WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novartis AG v. Brenda Grell, A.J. August Fashion Wear
Case No. D2019-0564
1. The Parties
The Complainant is Novartis AG of Basel, Switzerland, represented by Dreyfus & associés, France.
The Respondent is Brenda Grell, A.J. August Fashion Wear of Anguilla, United States of America.
2. The Domain Name and Registrar
The disputed domain name <getvoltaren.com> is registered with Eranet International Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2019. On March 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 28, 2019, 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 April 3, 2019 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 April 8, 2019.
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 April 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2019.
The Center appointed J. Nelson Landry as the sole panelist in this matter on May 13, 2019. 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 company, based in Swizerland, which provides innovative patented medicines, generics and eye care devices and commercializes its products in class 5 in about 155 countries to meet the needs of patients. It was created in 1996 through the merger of Ciba-Geigy and Sandoz, which predecessor companies trace back more than 250 years. The company enjoys a worldwide reputation and owns numerous international trademarks, namely VOLTAREN registered, in 1958, the VOLTAREN logo in 2009 and also the European Union VOLTAREN Trademark registered in 2007. All of said VOLTAREN trademarks have been used in association with pharmaceutical products in class 5 since these respective registration dates. Furthermore, the Complainant does own and operate its activities through various domain names; “.com” (1997), “.net” (2012), “.org” (2007), “.info” (2001), “.biz” (2015) and “.us” (2002) duly registered.
The Complainant became aware of the disputed domain name in the fall of 2018 and found that said disputed domain name was registered on April 19, 2017, which public registration records did not disclose the complete city and country name address of the Respondent. The Center contacted de Registrar to obtain additional information and was finally successful in obtaining the information and informed the Complainant in a request to amend the Complainant accordingly.
The disputed domain name resolves to a website, which provides elaborate and detailed information about “Voltaren” drugs. On December 10, 2018, the Complainant sent a cease and desist letter to the Respondent to which no reply was obtained from the said Respondent.
The Complainant affirms that it has never been affiliated with the Respondent and has never authorized said Respondent to use any of its VOLTAREN Trademarks or to seek registration of the disputed domain name.
5. Parties’ Contentions
The Complainant represents that the disputed domain name is confusingly similar to its international and European VOLTAREN Trademarks which are registered around the world. While the disputed domain name includes the Complainant’s entire VOLTAREN Trademark with the generic term “get”, the Complainant represents that the addition of a descriptive, geographical or other terms does not prevent a finding of confusing similarity which, Complainant claims, confusing similarity is present in this case. See Pandora A/S v. Domain Admin, Privacy Protect LLC (PrivacyProtect.org) / Robin Puckett), WIPO Case No. D2018-0586. The Complainant concludes that the generic Top-Level Domain (“gTLD”) “.com” is irrelevant and insufficient to avoid a finding of confusing similarity.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name in affirming that the Respondent is not in any way affiliated with the Complainant nor authorized to use any of its VOLTAREN Trademarks nor to seek registration of the disputed domain name or any domain name incorporating said VOLTAREN Trademark.
The Complainant further represents that the Respondent is not commonly known by the disputed domain name nor by the name “Voltaren”. The Complainant claims the benefit of prior UDRP decisions where UDRP panels found that “a registrant has no legitimate interest in a domain name that is similar to a pharmaceutical manufacturer’s mark and that is being used to direct consumers to an on-line pharmacy”; see WIPO Case No. D2004-0784, Pfizer Inc. v. jg a/k/a Josh Green. The Complainant concludes its representation of absence of rights or legitimate interests in consideration of its good will and renown worldwide and the confusing similarity of the disputed domain name to its well-known VOLTAREN Trademark, it is not possible to conceive a plausible circumstance in which the Respondent could legitimately use the disputed domain name since it would result in misleading diversion and taking unfair advantage of the Complainant’s rights.
The Complainant represents that the Respondent has registered the disputed domain name and is using said disputed domain name in bad faith. The Complainant submits that bad faith can be found where the Respondent knew or should have known of the Complainant’s VOLTAREN Trademark and registered the disputed domain name in which he had no rights or legitimate interests. See Research In Motion Limited v. Privacy Locked LLC/Nat Collocot, WIPO Case No. D2009-0320.
The Complainant further represents that in view of its well-known VOLTAREN Trademark with several international registrations, “it is implausible that Respondent was unaware of the Complainant when he registered the disputed domain name”. The Complainant adds that the disputed domain name <getvoltaren.com> which reproduced the Complainant’s highly distinctive VOLTAREN Trademark which has no regular meaning and associating the said VOLTAREN Trademark to a webpage commercializing the VOLTAREN drug clearly demonstrate the Respondent’s intention to rely on the attractiveness of the Complainant’s VOLTAREN Trademark to divert Internet traffic to its website as it has been held by prior panels that such connection of a well-known trademark in a domain name suggests opportunistic bad faith. See LEGO Juris A/S store24 hour, WIPO Case No. D2013-0091. Furthermore, the Complainant submits that in view of the Complainant VOLTAREN’s Trademark registration predating considerably the registration of the disputed domain name, as well as its extensive international use, such facts as recognized by previous panels established the knowledge of the Complainant’s Trademark rights when the Respondent registered the disputed domain name in bad faith. See Alstom v. Domain Investments LLC, WIPO Case No. D2008-0287.
