WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novartis AG v. Qiuhai Liang
Case No. D2021-1864
1. The Parties
The Complainant is Novartis AG, Switzerland, represented by Dreyfus & associés, France.
The Respondent is Qiuhai Liang, China.
2. The Domain Name and Registrar
The disputed domain name <sandozz.com> is registered with KQW, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2021. On June 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 16, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On June 16, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On June 17, 2021, 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 Center verified that the 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 in English and Chinese of the Complaint, and the proceedings commenced on June 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 19, 2021.
The Center appointed Rachel Tan as the sole panelist in this matter on July 26, 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 healthcare company based in Switzerland. It was created in 1996 through a merger of Ciba-Geigy and Sandoz. Its products are available in about 155 countries and reached nearly 1 billion people globally in 2017. Sandoz is the generic pharmaceuticals division of the Complainant. In particular, Sandoz entered China in 2007 and currently has around 800 employees. It is headquartered in Shanghai, and its production base is located in Zhongshan, Guangdong.
The Complainant is the owner of a range of trade mark registrations that comprise or contain the term “Sandoz”. For example, Chinese Registration No. 227512 for SANDOZ registered on May 30, 1985 in class 5 and International Registration No. 585033 for registered on March 31, 1992, designating, inter alia, China in classes 1, 2, 3, 5, 10, 17, 19, 29, 30, 31 and 32.
The Complainant is also the owner of the domain name <sandoz.com> which was registered on January 6, 1993.
The Respondent is Qiuhai Liang, China.
The disputed domain name was registered on March 10, 2021 and resolves to an active webpage featuring pornographic and online gambling content.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is virtually identical, or at least confusingly similar to the Complainant’s SANDOZ mark. The disputed domain name reproduces the Complainant’s SANDOZ mark in its entirety. The addition of the letter “z” is commonly referred to as “typosquatting” and creates virtually identical and/or confusingly similar marks to the Complainant’s mark. The Complainant’s SANDOZ mark has been considered as “well-known” or “famous” by previous panels. The disputed domain name is likely to confuse Internet users into believing that it will direct them to the Complainant’s official website. The extension “.com” should not be taken into consideration when examining the identity or confusing similarity between the Complainant’s mark and the disputed domain name.
The Complainant further alleges that the Respondent is not affiliated with the Complainant in any way, nor has he been authorized by the Complainant to use its mark, nor to seek registration of any domain name incorporating its mark. The Respondent is not commonly known by the disputed domain name or the name “Sandoz”. In the absence of any license or permission from the Complainant to use the widely known SANDOZ mark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed by the Respondent. The resolved webpage relates to pornographic and gambling content tarnishes the Complainant’s name. As a result, the Respondent fails to show any intention of noncommercial or fair use of the disputed domain name.
The Complainant finally asserts that it is unlikely that the Respondent was unaware of the Complainant when he registered the disputed domain name. The Complainant is well-known throughout the world including in China. The composition of the disputed domain name clearly demonstrates that the Respondent registered the disputed domain name based on the attractiveness of Complainant’s mark, for the purpose of diverting Internet traffic to his illegitimate website. The Complainant’s trade mark rights predate the registration date of the disputed domain name. The resolved webpage relating to adult and gambling content evidences the Respondent’s intention to misleadingly divert consumers by taking unfair advantage of the goodwill and reputation of the Complainant’s SANDOZ mark.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions.
In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement as used by the registrant for the disputed domain name is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding for the reasons summarized below.
(a) The Registrar’s website displays its registration agreements both in English and Chinese, so the language of the Registration Agreement of the disputed domain name may thus be English or Chinese;
(b) “The Complainant is located in France and has no knowledge of Chinese”. The Complainant would have to retain specialized translation services at a cost that is likely to be higher than the overall cost for this proceeding to proceed in Chinese. Consequently, the use of another language than English in the proceeding would impose a burden on the Complainant, which must be deemed significant in view of the cost for this proceeding;
(c) The disputed domain name includes only Latin characters which strongly suggests that the Respondent has knowledge of languages other than Chinese; and
(d) English is the primary language for international relations and it is one of the working languages of the Center.
It is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below.
