WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novartis AG v. Wil Smit
Case No. D2016-1155
1. The Parties
The Complainant is Novartis AG of Basel, Switzerland, represented by Dreyfus & associés, France.
The Respondent is Wil Smit of Berlin, Germany.
2. The Domain Name and Registrar
The disputed domain name <koopritalin.net> (the "Domain Name") 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 June 8, 2016. On June 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the 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 amendment to the Complaint on June 16, 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 16, 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 15, 2016.
The Center appointed Wolter Wefers Bettink 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 a producer of pharmaceuticals, including a product marketed under the trade mark RITALIN, which is indicated for the treatment of attention deficit hyperactivity disorder (ADHD) and narcolepsy in children and adults.
Ritalin was first marketed during the 1950s and is available in over 70 countries.
The Complainant owns a number of registrations of the RITALIN trade mark, including:
- EU trademark RITALIN no. 002712818, registered on January 8, 2004 with validity until May 27, 2022
- International Trademark RITALIN no. 689728, dated February 13, 1998, with validity until February 13, 2018
hereinafter the "Trade Marks".
The Domain Name was registered on February 23, 2016.
On March 25, 2016 the Complainant sent an email to the Respondent requesting him to cease the use of the Domain Name and transfer the Domain Name to the Complainant, followed by a registered letter on March 29, 2016 with the same demands. The Respondent did not react to either of these communications.
On August 10, 2016 when the Panel searched the Domain Name with its browser, the Domain Name redirected to a website under the domain name <ritalinwinkel.net> where pharmaceutical products were offered for sale under the Trade Marks, adding in Dutch that a prescription was not needed. This website also contained a category "Overige producten" (other products) which, if activated displayed a web page containing pharmaceutical products from other producers.
5. Parties' Contentions
According to the Complainant, Novartis AG is a world leader in pharmaceutical products with an international presence, including offices in Germany. The Complainant states that Ritalin is one of its key products which in 2014 was classified among the top 20 pharmaceutical products in sales. It brings forward that the Domain Name redirects towards a website under <ritalinshop.net> (hereafter the "Website") where Ritalin products are offered for sale without prescription and which displays pictures of the Complainant's products. The Website also sells competitor's products, the Complainant submits.
According to the Complainant the Domain Name is confusingly similar to the Trade Marks, since it incorporates the Trade Marks in their entirety, with the addition of the Dutch generic term "koop" meaning "buy" or "purchase" in English.
The Complainant contends that the Respondent is not affiliated with the Complainant in any way nor has he been authorized by the Complainant to use and register the Trade Marks, or to seek registration of any domain name incorporating the Trade Marks, or to use photographs of products belonging to the Complainant. The Respondent has no rights or legitimate interest in the Domain Name, the Complainant submits, nor did the Respondent demonstrate use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services, since products under the Trade Marks are offered for sale on the Website without prescription, as well as competitor's products. Therefore, the Complainant concludes, the Respondent has no rights or legitimate interests in respect of the Domain Name.
According to the Complainant, the Domain Name was registered in bad faith since it is unlikely that the Respondent was unaware of the Complainant when he registered the Domain Name, in view of the many registrations of the Trade Marks which, the Complainant contends, are widely known throughout the world.
The fact that the Respondent is using the Domain Name to redirect to a website which also includes the Trade Marks is evidence, the Complainant submits, that the Respondent was aware of the existence of Trade marks.
According to the Complainant, there is bad faith use since in the absence of any license or permission from the Complainant to use the widely known Trade Marks, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed. The Complainant contends that it is most likely that the Website is offering imitations of the products which can be hazardous for consumer's health. Furthermore, the Complainant submits, the Respondent's primary motive in registering and using the Domain Name was to capitalize on or otherwise take advantage of the Trade marks, 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 Trade Marks are incorporated in their entirety in the Domain Name. The addition of the generic Dutch word "koop", meaning "purchase" in English, does not diminish the confusing similarity. The gTLD ".com" is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks.
B. Rights or Legitimate Interests
The Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name (WIPO Overview 2.0, paragraph 2.1). Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant's consent to use the Trade Marks as part of the Domain Name, is not commonly known by the Domain Name and has not acquired trademark rights in the Domain Name. The fact that the Domain Name redirects to a website where products are offered for sale under the Trade Marks, displaying pictures of the Complainant's products under the Trade Marks, is not in itself evidence that the Respondent is not using the Domain Name for a bona fide offering of goods or services. As has been widely recognized in UDRP case law, a reseller or distributor of trademarked goods can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements, including that the site is used to sell only the trademarked goods, and that the registrant's relationship with the trademark holder is accurately and prominently disclosed on the website (WIPO Overview 2.0, paragraph 2.3). As the Website is also used to sell competitors' products and does not display a clarification of the relationship between the reseller and the Complainant, these requirements are not met. Moreover, the Website advertises in the Dutch language the sale of the pharmaceutical "Ritalin" without prescription, which is not allowed in the Netherlands.
In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Name the Respondent was or should have been aware of the Trade Marks, since
- the Respondent's registration of the Domain Name occurred 12 years after the registration of the newest of the Trade Marks;
- the name "Ritalin", which is included in its entirety in the Domain Name, is not a generic name or a name of which it is likely that a potential domain name registrant would accidentally think of;
- a simple trade mark register search, or even a browser search, prior to the registration of the Domain Name would have informed the Respondent of the existence of the Trade Marks.
Under these circumstances, the Panel concludes that the Domain Name has been registered in bad faith.
The fact that the Domain Name was redirecting to a website under the domain name <ritalinshop.net> and, when the Panel verified this, a website under <ritalinwinkel.net>, using pictures of the Complainant's Ritalin products and offering those products for sale (in addition to competitors' products), clearly indicates that the Respondent was seeking to attract for commercial gain Internet users to its website by falsely creating the impression that it was somehow supported or approved by or connected to the Complainant as per paragraph 4(b)(iv) of the Policy. The addition on the website of text in the Dutch language stating that these pharmaceutical products could be bought without prescription is further evidence of bad faith use of the Domain Name, as this is contrary to Dutch pharmaceuticals legislation.
Therefore, the Panel concludes that the Domain Name has been registered and is 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 name <koopritalin.net> be transferred to the Complainant.
Wolter Wefers Bettink
Date: August 10, 2016