WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novartis AG, Novartis Vaccines and Diagnostics Srl v. Privacy Protection Service Inc d/b/a PrivacyProtect.org / Namrata Dubey
Case No. D2014-1136
1. The Parties
Complainants are Novartis AG, Novartis Vaccines and Diagnostics Srl of Basel, Switzerland, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
Respondent is Privacy Protection Service Inc d/b/a PrivacyProtect.org of Nobby Beach, Queensland, Australia / Namrata Dubey of Rewa, Madhya Pradesh, India.
2. The Domain Name and Registrar
The disputed domain name <quinvaxem.com> is registered with BigRock Solutions Pvt Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2014. On July 2, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 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 Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 3, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint.
On July 3, 2014 the Center received an email communication from Respondent, which the Center replied on the same date, and invited Complainant to consider requesting a suspension of the proceedings to explore a possible settlement between the parties.
On July 3 and July 4, 2014, the Center received email communications from Respondent indicating its intention to resolve the matter amicably. On July 7, 2014 Complainant requested the suspension of the proceedings for a period of 30 days. The proceedings were suspended until August 6, 2014. Upon Complainant’s request on August 6, 2014, the Center extended the suspension period until September 6, 2014. On September 1, 2014, the Center received Complainant’s request to re-institute the proceedings. The proceedings were re-instituted on September 1, 2014.
Complainant filed a first amended Complaint on September 2, 2014. Upon request for clarification from the Center, Complainant filed a second amended Complaint on September 3, 2014.
The Center verified that the Complaint together with the amended Complaints 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 Respondent of the Complaint, and the proceedings commenced on September 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 24, 2014. Respondent did not submit any response. Accordingly, the Center notified the commencement of the panel appointment process on September 25, 2014.
The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on September 29, 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
Novartis AG is a world leader in innovation-driven pharmaceuticals, high-quality and low-cost generics, human vaccines, and leading self-medication over-the counter healthcare products. Complainant, Novartis AG, whose stock is listed on the New York Stock Exchange (NVS), is one of the largest international pharmaceutical companies in the world. Complainant’s companies employ approximately 135,000 people and operate in over 140 countries, and has achieved annual net sales of over USD 57 billion.
Complainant’s vaccine division is Novartis Vaccines and Diagnostics Srl.
In collaboration with the biotech company Crucell, Novartis Vaccines and Diagnostics Srl co-developed a fully liquid pentavalent vaccine that protects children against five potentially deadly diseases: Haemophilus influenza type b, diphtheria, tetanus, pertussis (whooping cough) and hepatitis B, which they market and distribute under the name “Quinvaxem”.
Through a World Health Organization prequalification, “Quinvaxem” is also available to global bodies such as UNICEF and Pan American Health Organization. More than 200 million doses of “Quinvaxem” have been distributed in more than 170 countries since the launch of “Quinvaxem” in 2006. The official, authorized website for “Quinvaxem” is hosted by Crucell at “www.crucell.com/Products-Quinvaxem”.
QUINVAXEM trademarks, which are protected in thirteen jurisdictions around the world, are registered in the name of Complainants. There is no shared ownership on the respective QUINVAXEM trademarks.
Complainants began using the trademark QUINVAXEM in 2006 and first obtained a trademark registration that same year.
Respondent registered the disputed domain name on September 19, 2013, using an identity shield service.
Respondent’s identity has been disclosed by the Registrar, in response to the Center’s request for registrar verification. Respondent is domiciled in India.
The disputed domain name resolves to a website that reproduces the QUINVAXEM trademark on the landing page, as well as a packaging of the product
The website also includes a picture of the actual QUINVAXEM package.
5. Parties’ Contentions
The disputed domain name is identical to Complainants QUINVAXEM trademark, it incorporates nothing more than the QUINVAXEM mark in its entirety plus the generic Top-Level domain (“gTLD”) indicator “.com”.
Respondent has no connection with Complainants or any of their products.
Respondent cannot demonstrate or establish any legitimate interests in the disputed domain name.
Complainants and Respondent have no relationship that would give rise to any license, permission or other right by which Respondent could own or use any domain name incorporating the QUINVAXEM trademark or anything confusingly similar to the QUINVAXEM trademark.
