WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novartis AG v. Anonymize, Inc. / Pelres Investments Ltd., Jan Janssen
Case No. D2018-1730
1. The Parties
The Complainant is Novartis AG of Basel, Switzerland, represented by Dreyfus & associés, France.
The Respondents are Anonymize, Inc. of Washington, United States of America (“United States”) and Pelres Investments Ltd., Jan Janssen of Basingstoke, United Kingdom of Great Britain and Northern Ireland (“UK”).
2. The Domain Name and Registrar
The disputed domain name <voltaren.xyz> is registered with Epik, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2018. On July 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 31, 2018, 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 August 8, 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 August 13, 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 Respondents of the Complaint, and the proceedings commenced on August 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on September 4, 2018.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on September 7, 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 Complainant is a leading multinational healthcare pharmaceutical company based in Switzerland, which focuses on innovative-patented medicines, generics and eye care devices, and commercializes its products in about 155 countries worldwide including UK. It is known for research and development, manufacture and commercialization under various trademarks of prescription drugs, as well as over-the-counter medication, having a leading position in major therapeutic areas including oncology, hematology and rare disease medicines.
The Complainant uses the mark VOLTAREN to identify one of its pharmaceutical products, a nonsteroidal anti-inflammatory drug sold over the counter, which is a top one topical pain reliever, used worldwide, and ranked among top 20 pharmaceutical products.
The Complainant holds several trademark registrations throughout the world for this mark, alone or in combination with a design, of which the following are sufficiently representative for the present proceeding:
- International Trademark No. 215704 VOLTAREN, registered December 20, 1958, in class 5;
- International Trademark No. 1011414 VOLTAREN, figurative, registered July 10, 2009, in class 5;
- European Union Trademark No. 5308200 VOLTAREN, registered on September 20, 2007, in class 5.
The Complainant also owns several domain names comprising or incorporating its trademark VOLTAREN, of which is sufficiently representative for the present proceeding <voltaren.com> (registered on September 3, 1997).
The Complaint was filed initially against Anonymize, Inc., a US company that provides privacy shield services.
The disputed domain name was registered on March 29, 2018, and it is currently inactive.
5. Parties’ Contentions
Key contentions of the Complaint may be summarized as follows:
The Complainant says its company and its trademark VOLTAREN enjoy worldwide reputation, producing evidence of it.
The Complainant further asserts the disputed domain name reproduces its trademark VOLTAREN in its entirety, being its sole distinctive element. It is therefore confusingly similar to it, regardless of the extension “.xyz”, which is of no importance in assessing confusing similarity for purposes of the Policy due to its consideration as a technical requirement.
The Complainant contends that the Respondents do not have rights or legitimate interests in the disputed domain name, which has no resemblance to their company names by which they are commonly known. In addition, there is no relationship between the Parties, so the Respondents have no license or authorization to use the Complainant’s reputed mark or to seek registration of any domain name incorporating this trademark. The registration of VOLTAREN trademarks preceded the registration of the disputed domain name for years. Furthermore, the disputed domain name is neither used in connection to any bona fide offering of goods or services, nor for a legitimate noncommercial or fair use. Originally, it resolved to an index page and it was configured an email server on it, after sending a cease-and-desist to Anonymize, Inc., the disputed domain name was redirected towards a Wikipedia page defining “diclofenac”, which is an anti-inflammatory active ingredient contained in Voltaren drugs, and, subsequently, it was deactivated. These several changes reveal a deliberate attempt to look legitimate but fail to show any legitimate interest or fair use of the disputed domain name.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. Given the famous and distinctive nature of its trademark VOLTAREN, and its reproduction in its entirety in the disputed domain name, the Respondents are likely to have known or should have known as to the existence of this trademark, acting with opportunistic bad faith in registering the disputed domain name to make illegitimate use of it. Further, the redirection of the disputed domain name to an informative page related to an active ingredient present in Voltaren products, reveals the connection with its reputed trademark and the opportunistic bad faith of the Respondents.
Furthermore, the Complainant asserts that ICANN Policy implies registrant’s duty to verify that the registration of any domain name does not infringe any third party rights. Any trademark search or any search on the Internet in Google or other search engine would have revealed the existence of the trademark VOLTAREN. Therefore, the Respondents’ failure to do such a simple search is a contributory factor to their bad faith. In addition, the Respondents neither tried to defend their rights nor stated any valid arguments to justify the registration of the disputed domain name in response to the Complainant’s cease-and-desist letter.
