WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novartis AG v. Domain Admin ContactID 5923835, FBS INC, Whoisprotection biz / Adem Kizilay
Case No. D2018-1940
1. The Parties
The Complainant is Novartis AG of Basel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Domain Admin ContactID 5923835, FBS INC, Whoisprotection biz / Adem Kizilay of Istanbul, Turkey.
2. The Domain Names and Registrar
The disputed domain names <sandozmedikal.com> and <sandozmedikal.xyz> are registered with FBS Inc. (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2018. On August 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 28, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 28, 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 amendment to the Complaint on August 31, 2018.
Pursuant to the Complaint submitted in English and the registrar verification dated August 28, 2018 stating that Turkish is the language of the registration agreement of the disputed domain name, on August 28, 2018, the Center sent a request in English and Turkish that the Parties submit their comments on the language of the proceeding. On August 31, 2018, the Complainant submitted its request for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding.
The Center verified that the Complaint together with the amendment to 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 of the Complaint, and the proceedings commenced on September 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 24, 2018.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on October 1, 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, Novartis A.G. (“Novartis”) was created in 1966 from the merger of Ciba-Geigy and Sandoz. It originated as three companies; Geigy, a chemicals and dyes trading company founded in Basel in the mid-18th century; Ciba, a dye manufacturing company founded in 1859; and Sandoz, a chemical company founded in 1886. Today, it is a global healthcare company. It employs some 120,000 people of 140 nationalities and in 2017 the European Brand Institute ranked Novartis the most valuable healthcare brand in Europe and the second most valuable healthcare brand worldwide. Sandoz is a division of the Complainant and the Complainant owns a large portfolio of well-known trademarks for its generics and biosimilars division Sandoz. The Complainant owns many SANDOZ trademarks worldwide among including but not limited in Turkey which;
- Turkish Trademark numbered 80687, word: SANDOZ with a priority of January 27, 1994, registered on December 31, 1994 amongst others for pharmaceutical products.
- International Registration numbered 932226, word: SANDOZ registered amongst others for pharmaceutical products on June 25, 2007 and claiming protection for Antigua and Barbuda, Albania, Armenia, Azerbaijan, Bosnia Herzegovina, Belarus, Cyprus, Estonia, Ireland, Kenya, Kyrgyzstan, Kazakhstan, Lesotho, Lithuania, Latvia, Monaco, Moldova, Mozambique, Namibia, Portugal, Serbia, Sudan, Sierra Leone, San Marino, Syrian Arabic Republic, Eswatini, Tajikistan, Turkmenistan, Uzbekistan, Vietnam, and Zambia.
The Complainant also owns and operates various domain names which incorporate the SANDOZ trademark, such as <sandoz.com>. The Complainant also registered the domain name <sandoz.com.tr> in Turkey on July 20, 2005.
The disputed domain names <sandozmedikal.com> and <sandozmedikal.xyz> were registered by the Respondent on April 16, 2018 and it is observed that the disputed domain names were inactive, thus there was no content provided.
The Complainant asserts that the disputed domain name <sandozmedikal.com> is linked to a Turkish website assumedly provided by a company named Avrupa Medikal (meaning “Europe Medical”). The website is promoting dubious pharmaceuticals branded “Female Viagra” and “Lovegra” and attached the screenshots of the websites, the Panel visited the disputed domain name on October 30, 2018 and determined that the disputed domain name <sandozmedikal.com> automatically redirected to the website linked to the domain name <sandoz.com.tr> which has been operated by the Complainant. The Panel visited the disputed domain name on October 30, 2018 and determined that the disputed domain name <sandozmedikal.xyz> was inactive, thus there was no content provided. The website at the disputed domain name showed the following content: “This page cannot be displayed.”
Finally, the Parties conducted settlement negotiations however they were unable to reach a settlement, and then the Complainant informed the Center to reinstitute the proceeding.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain names.
The Complainant is of the opinion that the disputed domain names are confusingly similar to its SANDOZ trademark as the generic term “medikal” which means “medical” in English, is not sufficient to avoid confusing similarity between the disputed domain names and the Complainant’s trademarks.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant asserts that the Respondent has never used and does not intend to use the SANDOZ trademark in connection with a bona fide offering of goods and services as in the present case the Respondent is not promoting the Complainant’s products but some dubious, likely illegal pharmaceuticals of other commercial origin. This in itself prevents the finding of a bona fide offering of goods on behalf of the Respondent.
Finally, it is argued that the Respondent has registered and is using the disputed domain names in bad faith. The Complainant particularly argues that the Respondent must have been well aware of the Complainant’s well-known SANDOZ trademark, when registering the disputed domain names. The Complainant also argues that it is also evident from the Respondent’s use of the disputed domain name <sandozmedikal.com> that the Respondent registered and used the disputed domain names with the intention of attracting, for commercial gain, Internet users to the Website by creating a likelihood of confusion with the Complainant’s SANDOZ trademark as to the source, sponsorship, affiliation, or endorsement of its website. The Complainant also states that there is ample evidence that the domain name <sandozmedikal.xyz>, even if not currently used for a corresponding website, is part of a pattern of corresponding bad faith registrations on behalf of the Respondent.