The Complainant concludes said presumed knowledge of the Complainant’s VOLTAREN Trademark in referring to the use of Google search or other search engine using the term “voltaren” to find the Complainant’s VOLTAREN Trademark and finally, the high level of notoriety of the Complainant to believe that the Respondent based the registration of the disputed domain name on the notoriety and attractiveness of the Complainant’s VOLTAREN Trademark to divert Internet traffic to its website.
The Respondent 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;
(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 the “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 A.J. August Fashion Wear, although no civic address is provided.
A. Identical or Confusingly Similar
In cases where a domain name incorporates the entirety of a trademark, or when 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 trademark for the purpose of the Policy. See section 1.7 of the WIPO Overview of WIPO Panel Views on the selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, the applicable gTLD in a domain name “.com” is considered a standard technical registration requirement and as such is generally disregarded under the first element confusion similarity test. See section 1.11.1 of the WIPO Overview 3.0.
The Complainant indisputably has rights in the registered Trademark VOLTAREN. The disputed domain name incorporates this Trademark in its entirety with the addition of the term “get” which does not diminish the risk of confusion with the Trademark but rather invites attention to the visitor to the Trademark term itself clearly recognizable, such addition does not diminish the confusion as held in the Pandora case cited by the Complainant and adopted by the Panel and the gTLD “.com” which is irrelevant herein shall be disregarded. Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and the first element of the Policy under paragraph 4(a) (i) has been satisfied.
B. Rights or Legitimate Interest
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 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 interest 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 has not been licensed to use the Complainant Trademark VOLTAREN, and there is no evidence applicable under paragraph 4(c) of the Policy 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 purpose.
The Panel determines that the Respondent was fully aware of the VOLTAREN Trademark of the Complainant and did not have any legitimate products associated therewith.
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, its promotion, its extensive presence over the Internet and available in so many countries, 155 as represented in the Complaint and confirmed on the Complainant’s website visited by the Panel, website countries wherein most of them the said Trademark is registered. The Panel also observed that both the Complainant VOLTAREN product and the Respondent’s “Getvoltaren” product offered on their respective website are a composition of “diclofenac sodium” which can be used to cure “pain arthritis and osteoarthritis” also claimed by the Complainant on its website under the “voltaren” section. The representations of specific information about the pharmaceutical character of the “Getvoltaren” product promoted by the Respondent on its website in association with the disputed domain name clearly demonstrate the specific and detailed knowledge by the Respondent of the VOLTAREN Trademark and details of the related pharmaceutical product of the Complainant when the disputed domain name was selected and registered.
The Panel in its visit on the Respondent’s website at the address of the disputed domain name examined the active website’s content of 4 sections on at least 4 pages, noted that at the beginning of the first section, “home”, the disputed domain name is mentioned along with the illustration of a rectangular package bearing the VOLTAREN Trademark with the logo addition corresponding to the second international registered VOLTAREN Trademark of the Complainant. (see logo illustration in section 4 herein above). In a careful observation of the content of the other three sections, “About us”, “Contact us” and “Voltaren Gel”, the Panel also noted numerous sections where use is made of the VOLTAREN Trademark alone in the section “all about Voltaren” and further noted that the generic name “diclofenac”, “diclofenac sodium” and “diclofenac gel” a main component of the said Complainant drug, is frequently used by the Respondent to describe is competitive product, thus confirming that both Complainant and Respondent products have the same basic chemical product and the awareness of the existence and composition of the VOLTAREN drug of the Complainant by the Respondent.
The Panel concludes that in view of this evidence the Respondent has been active in using the disputed domain name in bad faith in intentional attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s VOLTAREN Trademark as to the source, sponsorship, affiliation of its website or of a product on its website.
The Panel notes further relevant to use in bad faith by the Respondent in particular of the world reputation of the Complainant’s VOLTAREN Trademark, its full reproduction along with the prefix “get” in the disputed domain name, the absence of reply to the cease and desist letter and of Response to the Complaint and finally, the Respondent’s concealment of its identity, lead the Panel to conclude, with the support or earlier panel decisions cited herein that the disputed domain name was registered and is still being promoted and used in bad faith subsequent to the reception of the Complainant’s cease and desist letter and Complaint.
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 <getvoltaren.com> be transferred to the Complainant.
J. Nelson Landry
Date: May 27, 2019