WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novartis AG v. Ricardo Van Der Vaard
Case No. D2016-0406
1. The Parties
The Complainant is Novartis AG of Basel, Switzerland, represented by Dreyfus & associés, France.
The Respondent is Ricardo Van Der Vaard of Austin, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <ritalinkopen.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 29, 2016. On March 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 2, 2016, 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 the Complainant on March 7, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 10, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint and the amended Complaint, and the proceedings commenced on March 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 6, 2016.
The Center appointed Gunnar Karnell as the sole panelist in this matter on April 21, 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 the Rules, paragraph 7.
4. Factual Background
The disputed domain name was registered on June 17, 2015.
The Complainant owns numerous trademark registrations around the world, here to be mentioned the United States of America trademark RITALIN, registered November 22, 1949, No. 0517928, and the International Trademark RITALIN, registered February 13, 1998, No. 689728, both covering goods in class 5. The trademark is known worldwide.
The Complainant also owns several domain names incorporating the trademark RITALIN.
5. Parties’ Contentions
The disputed domain name was first registered through a privacy shield to which the Complainant on October 30, 2015 sent a cease-and-desist letter, requesting the receiver to cease the use of the disputed domain name, to transfer it to the Complainant and to unveil the identity and contact details of the registrant. Later informed that the Respondent had become registered for the disputed domain name, the Complainant repeated its request, now to the Respondent, who in reply informed the Complainant that the Respondent’s home page was no more active, threatening however to re-open it, additionally stating that the Respondent works for the Complainant.
The disputed domain name is confusingly similar to the Complainant’s trademark RITALIN, to which the Complainant, a world leader in pharmaceutical products, acquired rights well before the registration of the disputed domain name. It entirely reproduces the Complainant’s trademark RITALIN, adding the Dutch generic term “kopen”, meaning “buy” in English. Neither this addition nor the extension “.com” influences the similarity between the trademark RITALIN and the disputed domain name. The likelihood of confusion is reinforced by the webpage set up by the Respondent. Previously, before being deactivated by the Respondent, the disputed domain name resolved to a page displaying information about RITALIN-marked products and aiming at commercializing Ritalin products without prescription. In the light of the website set up by the Respondent Internet users are likely to believe that it is endorsed or authorized by the Complainant.
The Respondent has no prior rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with the Complainant, nor has the Respondent been authorized to use or to register the RITALIN trademark or to seek registration of any domain name incorporating it or to use photographs of any product belonging to the Complainant. The disputed domain name is so similar to the RITALIN trademark that the Respondent cannot reasonably pretend an intention to develop a legitimate activity through the disputed domain name. The respondent has not demonstrated any use of the disputed domain name or any demonstrable preparations to use it in connection with a bona fide offering of goods or services. It resolved to a website that commercialized Ritalin products without prescription. RITALIN is a trademark for medicines that are not authorized for online sale. Hence, it cannot be inferred that the Respondent is making a legitimate commercial or fair use of the disputed domain name, literally meaning “buy ritalin”. It is rather illegitimately selling the Complainant’s products or imitations thereof exploiting the Complainant’s reputation.
The disputed domain name was registered and it is being used in bad faith. It is unlikely that the Respondent was unaware of the Complainant and its widely known numerous trademarks when registering the disputed domain name, resolving to a website commercializing the Complainant’s products. Contacted by the Complainant, the Respondent threatened to reactivate the website of the disputed domain name and to state that he is working for the Complainant’s company. He also had registered the disputed domain name through a privacy shield service, hiding his identity and contact details from the Complainant. The Respondent would prevent the Complainant to reflect its trademark in the disputed domain name. It is to be believed that Internet users, attempting to use the Complainant’s website, have ended up on the web pages of the Respondent. Also, it is most likely that the website “www.ritalinkopen.com” offered imitations of products prohibited as hazardous to consumers’ health in online sales. Presently, the disputed domain name <ritalinkopen.com>, previously displaying information about commercializing RITALIN-marked products without prescription, now resolves to an inactive page. The Respondent has actively provided and failed to correct false contract details, in breach of its registration agreement. The current passive holding does not mean that the disputed domain name is held in fair use and that it is used without bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The factual foundations of the Complainant’s contentions are presented in great detail by the Complainant, which has supported its uncontradicted claims by submitted evidence and ample reference to earlier UDRP decisions. In accordance with paragraphs 14 and 15(a) of the Rules, the Panel proceeds to a decision, giving attention to all circumstances on record of the Respondent’s behavior, to deal summarily with the case.
A. Identical or Confusingly Similar
The Panel finds that notwithstanding differences, indicated as irrelevant by the Complainant, between the Complainant’s multi-registered trademark RITALIN in which the Complainant has rights and the disputed domain name, this latter is confusingly similar to the Complainant’s trademark. The registrations here indicated of the trademark took effect well before the registration of the disputed domain name.
Accordingly, the first element of the Policy is satisfied.
B. Rights or Legitimate Interests
The Complainant has, based on its contentions as summarized at 5.A. above, established a prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and there has been no rebuttal by the Respondent. Nothing in the record gives reason to believe that the Respondent has or had any rights or legitimate interests in respect of the disputed domain name.
The Panel finds that the Complainant has made out the second limb of the Policy in that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds no indication on the record that might impair the Complainant’s assertions regarding the facts leading up to its conclusions that the disputed domain name <ritalinkopen.com> has been registered and used in bad faith.
The Respondent was obviously aware of the Complainant and its mark and used the disputed domain name for commercial gain, illegitimately offering for sale products purported to be of the Complainant’s manufacture.
The Panel therefore finds that the Complainant has made out the third limb of the Policy and that the Respondent has registered and used the disputed domain name 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 disputed domain name <ritalinkopen.com> be transferred to the Complainant.
Date: May 1, 2016