WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novartis Ag v. Susan Christensen
Case No. D2015-0476
1. The Parties
The Complainant is Novartis Ag of Basel, Switzerland, represented by Dreyfus & associés, France.
The Respondent is Susan Christensen of Tulsa, Oklahoma, United States of America ("US").
2. The Domain Name and Registrar
The disputed domain name <novartisotc-elearning.com> is registered with Register.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 18, 2015. On March 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 18, 2015, 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 March 24, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 13, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 14, 2015.
The Center appointed José Pio Tamassia Santos as the sole panelist in this matter on April 28, 2015. 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
4.1. Created in 1996 from the merger of the companies Ciba-Geigy and Sandoz, the Complainant is a world leader in pharmaceutical products.
4.2. For the Complainant's Group, the US is a major center of research and development (R&D), manufacturing, sales and marketing. The US organization is made up of six divisions. The achievements by the companies that make up each division in the US contribute to the Complainant Group's overall success as one of the highest-ranked pharmaceutical and healthcare companies by sales in the world.
4.3. In the pharmaceutical field, OTC stands for "over the counter" and refers to the market of self-care products. As such, the Complainant is present around the world including the United States. Besides, Complainant's partner Sun Net Technologies Co., Ltd located in Beijing, China has registered the domain name <otcnovartis.com> which directs towards a page indicating "OTC eLearning System".
4.4. In this scenario, the Complainant noticed that the disputed domain name <novartisotc-elearning.com> had been registered. A DomainTools, LLC database search revealed that the disputed domain name was registered by the Respondent. The disputed domain name <novartisotc-elearning.com> redirects towards a Chinese pornographic website.
4.5. The Complainant's NOVARTIS trademark was registered in the US in 2005. The disputed domain name was registered September 3, 2014.
5. Parties' Contentions
5.1. The Complainant states that the Respondent registered the disputed domain name <novartisotc-elearning.com> on September 3, 2014 without authorization.
5.2. Moreover, the Complainant contends that the disputed domain name <novartisotc-elearning.com> reproduces the trademark NOVARTIS with the addition of the acronym "otc" and term "elearning". "OTC" in the pharmaceutical field means "over the counter" and designates the drugs that can be bought without a prescription. The term "elearning" refers to a type of educational method where the teaching and learning is done online, often via a specialized platform. These are insufficient to avoid any likelihood of confusion, on the contrary they reinforce it as they refer to the Complainant's field of activity and service.
5.3. The Complainant contends that the Respondent lacks rights or legitimate interests in the disputed domain name and that it was registered and is being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1. Paragraph 4(a) of the Policy provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (the Complainant) proves each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of disputed the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
6.2. The Complainant has the burden of proof, by a preponderance of the evidence, in respect to each element in paragraph 4(a) of the Policy.
6.3. The Respondent, having failed to respond in the present proceeding, is in default, and in accordance with paragraph 14(b) of the Rules, "the panel shall draw such inferences […] as it considers appropriate."
A. Identical or Confusingly Similar
6.4. The Complainant enjoys a worldwide reputation. The Complainant owns numerous NOVARTIS trademark registrations around the world.
6.5. The Complainant is in particular the owner of the US trademark registration NOVARTIS No. 2997235, with a registration date of September 20, 2005, and covering goods in class 5. In addition, the Complainant and its partners operate several domain names which incorporate the trademark NOVARTIS. The Complainant and its partners particularly own the following domain names:
<novartis.com> registered on April 2, 1996;
<otcnovartis.com> registered on January 29, 2012.
6.6. The disputed domain name <novartisotc-elearning.com> reproduces the trademark NOVARTIS with the addition of the acronym "otc" and the term "elearning." It is to be noted that the trademark NOVARTIS associated with these generic terms refer to the Complainant's activities, that is, OTC and e-learning regarding OTC by the Complainant. Similarly, the disputed domain name <novartisotc-elearning.com> is very similar to Complainant's domain names <novartis.com> and <otcnovartis.com>, facilitating a possible error by Internet users; thus, resulting in diversion from the Complainant's sites to that of the Respondent.
