WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Novartis AG v. Sergei Gruzdov

Case No. D2019-2033

1. The Parties

The Complainant is Novartis AG, Switzerland, represented by Dreyfus & associés, France.

The Respondent is Sergei Gruzdov, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <ritalin.site> is registered with REG.RU LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2019. On August 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 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 August 22, 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 August 26, 2019.

On August 22, 2019, the Center transmitted an email in English and Russian to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on August 23, 2019. The Respondent did not comment on the language of the proceeding.

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 August 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 19, 2019.

The Center appointed Assen Alexiev as the sole panelist in this matter on October 3, 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 was created in 1996 through the merger of the companies Ciba-Geigy and Sandoz. It is among the world’s top pharmaceutical companies, and its products are available in 155 countries.

One of the Complainant’s pharmaceutical products is RITALIN. It is indicated for the treatment of attention deficit hyperactivity disorder and narcolepsy in children and adults, and was first marketed in the 1950’s.

The Complainant is the owner of the following trademark registrations for the sign RITALIN (the “RITALIN trademark”):

- European Union trademark RITALIN with registration No. 002712818, registered on January 8, 2004 for goods in International Class 5; and

- International trademark RITALIN with registration No. 689728, registered on February 13, 1998 for goods in International Class 5.

The Complainant is the owner of the domain name <ritalin.com>, registered on March 6, 2000.

The disputed domain name was registered on June 20, 2019. It resolves to a Russian language website that offers for sale many different medicines, including RITALIN.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to the RITALIN trademark in which the Complainant has rights, as it reproduces the trademark in its entirety. As a result, Internet users may believe that the disputed domain name is affiliated or operated by the Complainant. The disputed domain name also resolves towards a webpage which is giving information about the Complainant’s RITALIN drugs and which is proposing to sell these drugs online.

According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, as the Respondent is not affiliated with the Complainant and has not been authorized by the Complainant to seek registration of any domain name incorporating the RITALIN trademark. The Complainant adds that the Respondent has no prior rights or legitimate interests in the disputed domain name, since the registration of the RITALIN trademark preceded the registration of the disputed domain name for years. The Complainant also points out that the Respondent has not made any use of the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is offering RITALIN products for sale without prescription, thus taking unfair advantage of the Complainant’s rights, by capitalizing on the reputation and goodwill of the Complainant’s RITALIN trademark and misleadingly diverting Internet users to its own website. The Complainant also draws the attention to the fact that email servers have been configured on the disputed domain name and thus there might be a risk that the Respondent is engaged in a phishing scheme.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant points out that it is widely known throughout the world, and a simple search via any search engine using the keyword RITALIN demonstrates that all first results relate to the Complainant or to its services. According to the Complainant, it is therefore impossible that the Respondent did not have the RITALIN trademark in mind when registering the disputed domain name. Rather, the Respondent chose the disputed domain name to take unfair advantage of the Complainant's goodwill and reputation by intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's RITALIN trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

The Complainant points out that the disputed domain name resolves to a website offering RITALIN products for sale without prescription, and the Respondent is thus trying to take advantage of the Complainant’s trademark rights, by creating an initial interest confusion. The Complainant also submits that email servers have been configured on the disputed domain name and there might be thus a risk that the Respondent is engaged in a phishing scheme aimed at stealing valuable information such as credit cards numbers from the Complainant’s clients or employees.

The Complainant submits that on June 25, 2019, it sent a cease-and-desist letter to the Respondent. The Respondent replied but its response was not conclusive.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

In its July 2, 2019 response to the Complainant’s cease and desist letter of June 25, 2019, the Respondent stated in English: “Our site is informational and does not sell drugs, the domain name was not occupied and does not mean the name of your brand.”

