WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Novartis AG v. Privacy service provided by Withheld for Privacy ehf / Morgan Edward

Case No. D2021-1596

1. The Parties

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

The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Morgan Edward, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <ritalinworld.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2021. On May 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 25, 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 26, 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.

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 June 24, 2021.

The Center appointed Jon Lang as the sole panelist in this matter on July 5, 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 based in Switzerland whose products reach more than 750 million people globally. It operates businesses with global scale and strong customer ties, focusing on innovative patented medicines, generics and eye care devices. Among its many products, RITALIN, first marketed in the 1950s, is indicated for the treatment of attention deficit hyperactivity disorder (ADHD) and narcolepsy in children and adults.

The disputed domain name <ritalinworld.com> (the “Domain Name”) was registered on March 17, 2021. It resolves to an online pharmaceutical shop named “Ritalin Online Shop” promoting the sale of various medications, including the Complainant’s product RITALIN. An e-mail server has been configured for the Domain Name.

Before starting the present proceedings, the Complainant made efforts to resolve matters amicably but without success.

The Complainant owns numerous RITALIN trademark registrations around the world, in particular: United States trademark RITALIN n° 71560984, filed on July 9, 1948 and registered on November 22, 1949; European Union trademark RITALIN n° 002712818, filed on May 27, 2002 and registered on January 8, 2004, and International trademark RITALIN n° 689728, protected inter alia in Iceland, Australia, China, Norway, Singapore, which was registered on February 13, 1998.

The Complainant operates a website at <ritalin.com> which was registered on March 6, 2000.

5. Parties’ Contentions

A. Complainant

The following is a summary of the main assertions of the Complainant.

The domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.

The Respondent has created a likelihood of confusion with the Complainant’s RITALIN trademark. It is likely that the Domain Name could mislead Internet users into thinking that it is, in some way, associated with the Complainant.

The Domain Name reproduces the Complainant’s trademark RITALIN with the addition of the generic term “world”. Far from preventing any likelihood of confusion, the term “world” increases the likelihood of confusion as it could mislead consumers into believing that the website to which the Domain Name resolves, is the official site of the Complainant for selling its products online, worldwide.

The Respondent has no right or legitimate interest in respect of the domain name.

The Respondent is neither affiliated with the Complainant nor authorized by the Complainant to use its trademark. The Respondent cannot claim prior rights or legitimate interest in the Domain Name as the RITALIN trademark precedes registration of the Domain Name.

There is no evidence that the Respondent is commonly known by the name RITALIN or the Domain Name.

The Respondent cannot assert that, before any notice of the dispute, it was using, or had made demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. As mentioned earlier, the Domain Name resolves to an online pharmaceutical shop named “Ritalin Online Shop” that operates using the Complainant’s trademark and promotes the sale of various medications, including the Complainant’s products, without authorization. This cannot be considered “use” in connection with a bona fide offering of goods and services.

The Respondent can also not assert that it has made, or that it is currently making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. On the contrary, the pointing of the Domain Name to a webpage linked to an online pharmaceutical shop evidences an intent to misleadingly divert consumers for commercial gain by taking unfair advantage of the goodwill and reputation of the Complainant’s RITALIN trademark.

The Respondent is not accurately disclosing its relationship with the trademark by falsely suggesting it is the trademark owner and that its website is an official website.

The Respondent registered the Domain Name with a privacy shield service to hide its identity and to prevent the Complainant from contacting it. Such behaviour highlights the fact that the Respondent has no rights or legitimate interests in respect of the Domain Name.

An e-mail server has been configured at the domain name and thus there might be a risk that the Respondent is engaged in a phishing scheme.

The Domain Name is not used in any type of legitimate business or services.

The domain name was registered and used in bad faith - registration in bad faith.

It is implausible that the Respondent was unaware of the Complainant when registering the Domain Name given that the Complainant is well known throughout the world. Indeed, the composition of the Domain Name, entirely reproducing the widely-known RITALIN trademark with the addition of the generic term “world”, confirms that the Respondent was aware of the Complainant and its trademark. It is likely that the Respondent registered the Domain Name based on the notoriety and attractiveness of the Complainant’s trademark to divert internet traffic to its website.

Bad faith can be found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to that trademark suggests opportunistic bad faith. Given the reputation of the RITALIN trademark, registration in bad faith can be inferred.

The Complainant’s RITALIN trademark registrations significantly predate the registration date of the Domain Name. Knowledge of a complainant’s intellectual property rights, at the time of registration of a disputed domain name, can establish bad faith registration.

Pursuant to Section 2 of the ICANN Policy, when a domain name is registered, the registrant represents and warrants to the registrar that, to his knowledge, the registration will not infringe the rights of any third party. Thus, it was the Respondent’s duty to verify that registration of the Domain Name would not infringe the rights of any third party. However, a trademark search for RITALIN would have revealed the existence of the Complainant and its trademark. In any event, a Google search or a search on any other search engine using the keyword “RITALIN” demonstrates that all initial results relate to the Complainant’s products or news.

