WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Novartis AG v. liubo shi, liu bo shi

Case No. D2019-2122

1. The Parties

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

The Respondent is liubo shi, liu bo shi, China.

2. The Domain Name and Registrar

The disputed domain name <buyritalinnow.com> is registered with Xin Net Technology Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2019. On August 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 4, 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 September 4, 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 in English on September 6, 2019.

On September 4, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on September 5, 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 in English and Chinese, and the proceedings commenced on September 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 30, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 1, 2019.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on October 8, 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 global pharmaceutical company, headquartered in Switzerland. The Complainant was founded through a merger of two pharmaceutical companies in 1996, and commercializes a drug for attention deficit hyperactivity disorder (ADHD) and narcolepsy in children and adults under the trademark RITALIN.

The Complainant owns a trademark portfolio protecting RITALIN (word marks), including, amongst others, the following trademark registrations: International trademark registration number 689728, registered on February 13, 1998, and designating, amongst others, the Respondent’s home jurisdiction China; and European Union trademark registration number 2712818, registered on January 8, 2004. The disputed domain name was registered on July 9, 2019, and is linked to a redirection page, where Internet users are redirected to the registration page of an Internet platform offering gambling services and lotteries.

5. Parties’ Contentions

A. Complainant

The Complainant essentially contends that the disputed domain name is confusingly similar to its trademark for RITALIN, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.

The Complainant contends that its trademarks are famous and well-regarded in the pharmaceutical sector, and provides evidence of its marketing materials, including the contents of its official website. The Complainant also provides a number of prior UDPR decisions in which the respective UDRP panels have accepted that the Complainant’s trademark RITALIN is a well-known trademark (see for instance Novartis AG v. Radu Luca, WIPO Case No. D2017-0793 and Novartis AG v. Leloy Nuijens / Whois Privacy Corp., WIPO Case No. D2016-0487). Moreover, Complainant provides evidence that the disputed domain name is linked to an active registration webpage of an Internet platform offering gambling services and lotteries. The Complainant essentially contends that such use does not confer any rights or legitimate interests in respect of the disputed domain name, and constitutes registration and use in bad faith.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

6.1. Preliminary Issue: Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement. However, the Panel is given the authority to determine a language of the proceeding other than the language of the Registration Agreement, taking into account the circumstances of every individual case.

The Complainant states in its Complaint that, to the best of its knowledge, the Registration Agreement is likely to be written in Chinese. Nevertheless, the Complainant filed its Complaint in English, including a motivated request that the language of the proceeding be English. On September 4, 2019, the Center sent a communication to both Parties, in English and Chinese, regarding the language of the proceeding. On September 5, 2019, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

The Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of the proceeding be English, the lack of comment on the language of the proceeding and the lack of response on the merits of the Respondent (the Panel notes that the Respondent had the opportunity to put forward arguments in either English or Chinese); the fact that the disputed domain name is in English, containing the English words “buy” and “now”, from which the Panel deducts that the Respondent is able to understand and communicate in English, and targets an English-speaking public; and the fact that Chinese as the language of the proceeding could lead to unwarranted delays and costs for the Complainant. In view of all these elements, the Panel rules that the language of the proceeding shall be English.

6.2. Discussion and Findings on the merits

The Policy requires the Complainant to prove three elements:

(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 disputed domain name has been registered and is being used in bad faith.

Based on the evidence and arguments submitted, the Panel’s findings are as follows:

A. Identical or Confusingly Similar

The Panel finds that the Complainant has shown that it has valid rights in the trademark RITALIN based on its intensive use and registration of the same as a trademark in several jurisdictions, incidentally commencing many years prior to the registration of the disputed domain name.

Moreover, as to confusing similarity, the disputed domain name consists of the Complainant’s registered trademark RITALIN in its entirely, combined with the descriptive words “buy” and “now”. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, states: “[…] 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 UDRP standing” (see also Wal-Mart Stores, Inc. v Richard McLeod d/b/a For Sale WIPO Case No. D2000-0662). The Panel concludes that the disputed domain name contains the entirety of the Complainant’s trademark, as its only distinctive feature. The addition of the merely descriptive elements “buy” and “now” does not avert the confusing similarity between the disputed domain name and the Complainant’s trademark.

Accordingly, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s registered trademark, and that the Complainant has satisfied the requirements of the first element under the Policy.

B. Rights or Legitimate Interests

The Complainant has demonstrated that the Respondent is not an authorized reseller, service provider, licensee or distributor, and is not making legitimate noncommercial use or fair use of the Complainant's trademarks. To the contrary, the redirection of the disputed domain name to a webpage where Internet users are requested to sign up for a commercial gambling platform, shows the Respondent’s intention to misleadingly divert consumers for commercial gain, by taking unfair advantage of the goodwill and reputation of the Complainant’s trademarks for RITALIN. The Panel therefore considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply. Furthermore, the Respondent is not commonly known by the disputed domain name. The Panel also notes that no evidence or arguments have been submitted by the Respondent in reply. The Panel therefore rules that the Complainant has satisfied the requirements for the second element under the Policy.

C. Registered and Used in Bad Faith

The registration of the disputed domain name, which is confusingly similar to the Complainant’s trademarks, is clearly intended to mislead and divert consumers away from the Complainant’s official website, to the disputed domain name. Given the distinctiveness and fame of the Complainant’s trademarks, including in the Respondent’s home jurisdiction China, as well as the common meaning of the words constituting the disputed domain name (i.e. referring to a website where consumers can immediately buy RITALIN-branded products), the Panel holds that the registration of the disputed domain name was obtained in bad faith. Moreover, even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned registered trademarks in RITALIN and used these extensively. In the Panel’s view, the preceding elements clearly establish the bad faith of the Respondent in registering the disputed domain name.

As to use of the disputed domain name in bad faith by the Respondent, the website linked to the disputed domain name currently redirects Internet users to a webpage where they are requested to sign up for a commercial gambling and lottery platform. The Panel holds that this means that the Respondent has intentionally attempted to attract Internet users, for commercial gain, to the disputed domain name, by creating a likelihood of confusion with the Complainant’s trademarks. The Panel holds that this is clear evidence that the Respondent is using the disputed domain name in bad faith (see also WIPO Overview 3.0, section 3.1).

Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under the Policy.

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 <buyritalinnow.com> be transferred to the Complainant.

Deanna Wong Wai Man
Sole Panelist
Date: October 20, 2019