websites and communicates on the Internet in order to present and propose to the Internet users its services and products, one of the sites being "www.deramaxx.com" for animal health.
5. Parties' Contentions
The Complainant asserts that the Respondents registered the disputed domain name on March 27, 2008 (which in fact although updated on December 13, 2012, was set to expire on March 27, 2014).
The Complainant further draws attention to the fact that not only does the disputed domain name reproduce its trademark in its entirety but also asserts that this factor is sufficient to establish that the disputed domain name is identical or confusingly similar to that of the Complainants' registered mark. Complainant also points out that the mere addition of a generic or descriptive term to the Complainant's mark does not affect the similarity between the trademark and the disputed domain name. The addition of the term "pet" is a direct reference to the field within which the Complainant operates in regard to animal treatment. Moreover as the Complainant's products are used extensively by veterinarians in order to treat dogs this, so it is submitted would clearly bring about confusion and mislead those who might believe that this domain name is operated by, or linked to, the Complainant.
The further complaint is that there is no affiliation of the Respondents with the Complainant in any way, nor has any authority been granted to them to use and register its trademark or to seek registration of any domain name incorporating the mark. In addition, it is contended that they have no prior rights or legitimate interests in the domain name.
In particular, the Complainant asserts that the Respondents' reproduction of its trademark in the disputed domain name clearly proves that the Respondents were aware of the existence of the Complainant's trademark. It would also be obvious to the Respondents, so it is contended, that their very use, as they have no connection to the trademark, is opportunistic and would inevitably lead Internet users to assume a link existed between the Complainant and Respondents. It would therefore follow that they have chosen the name and aimed at misleading customers, and those who are potential customers, seeking to induce them to deal with the Respondents when they must be aware that they may not do so.
In an e-mail dated February 24, 2014, the Respondents advised the case handler at the Center "we are handling this matter directly with Mr. Poulin …". No other comment or response was submitted and this brief statement is clearly indicative of the fact that the Respondents received the amended Complaint and suggested that they were dealing with one of the members of the Complainant's authorized representatives in this proceeding. No other communication has been forthcoming from the Respondents nor have the Respondents' or the Complainant's authorized representatives indicated that any settlement or arrangement was arrived at between the parties. The panel must therefore deal with the matter on the premise that the Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. The Doctrine of Laches
Complainant addresses this issue as a preliminary matter in the amended Complaint and in particular relies upon the decision in Coty Deutschland GmbH v. Privacy Protect. Org/Mr Domain Admin/Peter Coleman/Tom Marx, WIPO Case No. D2013-1914. The panel in that decision considered recent decisions in WIPO UDRP cases as well as the views expressed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. That Panel adopted the position to be found in the WIPO UDRP cases referred to by it that although there have been recent cases urging the adoption of a laches defense in domain name dispute proceedings, no such defense has been included either in the Policy or the Rules whether expressly or impliedly. It did, however, recognize that delay in pursuing a complaint, having regard to the time of the registration of the disputed domain name, would not of itself prevent a Complainant from initiating or proceeding with a complaint and from being able to succeed provided it established the necessary requisites. That panel did, however, consider that the passage of time without more is not something which gives rise to a defense but could make it more difficult for a Complainant to establish a case on the merits, particularly in relation to the elements requiring a Complainant to establish that a respondent had no right or legitimate interest and that any registration and use of the disputed domain name would be in bad faith.
The Panel has considered this aspect and notes that in the Coty Deutschland GmbH case (supra) the delay had been for a period of 16 years or six years based upon a later acquisition by the then current respondent and that although there were certainly circumstances which could be weighed in favor of the Complainant they were insufficient to counter the defense put forward in that case by the respondent and that panel therefore concluded that the Complainant failed and the complaint was denied.
In the present matter, however, there has been neither opposition put forward by the Respondents nor any facts and circumstances which would suggest that the Complainant's assertions are not acceptable. This of course does not mean that the Complainant succeeds automatically by reason of the default on the part of the Respondents with which the Panel will deal with more fully hereunder under Item C.
B. Substantive Elements of the Policy
Paragraph 15(a) of the Rules requires that:
"A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable."
Paragraph 4 (a) of the Policy directs that the Complainant must prove each of the following:
(i) That the domain name registered by the respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights.
(ii) That the respondent has no rights or legitimate interests in respect of the domain name.
(iii) That the domain name has been registered and is being used in bad faith.
Paragraph 4 (b) of the Policy sets out four illustrative circumstances or acts which would, for the purposes of paragraph 4 (a) (iii) above, be evidence of the registration of a domain name in bad faith. These are non-exclusive.
