WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novartis AG v. Zhengqinghua, Xiamen
Case No. D2015-2211
1. The Parties
The Complainant is Novartis AG of Basel, Switzerland, represented by Dreyfus & associés, France.
The Respondent is Zhengqinghua, Xiamen of Xiamen, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <cosentyx.top> is registered with Xiamen eName Network Technology Corporation Limited dba eName Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2015. On December 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 11, 2015, the Registrar transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing its contact details.
On December 14, 2015, the Center sent an email to the parties in English and Chinese regarding the language of the proceeding. On December 15, 2015, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not submit any comments by the specified due date.
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 and 4, the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceeding commenced on December 22, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2016.
The Center appointed Matthew Kennedy as the sole panelist in this matter on January 28, 2016. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is a Swiss corporation that manufactures and markets pharmaceutical products. It owns various registrations of the trademark COSENTYX including International Registration No. 1144740, registered in 2012, which is valid in multiple jurisdictions including China with respect to pharmaceutical preparations in class 5. The Complainant markets “Cosentyx” as a treatment for certain skin conditions including plaque psoriasis and promotes this product on its official website “www.cosentyx.com”.
The Respondent registered the disputed domain name on August 23, 2015. The Respondent is located in Xiamen, Fujian, China. The contact information in the Registrar’s WhoIs database indicates the registrant’s name, telephone and email but, in place of the organization name and the street address, it only indicates the city name. The disputed domain name does not resolve to any active website.
5. Parties’ Contentions
The Complainant submits that it owns numerous COSENTYX trademark registrations around the world and enjoys a worldwide reputation in that trademark. The disputed domain name entirely incorporates the Complainant’s trademark and is identical or confusingly similar to it.
The Complainant submits that the Respondent has no prior rights or legitimate interests in the disputed domain name. The Respondent cannot reasonably pretend that it was intending to develop a legitimate activity for use with the disputed domain name because it is identical to the Complainant’s COSENTYX trademark. The Respondent is not commonly known by the name “Cosentyx”, not affiliated with the Complainant and not authorized or licensed to register or use the trademark COSENTYX as a domain name.
The Complainant submits that the Respondent registered and uses the disputed domain name in bad faith. The Respondent was aware of the existence of the Complainant’s COSENTYX trademark at the time of registration because the trademark is an invented term and highly distinctive. The confusing similarity of the disputed domain name with the Complainant’s trademark will inevitably result in diversion of Internet traffic from Complainant’s site to Respondent’s site. The Respondent makes only passive use of the disputed domain name but, in the circumstances of this case, this constitutes use in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6 Discussion and Findings
6.1 Language of the Proceeding
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the Complainant has no knowledge of Chinese and that the cost of translation would impose a significant burden. The Respondent did not respond to the Complainant’s language request.
The Panel observes that in this proceeding the Complaint was filed in English. The Respondent did not express any interest in responding to the Complaint or in otherwise participating in this proceeding.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. (See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293).
Given that the Respondent has not responded to the Complaint or otherwise participated in this proceeding, and that its default is not due to any failure on the part of the Center, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and unnecessary delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.
6.2 Analysis and Findings
Paragraph 4(a) of the Policy provides that the Complainant must prove 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; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the registered trademark COSENTYX.
The disputed domain name incorporates the Complainant’s trademark COSENTYX in its entirety. The only additional element is the generic Top-Level Domain (“gTLD”) suffix “.top”. A gTLD suffix generally has no capacity to distinguish a domain name from a trademark (See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080) and nothing in this dispute leads to a different conclusion.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a 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 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.
The Panel has already found the disputed domain name to be confusingly similar to the Complainant’s trademark. The Complainant submits that it has never authorized the Respondent to use or register its trademark or to register the disputed domain name.
With respect to the first and third circumstances set out above, the evidence shows that the Respondent makes only passive use of the disputed domain name. There is no evidence that the Respondent has made any other use, or preparation to use, the disputed domain name.
With respect to the second circumstance, the Respondent’s name is “Zhengqinghua” and, allegedly, “Xiamen”, neither of which has any apparent connection with the name “Cosentyx”.
In view of the above circumstances, the Panel considers that the Complainant has discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The burden now shifts to the Respondent to show that it does have rights or legitimate interests, but the Respondent did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.
With respect to registration in bad faith, the Panel observes that the Respondent registered a domain name that, but for the gTLD, is identical to the Complainant’s COSENTYX trademark. This trademark is the invented name of a pharmaceutical product marketed by the Complainant. There is no evidence on the record that this invented name has any other meaning. The disputed domain name registration postdates the Complainant’s trademark registrations – including in China, where the Respondent is located. Information on the Complainant’s product and the Complainant’s official website “www.cosentyx.com” are among the top search results for the term “cosentyx” in the Baidu search engine. In view of these circumstances, the Panel is persuaded that the choice to register a domain name identical to that invented name, in combination with a gTLD, was deliberate.
With respect to use in bad faith, the Respondent makes only passive use of the disputed domain name but this does not preclude a finding of use in bad faith (see Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In the present dispute, the Complainant has a strong reputation in its trademark which is widely known through use in connection with a pharmaceutical product, including through the Complainant’s official website “www.cosentyx.com”. The disputed domain name consists of the exact trademark COSENTYX but in combination with a different gTLD. The Respondent has provided incorrect contact information in its domain name Registration Agreement which appears designed to prevent it from being located. Given these circumstances and those described in Section 6.2B, the Panel finds that the Complainant has discharged its burden of demonstrating that the disputed domain name is being used in bad faith.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 <cosentyx.top> be transferred to the Complainant.
Date: February 3, 2016