6. Discussion and Findings

6.1. Procedural issue – Language of the proceedings

In respect of the language of the proceedings, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 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, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

The Complainant submitted its Complaint in the English language, and requests the proceeding to be held in English. The Complainant argues that the translation of the Complaint into Russian would unreasonably burden the Complainant and delay the proceedings. The Center has sent all its messages to the Respondent in both English and Russian, and has invited the Respondent to express its views on the language of the proceeding. The Respondent has not responded to this invitation and has thus not objected to the Complainant’s request that the proceedings be held in English. In addition, the case file shows that the Respondent has responded to the Complainant’s cease and desist letter in English. This shows that the Respondent can communicate in English.

Taking all the above circumstances into account, the Panel accepts that the Respondent would not be disadvantaged if the language of the proceeding is English, and is satisfied that using the English language in this proceeding would be fair and efficient.

Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English. At the same time, the Panel will take into account all Russian language evidence in the case file.

6.2. Substantive Matters

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …”

The Respondent has however not submitted a Response and has thus not disputed the Complainant’s statements and evidence in this proceeding.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the RITALIN trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.site” gTLD section of the disputed domain name.

The relevant part of the disputed domain name is therefore the element “ritalin”. It is identical to the RITALIN trademark.

In view of the above, the Panel finds that the disputed domain name is identical to the RITALIN trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not affiliated with the Complainant and has not been authorized by the Complainant to seek registration of any domain name incorporating the RITALIN trademark, and that the Respondent has no prior rights or legitimate interests in the disputed domain name, since the registration of the RITALIN trademark preceded the registration of the disputed domain name for years. The Complainant also points out that the Respondent has not made any use of the disputed domain name in connection with a bona fide offering of goods or services, but is offering RITALIN products for sale without prescription. The Complainant also draws the attention to the fact that email servers have been configured on the disputed domain name and thus there might be a risk that the Respondent is engaged in a phishing scheme. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not alleged that is has rights and legitimate interests in the disputed domain name and has not disputed the statements of the Complainant and the evidence provided by it. In its communication to the Complainant prior to the commencement of this proceeding, the Respondent has stated that its website is informational and does not offer drugs for sale, and that the disputed domain name was free for registration and does not refer to the Complainant’s RITALIN trademark.

The Panel is not convinced by the Respondent’s statements, as they are contradicted by the evidence in the case file. The disputed domain name is identical to the RITALIN trademark. As summarized in section 2.5.1 of the WIPO Overview 3.0, a domain name that is identical to a complainant’s trademark carries a high risk of implied affiliation. Previous UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. The disputed domain name resolves to an active website that offers numerous different medicines for sale, including RITALIN. It is not clear from the evidence in the case file whether this product originates from the Complainant.

In view of the above, the Panel is satisfied that it is more likely than not that the Respondent, being aware of the goodwill of the RITALIN trademark, has registered and used the disputed domain name in an attempt to exploit the trademark’s goodwill by impersonating the Complainant or suggesting sponsorship or endorsement by the latter, and to attract Internet users to the Respondent’s website and to the numerous different pharmaceutical products offered on it for sale for commercial gain without the consent of the Complainant. In the Panel’s view, this conduct of the Respondent does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use, and therefore does not give rise to rights and legitimate interests of the Respondent in the disputed domain name.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(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 website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

As discussed above, the disputed domain name is identical to the RITALIN trademark, registered for goods in International Class 5, including medicines, and resolves to an active website that offers numerous different medicines for sale, including RITALIN. The Complainant contends that the Respondent has not received any authorization for its activities by the Complainant, and the Respondent does not dispute the statements of the Complainant.

Taking the above into account, the Panel accepts that the Respondent has registered and used the disputed domain name with knowledge of the Complainant and targeting the RITALIN trademark. It is likely that by creating a likelihood of confusion with the Complainant’s RITALIN trademark, the Respondent has attempted to attract traffic to the disputed domain name and confuse Internet users that they are reaching an online location of the Complainant and then offer them for sale various pharmaceutical goods, including RITALIN, for commercial gain.

Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith.

7. Decision

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 <ritalin.site> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: October 7, 2019