Similarly, paragraph 4(c) of the Policy sets out three illustrative circumstances which would demonstrate the respondent's rights or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii).
C. Effect of Default
Notwithstanding the fact that a respondent may be in default, the Complainant bears the burden of proof in respect of each of the three main elements in terms of paragraph 4 (a) of the Policy referred to above. Such default does not, per se, entitle the Complainant to a finding in its favor by reason thereof, as failure by the Complainant to discharge the burden of proof will still result in the Complaint being denied (M Corentin Benoit Thiercelin v CyberDeal Inc. , WIPO Case No. D2010-0941). It follows that such default does not, of itself, constitute an acceptance or an admission of any of the averments or contentions put forward, or of the supporting evidence put up (Standard Innovation Corporation v Shopintimates USA, WIPO Case No. D2011-0049). The Panel is nevertheless not bound to accept all that has been put up by the Complainant but must evaluate it as it stands (Brooke Bollea, aka Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383; San Lameer (Pty) Ltd & Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, WIPO Case No. D2010-0551).
However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inference as it considers appropriate from the failure of a party to comply with the provisional requirement of the Rules (Allianz Compañia de Seguros y Reaseguros S A v. John Michael, WIPO Case No. D2009-0942).
From this the Panel considers that it may accept that the Respondent does not deny the facts asserted and contentions made by the Complainant based on such facts (Reuters Ltd v. Global Net 2000 Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons Inc v Domain. Contact, WIPO Case No. D2003-0994; Standard Innovation Corporation, (supra); VR Holding A/S v. Above. com Domain Privacy/Host Master, Transure Enterprise Ltd, WIPO Case No. D2012-0040).
Thus, in the view of the Panel, it may accept asserted facts that are not unreasonable, with the consequence that the Respondent will be subjected to inferences that flow naturally from the information provided by the Complainant (Reuters, (supra); RX America LLC v. Matthew Smith WIPO Case No. D2005-0540; Allianz, (supra); Standard Innovation Corporation, (supra); VKR Holdings A/S, (supra); Groupe Auchan v. Anirban Mitra WIPO Case No. D2012-0412; Barclays Bank PLC v. Miami Investment Brokers Inc., WIPO Case No. D2012-1213).
The Complainant also draws attention to the fact that the Respondent Manny Ghumman chose to use a privacy shield which made it more difficult to identify the Respondents. This evidence can, in the view of the Panel, weigh in favor of the Complainant and against the application of the doctrine of laches in view of the Respondents' default.
D. Domain Name is Identical or Confusingly Similar
The Complainant put up details of its registered trademarks which it owns in many countries, as well as the domain name above to show that it is well known internationally.
On the basis of its evidence and contentions in this matter, however, the Panel considers that on the factual background relied upon by it, particularly as it is unchallenged by the Respondent, the Complainant has registered trademeark rights which may fall within the provisions of Article6 bis of the Paris Convention for the Protection of Industrial Property of March 20, 1893, as revised, and as confirmed and extended by Articles 6. 2 and 6. 3 of the GATT Agreement of Trade-Related Aspects of Intellectual Property Rights (commonly referred to as the "TRIPS Agreement"). These treaties enable the owner of a well-known trademark to seek protection not only in respect of products which might be marketed under an offending trademark in the same class, but outside that class as well (V&S Vin & Spirit v. Young Nah, WIPO Case No. D2004-0961; Groupe Auchan v. Anirban Mitra, WIPO Case No. D2012-0412).
The fact that the word mark has been incorporated entirely into the disputed domain name is sufficient to establish that it is identical or confusingly similar to the Complainant's registered mark (Quixtar Investments Inc v. Dennis Hoffmann, WIPO Case No. D2000-0253; Universal City Studios Inc v. David Burns & Adam-12 Dot Com, WIPO Case No. D2001-0784; Lilly ICOS LLC v. John Hopkin/NeoNet Ltd, WIPO Case No. D2005-0694; SOCIÉTÉ DES PRODUITS NESTLÉ SA v. Mustafa Yakin/Moniker Privacy Services, WIPO Case No. D2008-0016; also more recent cases, namely, Swarovski Aktiengesellschaft v. Swarovski-earrings-sales.com, WIPO Case No. D2013-1824; Rapid Share AG, Christian Schmidt v. Invisible Registration.com, Domain Admin, WIPO Case No. D2010-1059; Swarovski Aktiengesellschaft v. Mei Xudrag, WIPO Case No. D2013-0150; Hoffmann-La Roche Inv. v. Krontak Ladik, WIPO Case No. D2013-0019).
On the basis of this wealth of authority, the Panel has no difficulty in concluding that the Complainant has established the first element in terms of paragraph 4(a)(i) of the Policy.
E. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the disputed domain name for the purposes of Paragraph 4(a)(ii) of the Policy, namely:
(i) before any notice to the Respondent of the dispute, the 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 the bona fide offering of goods or services; or
(ii) 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 trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to target the trademark or service mark at issue.
Although paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the disputed domain name, once the Complainant establishes a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production of evidence on this factor shifts to the Respondent to rebut the showing, despite the overall burden of proof remaining upon the Complainant to prove each of the three elements of paragraph 4(a) of the Policy. (Document Technologies Inc v. International Electronic Communications Inc. , WIPO Case No. D2000-0270; University City Studios Inc, (supra)).
Having defaulted, the Respondent has placed itself in a position that it has not produced any evidence to rebut such prima facie case as may have been established by the Complainant, and the enquiry must therefore focus upon what is said by the Complainant in order to determine whether or not it has been so established.
The Complainant contends that it is the owner of the trademark DERAMAXX and associated domain name in question and that the Respondents have not been given any permission to register or use any domain name incorporating the trademark of the Complainant. It follows, therefore, that the Respondent has no right to the use of that mark as part of the disputed domain name and that any unauthorized use for commercial purposes would most likely violate the exclusive trademark rights enjoyed by the Complainant. (Guerlain S A v. Peikang, WIPO Case No. D2000-0055; Caesar's World Inc & Park Place Entertain Corporation v Japan Nippon, WIPO Case No. D2003-0615; AT&T Corp v. Roman Abreu d/b/a Smartalk Wireless, WIPO Case No. D2002-0605; America Online Inc v. Xianfeng Fu, WIPO Case No. D2000-1374; Sybase Inc v. Analytical Systems, WIPO Case No. D2004-0360; San Lameer, (supra)).
Apart from there being no authorization on the part of the Complainant, there is no relationship or association between the Complainant and the Respondent, whether by license or otherwise, which also militates against the Respondent having rights or legitimate interests in or other entitlement which might fall within that purview (Sybase Inc, (supra); Groupe Anchon v Gan Yu, WIPO Case No. D2010-0138).
In view of the facts and circumstances put up on this ground and which are unchallenged, the Panel is of the view that the lapse of time does not unduly weigh against the Complainant and that it should therefore succeed on this ground as well.
The Panel is therefore satisfied that, in the circumstances, the Complainant has established the second element of the Policy.
F. Registration and Use in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of your website or location or of a product or service on your website or location."
While bad faith can exist where a domain name contains in its entirety a Complainant's trademark (Cellular One Group v Paul Brien, WIPO Case No. D2000-0029), the Panel does not see that this principle cannot also apply in circumstances where the domain name in its entirety is a one-word combination of a Complainant's registered trademark (San Lameer case (supra)).
The implication arising from the disputed domain name, in the mind of a would-be customer, is therefore clearly that it is either of or in some way associated with the Complainant, which in turn, in the view of the Panel, leads to the inescapable conclusion that such potential customer is invited to do business with the Complainant via someone authorized on its behalf in relation to its goods. That would, by application of paragraph 4(b)(iv) of the Policy, constitute bad faith. (Media 24 Limited v. Llewellyn Du Randt, WIPO Case No. D2009-0699; San Lameer case,(supra); Think, Schufwerk GmbH v. Soo Doo, WIPO Case No. D2012-2522).
Moreover, by use of the Complainant's trademark in the disputed domain name, the Respondent is trading on the value established by the Complainant in its marks to attract users and thereby deriving economic benefit from either those users attracted to the Respondent's website or by receiving compensation from others if these would-be customers are routed elsewhere. Such a practice also would constitute bad faith (Yahoo! Inc & Geo Cities v. Data Art Corp, Data Art Enterprises Inc, Stonybrook Investments, Globalnet 2000 Inc, Powerclick Inc, and Yahoo Search Inc, WIPO Case No. D2000-0587).
The selection of a domain name that is the same as, or confusingly similar to, the Complainants' trademark and the Complainant's domain names, particularly in the absence of any explanation, leads to the conclusion, in the view of the Panel, that the Respondent must have known of the reputation of the Complainant in the market and therefore it selected the disputed domain name in circumstances where it was very well aware of the Complainant's reputation and intended to benefit therefrom. (Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128; Barclays Bank PLC (supra)).
Even taking into account the lapse of time, the Panel considers that the absence of anything from the Respondents to gainsay the contentions of the Complainant on the above principles also outweighs any such lapse of time. The Panel is therefore satisfied that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraph 4 (a) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name <deramaxxpet.com> be transferred to the Complainant.
Archibald Findlay SC
Date: April 30, 2014