WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novartis AG v. Leloy Nuijens / Whois Privacy Corp.
Case No. D2016-0487
1. The Parties
The Complainant is Novartis AG of Basel, Switzerland, represented by Dreyfus & associés, France.
The Respondent is Leloy Nuijens of Amsterdam, the Netherlands / Whois Privacy Corp. of Nassau, the Bahamas.
2. The Domain Names and Registrar
The disputed domain names <ritalinkopen.net> and <ritalin-kopen.net> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and Internet Domain Service BS Corp, respectively (the “Registrars”).
3. Procedural History
The Complaint regarding <ritalinkopen.net> was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2016. On March 10, 2016, the Center transmitted by email to the Registrar PDR Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with this disputed domain name. On March 11, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent Leloy Nuijens 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 and 4, the Center formally notified the Respondent Leloy Nuijens of the Complaint, and the proceedings commenced on March 18, 2016.
The proceedings were suspended on March 30, 2016, and reinstituted on April 1, 2016. Upon reinstitution, the Complainant submitted an Amended Complaint seeking to add <ritalin-kopen.net> to the dispute. The Center informed the Complainant that the Amended Complaint containing its request would be forwarded to the Panel for its determination.
Due to the suspension, the Response due date was extended through April 12, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2016.
The Center appointed Ian Lowe as the sole panelist in this matter on April 27, 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.
The Center, at the direction of the Panel, sent a request for registrar verification by email to the Registrar Internet Domain Service BS Corp regarding <ritalin-kopen.net> on April 28, 2016. The Registrar confirmed Whois Privacy Corp. as the registrant of the domain name on May 2, 2016. By email of May 10, 2016, the Registrar clarified that “[t]here is an underlying Registrant [behind Whois Privacy Corp. identity shield] but we will not disclose.”
The Amended Complaint seeks to add the additional domain name <ritalin-kopen.net> on the basis of submissions that the additional domain name was in fact registered on behalf of the Respondent to the original Complaint and that both domain names were controlled by the same registrant.
The <ritalin-kopen.net> domain name was registered on March 10, 2016, the date of filing of the original Complaint. The Panel notes that, contrary to the updated UDRP Rules, the email filing the original complaint was copied by the Complainant to the registrar of record of the disputed domain name <ritalinkopen.net>. The Amended Complaint provided evidence that the web page to which the additional domain name <ritalin-kopen.net> resolved referred to “http://ritalinkopen.net”.
In the circumstances, following the response from the Registrar of record of the additional domain name, the Panel issued a procedural order giving the registrant of record of the additional domain name an opportunity to indicate whether it intended to take any part in the proceeding. The order was also served on the original Respondent. No response was received by the Center from either the Respondent or the registrant of the additional domain name.
Accordingly, the Panel is satisfied on the balance of probabilities that the two disputed domain names are indeed controlled by the same person. The Panel is therefore prepared to admit the Amended Complaint in respect of both disputed domain names and will proceed to reach a decision on the Amended Complaint on that basis.
4. Factual Background
The Complainant Novartis AG is a world leader in pharmaceutical products, created in 1966 from the merger of Ciba-Geigy and Sandoz. Ritalin is one of the Complainant’s key products. It was first marketed during the 1950s and is available in over 50 countries. It is indicated for the treatment of attention deficit hyperactivity disorder. In 2014, Ritalin was classified among the top 20 pharmaceutical products.
The Complainant owns numerous registered trademarks in respect of the word mark RITALIN around the world, including United States trademark number 517298 registered on November 22, 1949 and European Union trademark number 2712818 registered on January 8, 2004.
The disputed domain name <ritalinkopen.net> was registered on October 17, 2015 and <ritalin-kopen.net> on March 10, 2016. “Kopen” means “Buy” in the Dutch language. At the time of preparation of the original complaint, the <ritalinkopen.net> domain name resolved to a website featuring the Complainant’s logo, and in the Dutch language giving information about Ritalin and offering it for sale without prescription. The Respondent’s address is in the Netherlands. At the time of preparation of the Amended Complaint, the <ritalin-kopen.net> domain name resolved to a webpage, again in the Dutch language, stating that the website was under construction but including the statement “http:/ritalinkopen.net offline? Bestel hier dan met hetzelfde gemak uw Ritalin” which means in English: “http:/ritalinkopen.net offline? Buy your Ritalin here with the same ease.”
In an email to the Complainant’s representative shortly before the filing of the original Complaint, the Respondent stated that “I have quit using the [ritalinkopen.net] site for a couple of months now. I have zero traffic/orders, and I have also deleted myself from google search results.”
5. Parties’ Contentions
The Complainant contends that the disputed domain names are confusingly similar to its RITALIN trademarks, that the Respondent has no rights or legitimate interests in respect of the disputed domain names and that the Respondent registered and is using the disputed domain names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain names the Complainant must prove that:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has uncontested rights in the trademark RITALIN, by virtue of its many trademark registrations around the world. The Complainant also has widespread goodwill and reputation acquired through use of the RITALIN mark over many years. Ignoring the generic Top-Level Domain (“gTLD”) “.net”, the disputed domain names comprise the entirety of the Complainant’s mark, together with the word “kopen”, which means “buy” in the Dutch language. In the Panel’s view, the addition of this generic term does not detract from the distinctiveness of the RITALIN mark. Accordingly, the Panel finds that the disputed domain names are identical or confusingly similar to a mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent could have no rights or legitimate interests in respect of the disputed domain names. It asserts that the Respondent is not authorised by the Complainant to use the mark RITALIN and the Panel accepts that the offering for sale of RITALIN without prescription does not amount to use of the disputed domain names in connection with a bona fide offering of goods or services. Rather the Respondent is illegitimately selling the Complainant’s products or imitations of them. The Respondent has failed to counter the prima facie case established by the Complainant by responding to the Amended Complaint. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the disputed domain names.
C. Registered and Used in Bad Faith
For the same reasons, the Panel is satisfied that the Respondent registered and has used the disputed domain names in bad faith. In view of the use to which the Respondent has put the disputed domain names, resolving to websites offering RITALIN for sale, the Panel considers it inescapable that the Respondent must have had the Complainant and its rights in the RITALIN mark in mind when it registered the disputed domain names. Such use is most likely to deceive Internet users into believing that the disputed domain names were registered by or with the authority of the Complainant when they were not. The nature of the webpages to which the disputed domain names resolve, using or intending to use the disputed domain names for financial gain, amounts to paradigm bad faith for the purposes of paragraph 4(b)(iv) of the Policy. The Panel accordingly finds that the disputed domain names were registered and are being used 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 names <ritalinkopen.net> and <ritalin-kopen.net> be transferred to the Complainant.
Date: May 27, 2016