WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novartis AG v. Hka c/o Dynadot Privacy
Case No. D2014-1737
1. The Parties
The Complainant is Novartis AG, Basel, Switzerland, represented by Dreyfus & associés, France.
The Respondent is Hka c/o Dynadot Privacy, San Mateo, California, United States of America ("US").
2. The Domain Name and Registrar
The disputed domain name <novartis.buzz> is registered with Dynadot, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 3, 2014. On October 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 14, 2014, 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 October 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 6, 2014.
The Center appointed Adam Taylor as the sole panelist in this matter on November 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 well-known pharmaceuticals company incorporated in Switzerland. It has traded internationally under the name "Novartis" since the 1960s.
The Complainant owns many registered trade marks worldwide for NOVARTIS including international trade mark no. 666218 dated October 31, 1996, in classes 41 and 42.
The Complainant operates its main website at "www.novartis.com".
The disputed domain name was registered on April 16, 2014.
As of September 9, 2014, there was a website at the disputed domain name consisting of a registrar parking page with assorted sponsored links, including prominent "related links" for topics such as "Pharmacy", "Biotech Companies" and "Pharmaceutical Industry".
The Complainant sent a cease and desist letter to the Respondent on May 30, 2014, but there was no response.
5. Parties' Contentions
Here is a summary of the Complainant's contentions:
Identical or Confusingly Similar
The disputed domain name is identical to the Complainant's trade mark.
The disputed domain name reproduces the Complainant's trade mark in its entirety.
The Top-Level Domain ("TLD") suffix is irrelevant as it is necessary for registration of the disputed domain name itself.
Even if the suffix ".buzz" it is to be taken into consideration, Internet users are likely to wrongly identify the disputed domain name as having been registered by the Complainant in connection with newsletters, articles or other forms of communication concerning the Complainant's activities.
Rights or Legitimate Interests
The Respondent is not affiliated with the Complainant and has not been authorised by the Complainant to use or register its trade mark.
The Respondent is not commonly known by the disputed domain name.
The Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name resolves to a parking page displaying commercial links, some related to pharmaceutical goods or services of the Complainant and its competitors.
The Respondent is earning revenues from the disputed domain name and is therefore not making legitimate noncommercial or fair use of the disputed domain name.
If the Respondent had a right or legitimate interest in the disputed domain name, it would have vigorously defended its rights by replying promptly to the Complainant's cease and desist letter.
The use of a privacy service evidences lack of rights or legitimate interests.
Registered and Used in Bad Faith
It is inconceivable that the Respondent was unaware of the Complainant's well-known trade mark at the time of registration of the disputed domain name.
Failure to respond to the cease and desist letter and use of a privacy service are indicative of registration in bad faith.
It is likely that the Respondent registered the disputed domain name to prevent the Complainant from reflecting its trade mark in the disputed domain name.
Use of the disputed domain name to direct Internet users to a webpage displaying commercial links relating to pharmaceutical goods and/or services of the Complainant and its competitors is additional proof of bad faith.
The Respondent is trying to benefit from the fame of the Complainant's marks.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has rights in the mark NOVARTIS by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive and worldwide use of that name.
Under the UDRP, the generic TLD suffix has usually been disregarded when comparing disputed domain name and trade mark (except where the suffix forms part of the trade mark) – see paragraph 1.2 the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). If one were to disregard the suffix in this case, then the disputed domain name is identical to the Complainant's trade mark.
The extent to which (if it all), UDRP panels will take account of top-level suffixes in the case of "new gTLDs" remains to be seen. The issue was addressed in the first UDRP case involving a new gTLD. In Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206, where the panel stated:
"The Panel finds that, given the advent of multiple new gTLD domain names, panels may determine that it is appropriate to include consideration of the top-level suffix of a domain name for the purpose of the assessment of identity or similarity in a given case, and indeed that there is nothing in the wording of the Policy that would preclude such an approach…."
