WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novartis AG v. Whois Agent (651421573), Whois Privacy Protection Service, Inc. / Wis Inc, WIS INC
Case No. D2021-1521
1. The Parties
The Complainant is Novartis AG, Switzerland, represented by Dreyfus & associés, France.
The Respondent is Whois Agent (651421573), Whois Privacy Protection Service, Inc, United States of America (“US”) / Wis Inc, WIS INC, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <consentyx.com> is registered with eNom, Inc. dba Dynames.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2021. On May 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 18, 2021, 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 May 27, 2021 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 May 31, 2021 of receipt by Center.
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 June 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2021.
The Center appointed Marilena Comanescu as the sole panelist in this matter on July 15, 2021. 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 healthcare company created in 1996 and with history dating back more than 250 years. At the time of filing the Complaint, the Complainant’s products are available in about 155 countries worldwide reaching nearly 1 billion people, has about 126,000 employees of 145 nationalities, has more than 200 products in its clinical pipelines, and 500 clinical trials are in progress.
Cosentyx is one among the various pharmaceutical products manufactured by the Complainant, being a treatment for certain skin conditions including plaque psoriasis.
The Complainant holds trademark registrations for COSENTYX, such as the following:
- the US Trademark Registration No. 4979935 registered on June 14, 2016, filed on August 24, 2015, for COSENTYX (word), covering goods in class 5; and
- the European Union Trademark Registration No. 011383452 filed on November 14, 2012, and registered on March 27, 2013, for COSENTYX (word), covering goods in class 5.
The Complainant owns domain names that include the mark COSENTYX, such as <cosentyx.com> registered on November 6, 2012.
The disputed domain name <consentyx.com> was registered on November 14, 2016, and, according to the evidence provided in the Complaint, it was used to redirect to random websites of various content, including towards malicious websites that try to install malware on the user’s computers and one with commercial links and offering the disputed domain name for sale. Also, an email server is configured at the disputed domain name.
Prior to commencing the present proceedings, on March 29, 2021, the Complainant sent a cease-and-desist letter to both the Registrar and the company hosting the website under the disputed domain name. No settlement was concluded.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its widely known and highly distinctive COSENTYX trademark with a typo error (the additional letter “n”), the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith. The Complainant requests the transfer of the disputed domain name to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In view of the absence of a formal Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances.
A. Identical or Confusingly Similar
The Panel finds that the Complainant holds rights in the COSENTYX trademark.
The disputed domain name incorporates the trademark COSENTYX with an additional letter, “n” between the letters “o” and “s”. However, a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. See section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g.,”.com”, “.site”, “.info”, “.shop”) is typically disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0.
Given the above, the Panel finds that the disputed domain name is confusingly similar to the trademark COSENTYX, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant asserts that the Respondent does not hold any trademark rights, license, or authorization whatsoever to use the mark COSENTYX, that the Respondent is not commonly known by the disputed domain name, and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods or services.
Under the Policy, “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 theWIPO Overview 3.0.
The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.
There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name or that the Respondent made a bona fide offering of goods or services or a legitimate noncommercial use under the disputed domain name.
The Respondent has used the disputed domain name in connection with random redirection of Internet users to various websites, including towards malicious websites that try to install malware. UDRP panels have categorically held that the use of a domain name for illegal activity (such phishing, distributing malware, other types of fraud) can never confer rights or legitimate interests on a respondent. See section 2.13 of theWIPO Overview 3.0.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Complainant registered the COSENTYX mark since 2012 and such mark is disctinctive and widely known in its field. At least one previous UDRP panel has found that the Complainant’s mark has a strong reputation and is widely known through use in connection with a pharmaceutical product. See Novartis AG v. Zhengqinghua, Xiamen, WIPO Case No. D2015-2211.
The Complainant also promotes its COSENTYX mark and products under the domain name <cosentyx.com> since 2012.
The disputed domain name was registered in 2016 and reproduces the Complainant’s mark with a misspelling, an additional letter “n”.
From the above and the available record, the Panel finds that the disputed domain name was registered by the Respondent in bad faith, knowing the Complainant and targeting its trademark.
At the time of filing the Complaint, the disputed domain name redirects Internet users to random websites of various content, including towards malicious websites or commercial links offering the disputed domain name for sale. Furthermore, an email server is configured at the disputed domain name.
Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith.
The Respondent was using without permission the Complainant’s distinctive trademark in order to get traffic on its web portal and to misleadingly divert Internet users to third parties websites, and thus to obtain commercial gain from the false impression created with regard to a potential affiliation or connection with the Complainant. Such diversion of the Internet users looking for the Complainant’s official website to the Respondent’s website under the disputed domain name may also cause disruption of the Complainant’s business and utlimately may tarnish its trademark.
Further, the Respondent registered the disputed domain name under a privacy service, provided inaccurate contact information in the WhoIs, and refused to participate in the present proceedings in order to put forward any arguments in its favor. Having in view the other circumstances of this case, such facts constitute further evidence of bad faith behavior.
Previous UDRP panels have found that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark can, by itself, constitute a presumption of bad faith for the purpose of the Policy. See section 3.1.4 of the WIPO Overview 3.0.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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 <consentyx.com> be transferred to the Complainant.
Date: July 26, 2021