The Complainant further contends that the disputed domain name was registered for attracting Internet users to the Respondents’ website by creating a likelihood of confusion –- or at least an impression of association –- with its reputed trademarks. The fact that the disputed domain name is currently inactive does not preclude a finding of bad faith considering the circumstances of this case. The reproduction on its entirety of its famous trademark in the disputed domain name, in order to attract Internet users to an inactive website, cannot be regarded as fair use. In addition, the configuration of an email server on the disputed domain name may reveal a risk of a phishing scheme, aiming to deceive Internet users. Furthermore, the disputed domain name disrupts the Complainant’s business preventing the reflection of the Complainant’s mark in the corresponding domain name under the gTLD “.yxz”.
The Complainant has cited an extensive number of previous decisions under the Policy that it considers to be supportive of its position.
The Complainant requests the transfer of the disputed domain name.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel of a sole panelist has jurisdiction to decide the dispute.
Paragraph 15(a) of the Rules provides that “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. The Panel has taken into consideration all of the evidence, annexed material and submissions provided by the Parties.
Paragraph 1 of the Rules provides that “respondent means the holder of a domain-name registration against which a complaint is initiated”. Therefore, in the present proceeding the Panel considers the Respondent to be Pelres Investments Ltd., Jan Janssen.
A. Identical or Confusingly Similar
In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the Policy. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, the applicable Top-Level Domain (“TLD”) in a domain name is considered a standard technical registration requirement and as such is generally disregarded under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview 3.0.
The Complainant indisputably has rights in the registered mark VOLTAREN. The disputed domain name incorporates this mark in its entirety with no additional element, being clearly recognizable, and the TLD “.xyz” shall be disregarded. Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP 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) of the Policy shifts to the Respondent the burden of coming forward with evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie showing indicating the absence of such rights or legitimate interests.
The Complainant has asserted that the Respondent is not commonly known by the name “voltaren”, the Respondent has not been licensed to use the Complainant’s trademark VOLTAREN, and there is no evidence that the Respondent has any other rights, or made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair purpose. This effectively shifts the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name. However, the Respondent has neither replied to the Complainant’s cease and desist letter, nor to the Complaint.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The evidence provided by the Complainant shows that the disputed domain name was temporally linked to an informative site related to one component of the drug commercialized under the trademark VOLTAREN.
The disputed domain name is identical to the Complainant’s trademark, which intrinsically creates a likelihood of confusion or at least a high risk of implied affiliation. The Panel also notes the well-known character of the trademark VOLTAREN, its presence in the UK (where the Respondent is located) and extensive presence over the Internet.
The Panel considers it is further remarkable that, after the Complainant’s cease-and-desist letter, the Respondent modified the first use of the disputed domain name (as an index site) linking it to an informative site about one VOLTAREN products’ component, without any further explanation or reply. In addition, the Respondent modified, once more, its use of the disputed domain name, suppressing the said informative link, now not resolving to an active website, without any explanation, and has not replied to the Complainant’s contentions in the present proceeding. The Panel considers these facts show that the Respondent has deliberately chosen not to give any explanation or evidence of any rights or legitimate interests in the disputed domain name.
All these circumstances lead the Panel to conclude that the Respondent has not produced evidence to rebut the Complainant’s prima facie case. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(a)(iii), requires that the Complainant establishes that the disputed domain name “has been registered and is being used in bad faith”.
At the time of the disputed domain name registration, due to the well-known character of the trademark VOLTAREN, as well as its extensive presence over the Internet, and its presence in many countries (including UK, where the Respondent has its place), it is unlikely that the Respondent did not know about this trademark and did not have it in mind when registering the disputed domain name.
It is further to be noted that the fact that the disputed domain name does not resolve to an active website does not prevent a finding of bad faith. All the circumstances of the case should be examined to determine whether the Respondent is acting in bad faith, and, in particular, cumulative circumstances found to be indicative of bad faith include the Complainant having a well-known trademark, no response or failure of the respondent to provide any evidence of actual or contemplated good faith use, and the registrant’s concealment of its identity.
Furthermore, the Policy’s non-exhaustive list of instances of bad faith in paragraph 4(b) includes the following:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
All relevant circumstances of the present case, in particular, i) the reputation of the Complainant’s trademark, its identical reproduction in the disputed domain name, ii) the absence of reply to the cease-and-desist letter and to the Complaint, iii) the absence of evidence of demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or a genuine noncommercial use, and iv) the Respondent’s concealment of its identity, lead the Panel to conclude that the disputed domain name was registered and is being used in bad faith.
The Panel further considers that the use of the disputed domain name to resolve to an “Index page” or to the website of Wikipedia defining “diclofenac”, active ingredient of Complainant’s products, creating a risk of confusion or affiliation in the Internet users looking for information about the Complainant’s products identified with the trademark VOLTAREN, is not a use in good faith, especially being the disputed domain name identical to the Complainant’s VOLTAREN trademarks.
Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under the third element 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.xyz> be transferred to the Complainant.
Reyes Campello Estebaranz
Date: September 14, 2018