(a) The Complainant is a company based in Switzerland. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses;
(b) The Respondent’s choice of Roman letters for the disputed domain name indicates some familiarity with the English language;
(c) Even if the Respondent does not possess a sufficient command of English to understand the Complaint, there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese of the Complainant’s request for English to be the language of the proceeding, but the Respondent did not protest against nor even respond to this request; and
(d) The Respondent has failed to participate in the proceeding even though the Center sent the notification of the Complaint in English and Chinese, and has been notified of its default.
The Complaint has been submitted in English. The Panel finds no foreseeable procedural benefit may be served by requiring Chinese to be used. Further, the proceeding may proceed expeditiously in English.
Accordingly, the Panel will proceed with issuing this decision in English.
6.2 Substantive Issues
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has adduced evidence to demonstrate its established rights in the SANDOZ mark, including in China where the Respondent is located.
The Panel notes the disputed domain name is comprised of the SANDOZ mark in its entirety and an additional letter “z”. The positioning of the SANDOZ mark is clearly recognizable in the disputed domain name. In cases where a domain name incorporates the entirety of a trade mark, 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 section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, the misspelling of the SANDOZ mark, namely the additional letter “z”, does not preclude a finding of confusing similarity between the SANDOZ mark and the disputed domain name. In cases where a domain name consists of a common, obvious, or intentional misspelling of a trade mark, the domain name will normally be considered confusingly similar to the relevant mark for purposes of UDRP standing. See section 1.9 of the WIPO Overview 3.0; Mediarex Enterprises Limited v. Yong Woon Chin, Webolutions, WIPO Case No. DCO2020-0014.
Lastly, it is permissible for the Panel to ignore the generic Top-Level Domain, in this case “.com”. See section 1.11.1 of the WIPO Overview 3.0.
Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
In circumstances where the Complainant possesses exclusive rights to the SANDOZ mark, whereas the Respondent seems to have no trade mark rights, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the burden of production shifts to the Respondent. See section 2.1 of the WIPO Overview 3.0.
The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “sandoz” in the disputed domain name. Further, there is no indication to show that the Respondent is commonly known by the disputed domain name or otherwise has rights or legitimate interests in the disputed domain name. The Complainant has not granted the Respondent a license or authorization to use the Complainant’s SANDOZ mark or register the disputed domain name. The Respondent is currently using the disputed domain name on a webpage wholly unrelated to the Complainant’s business since it features pornographic and gambling content. None of these circumstances indicates a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c) of the Policy.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant’s SANDOZ mark had been registered well before the registration of the disputed domain name, including in China where the Respondent is located. Through extensive use and advertising, the Complainant’s SANDOZ mark is known throughout the world. Search results using the key word “sandoz” on the search engines direct Internet users to the Complainant and its products, which indicates that a connection between the SANDOZ mark and the Complainant has been established. In addition, the fame and reputation of the SANDOZ mark has been recognised in prior UDRP decisions. As such, the Respondent either knew or should have known of the Complainant’s SANDOZ mark when registering the disputed domain name or has exercised “the kind of willful blindness that numerous panels have held support a finding of bad faith”. See eBay Inc. v. Renbu Bai, WIPO Case No. D2014-1693; Barclays Bank PLC v. Andrew Barnes, WIPO Case No. D2011-0874.
Section 3.1.4 of the WIPO Overview 3.0 states that “mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith”. In this case, the disputed domain name incorporates the Complainant’s famous SANDOZ mark creating a presumption of bad faith.
In addition, the disputed domain name is being used by the Respondent on a website featuring pornographic and online gambling content, which demonstrates the Respondent is making a commercial gain by attracting Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. See paragraph 4(b)(iv) of the Policy. Further, the pornographic materials on the website tarnish the SANDOZ mark and this has been found by previous UDRP panels to constitute evidence of registration and use of a domain name in bad faith. See section 3.12 of the WIPO Overview 3.0.
The Respondent has kept silent in the face of the Complainant’s allegations of bad faith. Taking into account these circumstances, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain name and, considering the Respondent’s lack of rights or legitimate interests, and by registering and using the disputed domain name as discussed above, the Panel is led to conclude that the disputed domain name was registered and is being used in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the third element under paragraph 4(a) of the Policy.
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 <sandozz.com> be transferred to the Complainant.
Date: August 9, 2021