In such circumstances, the burden shifts to Respondent to establish its rights or legitimate interests in the disputed domain name.
The disputed domain name has been created years after the QUINVAXEM trademark was first registered and seven years after the QUINVAXEM vaccine was first administered.
By registering the disputed domain name, Respondent seeks to exploit for itself the renown of Complainants’ well-known QUINVAXEM trademark.
Respondent’s mere holding of the disputed domain name is itself bad faith use in view of the renown of the QUINVAXEM trademark and absence of likely legitimate uses by an unauthorized party like Respondent.
The entire website at “www.quinvaxem.com” is designed to confuse consumers, mainly those located in India, as to the source or sponsorship of the information contained at the website. By linking to the official “Quinvaxem” website without posting proper disclaimers, Respondent creates the false impression that it is affiliated with or otherwise authorized by Complainant to register and use the disputed domain name. The effect of showing such misleading content at the website is to falsely suggest an affiliation with Complainants.
Respondent’s adoption and use of the name “Quinvaxem” in the disputed domain name and at the website shows both Respondent’s familiarity with the Complainants’ mark and Respondent’s recognition of the fame of this mark. Given that Respondent has no connection with Complainants and has never been authorized by Complainants to use or register the disputed domain name, the very fact that Respondent has registered the disputed domain name establishes opportunistic bad faith registration and use.
The Respondent did not file a formal Response.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainants prove each of the following three elements to obtain an order that the disputed domain name should be transferred:
(1) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainants have established prior rights in the registered trademark QUINVAXEM. The disputed domain name incorporates the distinctive QUINVAXEM trademark in its entirety.
The Panel finds that the disputed domain name is confusingly similar to the Complainants’ trademark. The condition of the paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
As set forth by paragraph 4(c) of the Policy, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate Respondent’s rights or legitimate interests to the disputed domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Prior to the notification of Complaint, Respondent sent an email communication to propose the settlement of the case under two conditions: (1) no legal proceeding against Respondent and (2) payment to Respondent of USD 5,000.
Respondent did not submit a Response in these Policy proceedings and has not provided any evidence or circumstances required to establish that it has rights or legitimate interests in the disputed domain name, according to paragraph 4(c) of the Policy.
Complainants’ use of the trademark QUINVAXEM predates Respondent’s registration of the disputed domain name <quinvaxem.com>.
There is no evidence that Respondent makes noncommercial and fair use of the disputed domain name without intention to divert consumers, as addressed under paragraph 4(c) of the Policy.
On the contrary, Respondent copied part of the content of the Complainant’s official website, with the example of the copied links and of the reproduction of the QUINVAXEM trademark, as well as the QUINVAXEM package.
Furthermore, Respondent has no connection of affiliation with the Complainants, and the latter assert they have not consented to the Respondent’s use of the trademark in the disputed domain name.
The evidence submitted by Complainants adequately supports their assertions.
Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by the Panel to be evidence of the bad faith registration and use of a domain name. It provides that:
For the purposes of paragraph 4(a)(iii), 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 domain name in bad faith:
(i) circumstances indicating that the respondent has registered or the respondent has 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) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to your web site 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 the respondent’s website or location or of a product or service on your web site or location.
In the Panel’s view, Respondent must have been aware of Complainant’s prior rights in the trademark QUINVAXEM when registering the disputed domain name.
The Panel finds that the disputed domain name was registered intentionally to misdirect customers looking for Complainants’ websites relating to “Quinvaxem”. This constitutes bad faith registration.
In the Panel’s assessment, attempts to mislead Internet users have to be even more severely condemned when it concerns pharmaceutical products, because of the associated danger to enable the promotion of purportedly false products that can be dangerous.
Complainants’ evidence clearly shows that Respondent is intentionally using the disputed domain name to misleadingly divert customers. Thus it creates a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website within the meaning of paragraph 4(b)(iv) of the Policy.
This constitutes bad faith use within the meaning of paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, the Panel finds that Complainants have also established the finding of bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy.
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 <quinvaxem.com> be transferred to Complainant Novartis AG.
Date: October 13, 2014