The Respondent registered the Domain Name through a privacy shield service to hide its identity and contact details, thus preventing the Complainant from contacting it. Deliberate concealment of identity and contact information may in itself indicate registration in bad faith.

The domain name was registered and used in bad faith - use in bad faith.

The Respondent is using the Domain Name to intentionally attract Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the services offered on the Respondents’ website. Given that the Domain Name is confusingly similar to the Complainant’s RITALIN trademark, a likelihood of confusion is presumed, and such confusion will inevitably result in a diversion of Internet traffic.

The sale of Ritalin is subject to specific conditions and cannot be sold without a prescription. Moreover, the name cannot be used to promote the selling of drugs that are not linked to the Complainant.

It is more likely than not, that the Respondent’s primary motive in registering and using the Domain Name was to capitalize on or otherwise take advantage of the Complainant’s trademark rights. Hence, the Respondent must have been aware of the existence of the RITALIN trademark at the time of registration of the Domain Name. Given the notoriety of the RITALIN trademark and the website set up by the Respondent, it is averred that the Respondent deliberately attempted to create a likelihood of confusion among Internet users and/or to free-ride on the goodwill of the RITALIN trademark for commercial gain.

Moreover, given that an e-mail server has been configured for the Domain Name, there might be a risk that the Respondent is engaged in a phishing scheme. The use of an email address with the Domain Name presents a significant risk that the Respondent could try and steal valuable information, such as credit card details, from the Complainant’s clients or employees.

Finally, given the Complainant’s goodwill and renown worldwide, and the nature of the Domain Name which is confusingly similar to the Complainant’s trademark, it is not possible to conceive of plausible circumstances in which the Respondent could legitimately use the Domain Name given that it would invariably result in a misleading diversion and the taking of unfair advantage of the Complainant’s rights.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.

A. Identical or Confusingly Similar

The Complainant clearly has rights in the RITALIN trademark. Ignoring the generic Top-Level Domain (“gTLD”) “.com” (as the Panel may do for comparison purposes), the Domain Name comprises the RITALIN trademark followed by the word “world”. As the RITALIN trademark and Domain Name are not identical, the issue of confusing similarity must be considered. Application of the confusing similarity test under the UDRP typically involves “a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“the WIPO Overview 3.0”)). Section 1.7 of the WIPO Overview 3.0 goes on to provide “[…] in cases where a domain name incorporates the entirety of a trademark, […] the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.

The RITALIN trademark is incorporated in its entirety and clearly recognizable within the Domain Name. The addition of the word “world” does not prevent the RITALIN trademark from being recognizable within the Domain Name. The addition of common, dictionary, descriptive or negative terms does not usually prevent a finding of confusing similarity and here the addition of the word “world” certainly does not do so. Section 1.8 of the WIPO Overview 3.0.

The Panel finds that the Domain Name is confusingly similar to the RITALIN trademark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.

B. Rights or Legitimate Interests

By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.

Accordingly, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.

A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Here, however, the Respondent is not known by the Domain Name and has used the confusingly similar Domain Name to attract Internet users to its website, being an online pharmaceutical shop named “Ritalin Online Shop” which promotes the sale of various medications, including the Complainant’s product RITALIN but also third party pharmaceutical products.

These circumstances do not suggest a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Indeed, the very purpose in the Respondent choosing the Domain Name it did, appears to have been to deliberately create a false impression of association with the Complainant.

The Respondent has not come forward with a Response or taken any other action to address the Complaint, no doubt because there is unlikely to be anything it could say that would justify its registration and use of the Domain Name in the manner described.

Moreover, the Panel finds that the Domain Name carries a risk of implied affiliation (Section 2.5.1 of the WIPO Overview 3.0).

There is no evidence before this Panel to suggest that the Respondent might have rights or legitimate interests in the Domain Name. The evidence suggests the contrary.

Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a number of non-exclusive scenarios which may evidence a respondent’s bad faith. They include, for instance, a respondent registering a domain name in order to prevent an owner of the trademark or service mark to which it is said to be confusingly similar or identical, from reflecting the mark in question in a corresponding domain name (provided that the respondent has engaged in a pattern of such conduct). A respondent registering a domain name primarily for the purposes of disrupting the business of a competitor is another scenario, as is a respondent intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it.

Since this latter scenario appears to reflect the circumstances in this case, there is no need to go on to consider other paragraph 4(b) scenarios. This is particularly so given that at a more general level, it seems clear that the Respondent has sought to take unfair advantage of and/or to abuse the Complainant’s RITALIN trademark and such behaviour is broadly understood to constitute bad faith for the purposes of the Policy (regardless of which, if any, paragraph 4(b) scenarios might be relevant).

In all the circumstances, the Panel finds that, for the purposes of the Policy, there is evidence of registration and use of the Domain Name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <ritalinworld.com> be transferred to the Complainant.

Jon Lang
Sole Panelist
Date: July 12, 2021