WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novartis AG v. Bob de vries
Case No. D2016-1154
1. The Parties
The Complainant is Novartis AG of Basel, Switzerland, represented by Dreyfus & associés, France.
The Respondent is Bob de vries of Noord-Holland, Amsterdam, Netherlands.
2. The Domain Name and Registrar
The disputed domain name <ritalinshop.net> is registered with NameSilo, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 8, 2016. On June 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 8, 2016, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on June 17, 2016.
The Center verified that 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 proceedings commenced on June 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 7, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 14, 2016.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on July 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.
4. Factual Background
The Complainant is the owner of the following trade mark registrations: European Union trademark RITALIN no. 002712818, registered on January 8, 2004 covering goods in class 5; and International Trademark RITALIN no. 689728, dated February 13, 1998, covering goods in class 5.
The disputed domain name was registered on March 2, 2016, and resolves to an online pharmacy.
5. Parties' Contentions
The Complainant is a major pharmaceutical company based in Switzerland. It markets Ritalin, which is indicated for the treatment of attention deficit hyperactivity disorder (ADHD) and narcolepsy in children and adults. It is available in over 70 countries and in 2014 the sales volume of Ritalin placed it within the top 20 pharmaceutical products.
The Complainant asserts that it attempted to settle this matter amicably but received no response to its cease and desist letters.
According to the Complainant the disputed domain name incorporates its widely known trade mark RITALIN in its entirety. The addition of the generic and descriptive word "shop" does not impact upon the similarity between the disputed domain name and the relevant trade mark, and is in fact liable to induce Internet users to believe that the disputed domain name was endorsed by the Complainant and is offering Ritalin products for sale. The likelihood of confusion is further enhanced by the content of the page to which the disputed domain name resolves, which commercializes Ritalin products without prescription and also contains pictures of the Complainant's products.
Further the Complainant asserts that the Respondent is not affiliated with the Complainant and is not authorized to use its trade mark RITALIN in any manner, nor to register a domain name incorporating it nor to use photographs of its products. According to the Complainant's assertions the Respondent has no prior rights in the mark RITALIN, whose registration long predates the registration of the disputed domain name. Additionally, the disputed domain name and attached website are so similar to the Complainant's well-known RITALIN trademark that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity by way of the disputed domain name. The website to which the disputed domain name resolves commercializes Ritalin products as well as those of competitors without prescription. The Complainant s that the Respondent is making a non-legitimate use of the disputed domain name, with the intent of making a commercial gain by misleadingly diverting consumers away from the Complainant's official website. According to the Complainant it is likely that the Respondent uses the disputed domain name to sell fake items that could be hazardous to people's health, behavior that cannot be regarded as a legitimate or fair use of the disputed domain name.
According to the Complainant it is implausible and unlikely that the Respondent was not aware of the Complainant. The latter's trade marks are widely known across the world, the Complainant asserts, and the reproduction of the Complainant's marks on the relevant website clearly establishes that the Respondent was aware of the existence of the Complainant's marks. Also the Respondent did not offer any explanation for its adoption and use of the Complainant's trade marks.
Further, according to the Complainant, in the absence of any license or permission from the Complainant to use its widely known trade mark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be asserted. The use of photographs of the Complainant's products without any authorization also suggests bad faith, so the Complainant asserts.
Moreover, according to the Complainant it is very likely that the website to which the disputed domain name resolves offers imitation products for sale that can be hazardous for a consumer's health. The Complainant contends that the use of a third party trade mark without prior consent to promote products that are similar to the products and services of the trade mark supports a finding of bad faith.
Finally, according to the Complainant the inference to be drawn from the Respondent's operations is that he is attempting to benefit from the fame of the Complainant's marks to commercialize fake products and to make an undue profit. It is more likely than not, the Complainant contends, that the Respondent's primary motive in registering and using the disputed domain name is to take advantage of the Complainant's trade mark rights through the creation of initial interest confusion.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant's RITALIN trade mark. However, it incorporates that highly distinctive mark in its entirety and as the first and most prominent part of the disputed domain name. The accompanying term "shop" is only likely to reinforce the impression of a connection between the Complainant and the relevant website. It suggests a website where the Complainant makes its legitimate products available for sale. That is not in fact the case as the website is unauthorized and the goods offered of doubtful origin. In any case the addition of a generic or descriptive term such as "shop" to a trade mark in a disputed domain name does not detract from a finding of confusing similarity.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant's trade mark RITALIN.
B. Rights or Legitimate Interests
The Respondent is not known by the name "ritalinshop" nor is there any indication before the Panel that he has any trade mark rights or previously used the term "ritalin" in any legitimate manner. The Respondent was not authorized to use the distinctive trade mark RITALIN for any purpose by the Complainant. The Respondent offers products for sale at the relevant website without any prescription, products which could well be entirely counterfeit. The website at the disputed domain name also commercializes products of the Complainant's competitors. The practice the Respondent is engaged in of relying on deception to take consumers to a website where products that are potentially unsafe or at least made available in an illegitimate and/or unauthorized manner (e.g., without prescription), are for sale, including products of the Complainant's competitors, is not of a kind to vest rights or justify a finding of legitimate interests.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant's trade mark RITALIN is widely known and the product in relation to which it is used is made available in many jurisdictions, and has been so for many years well before the registration of the disputed domain name. It is one of the prime prescription drugs in the world. Given also that the Respondent reproduces photographs of apparent RITALIN packs on his website, it is clear that he was fully aware of the Complainant's business and the goodwill that vests in the RITALIN mark. The Respondent offers products for sale that are marked "Ritalin" from the website to which the disputed domain name resolves. There is no knowing whether these are fake or genuine products but they are more likely the former. The products are offered for sale without prescription in an unregulated and unauthorized manner. It is clear that the Respondent is, in the circumstances, using the disputed domain name in bad faith, relying on consumer deception to gain a financial advantage from the misconception the disputed domain name generates as to the connection between the goods offered and the Complainant, which include products of the Complainant's competitors.
Therefore the Panel holds that the disputed domain name was registered and 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 name <ritalinshop.net> be transferred to the Complainant.
William A. Van Caenegem
Date: August 4, 2016