6.7. Additionally, the acronym "otc" and the generic term "elearning" are intersected by a hyphen. Previous UDRP panels have come to the conclusion that hyphenation in domain names is "insufficient to distinguish the Respondent's domain names from the Complainant's mark because the dominant portion of each domain name is the Complainant's [trademark]." (Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI, WIPO Case No. D2006-0768 and, TREDNET, Direct Distribution International Ltd ("DDI") v. WhoisGuard Namecheap / BODYPOWER, WIPO Case No. D2012-2001).
6.8. Accordingly, by registering the disputed domain name, the Respondent created a likelihood of confusion with the Complainant's trademark. It is likely that the disputed domain name could mislead Internet users into thinking that it is, in some way, associated with the Complainant.
6.9. Furthermore, the generic Top-Level Domain (gTLD) ".com" is typically not taken into consideration when examining the identity or similarity between the Complainant's trademarks and the disputed domain name (Accor v. Noldc Inc., WIPO Case No. D2005-0016). The mere adjunction of a gTLD such as ".com" is irrelevant as it is well established that the gTLD is insufficient to avoid a finding of confusing similarity (L'Oréal v Tina Smith, WIPO Case No. D2013-0820; Titoni AG v Runxin Wang, WIPO Case No. D2008-0820 and, Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877).
The first element of the Policy, therefore, has been met.
B. Rights or Legitimate Interests
6.10. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons:
6.11. The Respondent has no prior rights or legitimate interests in the disputed domain name. The registration of the NOVARTIS trademark preceded the registration of the disputed domain name by many years.
6.12. Additionally, the disputed domain name is so similar to the well-known NOVARTIS trademark of the Complainant, that Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name.
6.13. Moreover, the Respondent is not commonly known by the name "Novartis", in any way affiliated with the Complainant, nor authorized or licensed to use the NOVARTIS trademark, or to seek registration of any domain name incorporating said mark. In previous UDRP decisions, panels have found that in the absence of any license or permission from a complainant to use such widely-known trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed (LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138 and L'Oréal and Laboratoire Garnier Et Compagnie v. Mitesh Soma, WIPO Case No. D2011-0860).
6.14. In addition, the Respondent did not demonstrate use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is presently using the disputed domain name to offer pornographic content and to derive pay-per-click revenue. This behavior constitutes "porno-squatting" which cannot be considered as a legitimate use of a domain name containing the Complainant's trademark.
6.15. Finally, the Complainant attempted to contact Registrant by sending a cease-and-desist letter and reminders. The Respondent has never replied. If Respondent had a right or legitimate interest in connection with the disputed domain name, it would have vigorously defended its rights by quickly replying to Complainant's cease-and-desist letter.
6.16. Therefore, for all the above reasons, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
6.17. 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 the respondent has registered or 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that 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) that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's 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 the respondent's website or location or of a product or service on the respondent's website or location.
6.18. Given that the Complainant and its numerous trademarks are well-known throughout the world, it is unlikely that the Respondent was unaware of the Complainant when it registered the disputed domain name.
6.19. In light of the reputation of Complainant's NOVARTIS trademark, the Respondent's reproduction of the said trademark indicates that the Respondent was aware of the existence of the Complainant's trademark. Indeed, the latter has registered a domain name which reproduces the Complainant's trademark and activity referring to "OTC" (over-the-counter) and "elearning" which is one of the services offered by the Complainant.
6.20. Bad faith has previously been found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith (LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494 and Sanofi-Aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303). Given the reputation of the NOVARTIS trademark, registration in bad faith can be inferred.
6.21. Likewise, the disputed domain name resolves to a website in Chinese displaying several links to pornographic websites. Prior UDRP panels have considered that using a domain name which is confusingly similar to a well-known trademark for pornographic services, especially when also deriving pay-per-click revenue, as well as advertising links to third-party pornographic websites, is evidence of use and registration of the domain name in bad faith. It is clear that the Respondent is using the Complainant's mark to attract Internet users to its websites for commercial gain.
6.22. Moreover, the Respondent has not replied to any of the cease-and-desist letter and reminders the Complainant sent. Such behavior has already been considered as raising an inference of bad faith by previous UDRP panels (Bayerische Motoren Werke AG v. (This Domain Is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).
6.23. Under these circumstances, the Panel finds that the Complainant has presented evidence to satisfy its burden of proof as to whether the Respondent has registered and is using the disputed domain name in bad faith.
6.24. The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <novartisotc-elearning.com> be transferred to the Complainant.
José Pio Tamassia Santos
Date: May 10, 2015