WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novartis AG v. Domains by Proxy, LLC / WillCar BohackCES
Case No. D2014-0437
1. The Parties
The Complainant is Novartis AG of Basel, Switzerland, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Domains by Proxy, LLC of Scottsdale, Arizona, United States of America / WillCar BohackCES of Sarasota, Florida, United States of America.
2. The Domain Names and Registrar
The disputed domain names <bexseroclaims.com>, <bexserolawsuit.com> and <bexserosideeffects.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2014. On March 21, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 22, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Complainant filed an amended Complaint on April 2, 2014.
The Center verified that the Complaint together with the amended 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 April 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 24, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25, 2014.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on May 12, 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 a large internationally active pharmaceutical company. The Complainant has developed a vaccine against the meningitis B strain. This vaccine has obtained regulatory approval and launched in Europe earlier this year. In the United States the vaccine is undergoing regulatory review, but American authorities allowed the importation of the vaccine twice in recent months due to outbreaks of meningitis B. The Complainant commercializes the vaccine under the BEXSERO trademark.
The Complainant is the holder of a number of BEXSERO trademark registrations, inter alia, Swiss trademark registration No. 593547, registered in 2009 and United States trademark registration Nos. 3821791 and 4130376, registered in 2010 and 2012, respectively.
The Domain Names <bexseroclaims.com>, <bexserolawsuit.com> and <bexserosideeffects.com> were registered on November 26, 2013. The Domain Names refer to parked websites containing sponsored links maintained by the Registrar.
5. Parties’ Contentions
The Complainant considers the Domain Names to be confusingly similar to the trademarks and service marks in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Domain Names. According to the Complainant, the Respondent has not made a fair use of the Domain Names. Also, the Respondent has not been commonly known by the Domain Names, according to the Complainant.
Finally, the Complainant considers that the Domain Names were registered and being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the 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.
The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and past UDRP decisions, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer domain names. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2. The Respondent has no rights or legitimate interests in respect of the Domain Names; and
3. The Domain Names have been registered and are being used in bad faith.
The Panel will deal with each of these requirements in turn.
A. Identical or Confusingly Similar
To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there is a trademark in which the Complainant has rights. The mark has been registered and used, including in the country where the Respondent is located.
The Panel considers the Domain Names <bexseroclaims.com>, <bexserolawsuit.com> and <bexserosideeffects.com> to be composed of a name identical to the Complainant’s BEXSERO trademark and the non-distinctive generic terms “claims”, “law suit” and “side effects”, respectively. The Panel is of the opinion that the mere addition of non-distinctive text to a complainant’s trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see, Lime Wire LLC v. David Da Silva / Contactprivacy.com, WIPO Case No. D2007-1168, where the domain name <downloadlimewirenow.com> was held to be confusingly similar to the LIME WIRE trademark, especially with addition of the word “download” because users typically download complainant’s software; International Business Machines Corporation v. Scott banner, WIPO Case No. D2008-0965, where the domain name <ibmdownload.com> was held to be confusingly similar to the IBM trademark because many Internet users would assume that the domain name identifies a website from which they can download software supplied by the Complainant; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where the addition of the words “mail”, “post”, “fan” and “top50” to the word “pokémon” in the domain names was held to be of minimal impact on what the visitor of the website focuses on, namely the word “pokémon”; Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219, where it was held that the addition of the word “games” in the domain name does nothing to reduce its confusing similarity with Nintendo’s POKÉMON marks); Dr. Ing. h.c. F. Porsche AG v. Kentech, Inc. a.k.a. Helois Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc., WIPO Case No. D2005-0890, where the domain name <porsche-repair-parts.com> was held to be confusingly similar to the trademark PORSCHE).
Accordingly, the Complainant has made out the first of the three elements that it must establish.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of proving that the Respondent has no rights or legitimate interests in respect of the Domain Names.
It is well established that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Domain Names in order to place the burden of rebuttal on the Respondent. (See, Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Panel notes that the Respondent has not been commonly known by the Domain Names and that the Respondent has not acquired trademark or service mark rights in BEXSERO. The Respondent’s use and registration of the Domain Names was not authorized by Complainant. There are no indications that a connection between the Complainant and the Respondent existed, allowing the Respondent to register and use domain names that are confusingly similar to the Complainant’s trademark.
The Panel considers that the Respondent does not show that it has made any fair use of the Domain Names. Therefore, it is established that the Respondent has no rights or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the Domain Names were registered in bad faith and that they are being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallow, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).
Policy, paragraph 4(b) provides a non exclusive list of factors, any one of which shall demonstrate bad faith registration and use, including the use of domain names for intentionally attempting to attract, for commercial gain, Internet users to a web site or other on-line location, by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation, or endorsement of a respondent’s web site or location or of a product or service on the web site or location (Policy, paragraph 4(b)(iv)).
In the present case, the Respondent registered the Domain Names years after the BEXSERO trademark was first registered and months after the first approvals of the BEXSERO vaccine were received by the Complainant in Europe.
The selection of domain names that are confusingly similar to the Complainant’s trademark – particularly in the absence of any explanation and in view of the unmeaning nature of the BEXSERO trademark other than to identify the Complainant’s products – leads to the conclusion, in the view of the Panel, that the Respondent must have known of the Complainant and of the presence of its products in the market. It is pertinent for the Respondent to provide an explanation of its choice of the Domain Names but the Respondent did not do so. The Respondent also failed to respond to the Complaint to rebut the contentions of the Complainant. In the Panel’s views, this further suggests bad faith of the Respondent (see Novartis AG v. C4, Alexey, WIPO Case No. D2013-1911).
The Panel further notes that the Respondent is passively holding the Domain Names, as they are merely parked by the Registrar.
The passive holding of the Domain Names can constitute bad faith use, especially when combined with other factors such as the Respondent preventing a trademark or service mark holder from reflecting its mark in a corresponding domain name; the failure of the Respondent to respond to the Complaint, or the concealment of identity, etc. (See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, Supra; Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 (<myeronline.com>).
In the instant case, the Respondent concealed its identity by using a privacy service. In addition, Respondent has not filed a Response and there is no evidence of any actual or contemplated good faith use of the Domain Names. These factors make it apparent that the Domain Names have not only been registered, but are also used in bad faith.
Therefore, it is established that the disputed domain names have both been registered and are being used 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 Names <bexseroclaims.com>, <bexserolawsuit.com> and <bexserosideeffects.com> be transferred to the Complainant.
Flip Jan Claude Petillion
Date: May 23, 2014