The Respondent did not formally reply to the Complainant’s contentions. The Respondent sent an informal email communication in Turkish on October 3, 2018, after the notification of panel appointment, mentioning that the disputed domains were not used, he tried to delete the disputed domain names and he was ready to transfer them to the Complainant. However, the Parties have not reached a settlement.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
6.1. Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The registration agreement is in Turkish. The Complaint was filed in English. On August 31, 2018, the Complainant submitted a reply to the Center’s request regarding the language of proceeding that although the registration agreement is in Turkish, the Complainant requests that the language of proceeding be English as the Complainant, being a foreign entity, has no knowledge of the Turkish language. The Complainant did not have specific information on the language of the registration agreement and therefore, in the light of above considerations regarding the Respondent’s supposed knowledge of English as the header of the website shown in the browser indicates the content of the website in English as “Sandoz Medical, health and medical products imported from Europe”. Furthermore, the website pretends to be provided by “a leading health and medical company in Europe”. The Complainant decided to file the Complaint in English being a common language in global business and obviously also a language, in which the Respondent is addressing to customers.
The Complainant has invoked numerous UDRP panel decisions where the panels have accepted English as the language of the proceedings despite the registration agreement having a differing language where it could be presumed from the circumstances of the case that the respondent has knowledge of the English language, while the complainant is not capable of providing the complaint in the language of the registration agreement (e.g., Turkish) without unreasonable effort and costs.
In addition to Complainant’s submission regarding the language of the proceedings, it appears that the Respondent did not submit a Response nor did he formally object to English as the language of the proceeding.
Considering, all the above elements as well as the Panel’s authority to determine the language of the proceedings differing from the language of the registration agreement in accordance with the paragraph 11(a) of the Rule, the Panel considers that the appropriate language of the proceeding shall be English.
6.2. Substantive Issues
A. Identical or Confusingly Similar
The Panel finds that the disputed domain names are confusingly similar to SANDOZ trademark of the Complainant.
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights regarding the SANDOZ trademark. Although not identical, the disputed domains name fully incorporate the trademark SANDOZ. The disputed domain names are confusingly similar to the trademark SANDOZ as the addition of the term “medikal” which means “medical” in English, does not prevent a finding of confusing similarity with the Complainant’s trademark (see, e.g., Realm Entertainment Limited v. Atilim Kaymaz, WIPO Case No. D2017-1263). Section 1.8 of the WIPO Overview 3.0 makes clear that “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”. The disputed domain name <sandozmedikal.xyz> additionally differs from the Complainant’s trademarks by the addition of the generic Top-Level Domain (“gTLD”) “.xyz”. However, this does not eliminate the identity between the Complainant’s registered trademarks and the disputed domain name. In relation to the gTLDs, the WIPO Overview 3.0 further states:
“The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” (WIPO Overview 3.0, section 1.11)
Thus, the Panel finds that disregarding the gTLD “.xyz”, the disputed domain name is identical to the SANDOZ marks.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain names:
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent has been commonly known by the disputed domain names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s trademarks.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant’s contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1 and cases cited therein).
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain names within any of the “safe harbors” of paragraph 4(c) of the Policy.
In the light of the evidence submitted by the Complainant, and the Panel’s researches, e.g., trademark registration certificates, domain name registrations etc., it is clear to the Panel that the Complainant has earlier and lawful rights in the SANDOZ trademarks. Therefore, the Panel finds on the current record that the Complainant has proved rights in the SANDOZ trademarks and established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names for the purposes of the Policy.
The Panel is convinced that the Respondent must have been aware of the Complainant’s registered trademark, and that the Respondent has deliberately used the SANDOZ trademark in the disputed domain name <sandozmedikal.com> in order to divert Internet users seeking information on the Complainant to the Respondent’s dubious, likely illegal pharmaceuticals content website for the sole purpose of monetary gain. The Panel believes that this does not constitute a bona fide offering of services under the Policy.
In the circumstances the Respondent has not produced any evidence of its rights or legitimate interests in the disputed domain names and the Complainant is entitled to succeed on the second element of the test in Paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain names long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned a registration for the SANDOZ trademark. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain names (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).
Moreover, the Respondent has previously registered at least one other domain name incorporating the SANDOZ trademark (see Ingenico Group S.A. v. Nadir Dinc, WIPO Case No. D2018-0551). For the purposes of the third element of the Policy, such pattern of abusive conduct shall be further evidence of bad faith. The Panel notes that the Respondent is not actively using the disputed domain names (the disputed domain name <sandozmedikal.xyz> appears to be inactive). In this regard, the Panel is of the opinion that such lack of active use of the disputed domain names (so called “passive holding”), does not prevent a finding of bad faith. See section 3.3 of the WIPO Overview 3.0. Additionally, it is also evident from the Respondent’s use of the disputed domain name <sandozmedikal.com> that the Respondent registered and used the disputed domain names with the intention of attracting, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s SANDOZ trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location, which constitutes registration and use in bad faith pursuant to the Policy.
Finally, evidence of offers to sell the disputed domain names in settlement discussions is admissible under the UDRP, and is often used to show bad faith. This is because many cybersquatters often wait until a trademark owner files a complaint before asking for payment and because panels are competent to decide whether settlement discussions represent a good faith effort to compromise or a bad faith effort to extort. Also, the legal criteria for showing bad faith specify that an offer for sale can be evidence of bad faith, as decided in CBS Broadcasting, Inc. v. Gaddoor Saidi, WIPO Case No. D2000-0243; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; McMullan Bros., Limited, Maxol Limited, Maxol Direct Limited Maxol Lubricants Limited, Maxol Oil Limited Maxol Direct (NI) Limited v. Web Names Ltd, WIPO Case No. D2004-0078 (WIPO Overview 3.0, section 3.10). In this case, the Panel determines from the evidence of the settlement discussions that they represent a bad faith effort to extort by the Respondent.
The Panel concludes in these circumstances that the Respondent’s registration and use of the disputed domain names are in bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is satisfied.
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 <sandozmedikal.com> and <sandozmedikal.xyz> be transferred to the Complainant.
Date: November 2, 2018