WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novartis AG v. WhoisGuard, Inc. / A B
Case No. D2018-1622
1. The Parties
The Complainant is Novartis AG of Basel, Switzerland, represented by Dreyfus & associés, France.
The Respondent is WhoisGuard, Inc. of Panama, Panama / A B of Iceland.
2. The Domain Name and Registrar
The disputed domain name <voltaren.store> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2018. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 18, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 19, 2018, 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 July 24, 2018.
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 proceedings commenced on July 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 14, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 15, 2018.
The Center appointed Ellen B Shankman as the sole panelist in this matter on September 3, 2018. 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 date of the Domain Name registration was confirmed by the Registrar to be January 4, 2018.
The Panel also conducted an independent search to determine that the Domain Name is currently active, and redirects to an email address firstname.lastname@example.org and appears to be a ‘parking page’.
The Complainant is the owner of trademark registrations for the term VOLTAREN for goods in Class 5, inter alia, International Trademark VOLTAREN No. 215704, registered on December 20, 1958 (duly renewed) and European Trademark VOLTAREN No. 005308200 filed on August 25, 2006, registered on September 20, 2007 (duly renewed). In addition, the Complainant operates the domain name <voltaren.com> registered on September 3, 1997.
5. Parties’ Contentions
The Complaint contends that the Complainant, Novartis, is a global healthcare company based in Switzerland that provides solutions to address the evolving needs of patients worldwide. It was created in 1996 through a merger of Ciba-Geigy and Sandoz. Novartis and its predecessor companies trace roots back more than 250 years, with a rich history of developing innovative products. From beginnings in the production of synthetic fabric dyes, the companies that eventually became Novartis branched out into producing chemicals and ultimately pharmaceuticals.
Novartis operates businesses with global scale and strong customer ties, focusing on innovative patented medicines, generics and eye care devices. Novartis products are available in about 155 countries and they reached nearly 1 billion people globally in 2017. About 126,000 people of 145 nationalities work at Novartis around the world. VOLTAREN is one among the various pharmaceuticals products manufactured by Novartis. It figures among top 20 pharmaceutical products.
Introduced in the late 1980s, diclofenac sodium enteric-coated (delayed-release) tablets (“Voltaren”, Novartis Pharmaceuticals Corporation, East Hanover, NJ, USA) was the first diclofenac drug product aimed at reducing gastric exposure. VOLTAREN is a nonsteroidal anti-inflammatory drug sold over the counter, the No.1 topical pain reliever worldwide and the fastest growing Top 10 OTC brand in the world.
The Complainant noticed the registration of the Domain Name and conducted a Whois Database search that revealed that the Domain Name was registered by the Respondent. The Complaint further alleges that the Domain Name previously resolved to the default page of the Registrar, and upon further investigation the Complainant discovered than an email server has been configured on the Domain Name, thus creating a risk of phishing.
Before starting the present proceeding, the Complainant made some efforts to resolve this matter amicably. On January 26, 2018, the Complainant sent a cease and desist letter to the Respondent via registered letter and email on the basis of its trademark rights requesting the Respondent to transfer the Domain Name to the Complainant free of charge. Numerous reminders were sent to the Respondent but no reply was obtained. However, the Complainant noticed that the direction of the Domain Name changed from the default page of the Registrar to an error page, and this can be assimilated to an inactive page.
In parallel, on May 16, 2018, the Complainant sent a notification letter to the email service provider (NameCheap, Inc.) to request the deactivation of the email server. On June 25, 2018, the service provider replied indicating that “the hosting service associated with the <voltaren.store> website has been terminated”. Upon receipt of the Notice of Registrant Information by the WIPO Center following the filing of the Complaint, the Complainant carried out further research and found that the address provided was a fake address. Since this matter was not resolved amicably, the Complainant initiated this UDRP procedure.
The Complaint alleges that the Complainant enjoys a worldwide reputation, and owns numerous VOLTAREN trademark registrations around the world. The Domain Name is confusingly similar to the Complainant’s trademark and reproduces it in its entirety. Thus, Internet users might wrongly believe that the Domain Name is endorsed by the Complainant. The generic Top-Level Domain (“gTLD”) extension “.store” is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademark and the Domain Name. The Complainant has used the trademark VOLTAREN in connection with a wide variety of products and services around the world. Therefore, the public would reasonably assume that the Domain Name would be owned by the Complainant or at least assume that it is related to the Complainant, thus creating a likelihood of confusion with the Complainant’s trademark.
The Respondent is not affiliated with the Complainant in any way nor has he been authorised or licensed by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating the VOLTAREN trademark. Moreover, the Respondent is not known by the name of VOLTAREN. Further, the Respondent did not demonstrate use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services, which resolves to an error page which can be assimilated to an inactive page. Consequently, the Respondent fails to show any intention of noncommercial or fair use of the Domain Name. It is most likely to be believed that the Respondent has no rights or legitimate interests in the Domain Name. In addition, an email server has been configured on the Domain Name. Thus, there might be a risk that the Respondent is engaged in a phishing scheme. The clear inference to be drawn from the Respondent’s operations is that he is trying to benefit from the fame of the Complainant’s mark.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark VOLTAREN, in respect of pharmaceuticals. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the gTLD “.store” does not prevent a finding of confusing similarity. Therefore, the Domain Name <voltaren.store> could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. That continued use of the Domain Name would create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website, especially for competing goods and services. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for VOLTAREN.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the gTLD does not change the overall impression of the designation as being connected to the trademark of the Complainant, and does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark and if anything, enhances it to suggest the offer of the Complainant’s products online. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered domain name is considered sufficient to find the domain name confusingly similar to the Complainant’s trademark.”
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s trademark, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name <voltaren.store> and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the distinctiveness of the Complainant’s trademark and reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark and uses it for the purpose of misleading and diverting Internet traffic.
The Panel finds persuasive the Complainant’s arguments that an email server has been configured on the Domain Name, thus creating a risk of phishing. Further, that the Domain Name previously resolved to the default page of the Registrar, and after the Complainant sent a cease and desist letter to the Respondent the direction of the Domain Name changed from the default page of the Registrar to an error page, and this can be assimilated to an inactive page, further supports the Panel’s finding that the mark was registered and is being used – even by arguable passive holding – in bad faith.
Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant’s trademark, and the Respondent’s non-reply to the Complainant’s request for voluntary transfer of the Domain Name, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) 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 <voltaren.store> be transferred to the Complainant.
Date: September 12, 2018