Even if the suffix ".buzz" is taken into consideration here, in the Panel's view this would not serve to distinguish the disputed domain name and trade mark.
Paragraph 1.2 of the WIPO Overview 2.0.makes clear that the threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and the disputed domain name to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. Paragraph 1.9 of the WIPO Overview 2.0 adds that, in itself, the addition of merely generic, descriptive, or geographical wording to a trade mark in a domain name is normally insufficient to avoid a finding of confusing similarity and that panels have usually found the incorporated trade mark to constitute the dominant or principal component of the domain name.
Here, ".buzz" is simply an additional descriptive term which is far from sufficient to prevent threshold Internet user confusion. If anything, it enhances the likelihood of confusion as it denotes news and information - the expressed purpose of the ".buzz" gTLD - referable to "Novartis". The trade mark remains by far the most dominant part of the disputed domain name.
For the above reasons, the Panel concludes that the disputed domain name is identical to the Complainant's trade mark (if the TLD suffix is excluded) or confusingly similar thereto (if the suffix is included).
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 2.1 of WIPO Overview 2.0 explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant."
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, the disputed domain name has been used for a parking page with prominent links to offerings of goods / services which compete with those supplied by the Complainant. Such use of the disputed domain name could not of itself confer rights or legitimate interests. See paragraph 2.6 of WIPO Overview 2.0, which states:
"Panels have generally recognized that use of a domain name to post parking and parking pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a "bona fide offering of goods or services" … especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion."
Here, there are prominent advertising links which are clearly related to the trade mark value of the Complainant's mark NOVARTIS.
In any case, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant's products and services. Such use of the disputed domain name could not be said to be bona fide.
In the oft-quoted case of Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847, the panel stated that:
"… use which intentionally trades on the fame of another can not constitute a "bona fide" offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy."
See also Am. Online, Inc. v. Fu, WIPO Case No. D2000-1374, (finding that "[I]t would be unconscionable to find a bona fide offering of services in a respondent's operation of web-site using a domain name which is confusingly similar to the Complainant's mark and for the same business").
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
In the Panel's view, it is obvious that the Respondent registered the disputed domain name with the Complainant's distinctive and well-known trade mark in mind.
The Respondent has not come forward to deny the Complainant's assertions of bad faith. It is difficult to conceive of any genuine reason why the Respondent would wish to register the disputed domain name and the Respondent has offered no explanation.
Furthermore, the Respondent has used the disputed domain name for a parking page with prominent links to pharmaceutical goods and services.
While it appears that this is a registrar parking page, the Respondent is ultimately responsible for the use to which the disputed domain name is put. The fact that a registrar has provided a parking page does not absolve the Respondent from responsibility. See, eg, Missoni S.p.A v T.N.T. TerrificNTerry Inc., WIPO Case No. DWS 2008-2003 and Express Scripts, Inc. v. Windgather Investments Ltd./Mr. Cartwright, WIPO Case No. D2007-0267.
It is irrelevant whether or not the Respondent itself is in fact making any commercial gain from the parking page. UDRP panels have held that paragraph 4(b)(iv) of the Policy does not require the owner of the domain name to be the entity that commercially gains from the diversion (see, e.g., Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857). See also paragraph 3.8 of WIPO Overview 2.0:
"Panels have found that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content - for example, in the case of advertising links appearing on an "automatically" generated basis. To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks. It may not be necessary for the registrant itself to have profited directly under such arrangement in order to establish bad faith use under paragraph 4(b)(iv) of the UDRP. It would normally be sufficient to show that profit or "commercial gain" was made by a third party, such as by the operator of an advertising revenue arrangement applicable to the registrant, or a domain name parking service used by the registrant. Reasons may include that a rights holder should be able to rely on the registrant for enforcement purposes, or that such registrant has undertaken not to infringe third party rights in its registration agreement (see paragraph 2 of the UDRP)…."
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's trade mark.
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, <novartis.buzz> be transferred to the Complainant.
Date: November 25, 2014