WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novartis AG v. Contact Privacy Inc. Customer 0155846167/ Milen Radumilo
Case No. D2021-1881
1. The Parties
The Complainant is Novartis AG, Switzerland, represented by Dreyfus & Associés, France.
The Respondent is Contact Privacy Inc. Customer 0155846167, Canada / Milen Radumilo, Romania.
2. The Domain Name and Registrar
The disputed domain name <entrestocentral.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 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 15, 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 June 16, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on June 17, 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 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2021.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on July 27, 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, which provides solutions to address the evolving needs of patients worldwide. It was created in 1996 through a merger of Ciba-Geigy and Sandoz. Novartis and its predecessor companies trace roots back more than 250 years.
The company enjoys a worldwide reputation and owns numerous international trademarks, as such:
- United States trademark ENTRESTO No. 86607963, filed on April 23, 2015 and registered on March 29, 2016.
- International trademark ENTRESTO No. 1102109, registered on November 29, 2011, designating inter alia Australia, China, Japan, Singapore, Russia;
- European Union trademark ENTRESTO No. 010448835, registered on March 26, 2012.
The Complainant operates at the domain name <entresto.com> registered on May 10, 2011 to inform about its product ENTRESTO and provides patient support through the “Entresto Central Patient Support Program”.
The Complainant has made reasonable efforts to solve the dispute amicably, contacting both the Registrar and the Host company since the Respondent was using a proxy service. The Registrar did not answer while the Host company referred to the UDRP.
The disputed domain name was registered on September 30, 2019 and resolves to a parking page displaying commercial links of various content. The disputed domain name is also configured with an email server.
The Panel notes that the Respondent has been Respondent in numerous UDRP panel decisions in the past. See, for example, Littlethings, Inc. v. Milen Radumilo, WIPO Case No. D2017-0745; Association des Centres Distributeurs E. Leclerc - A.C.D. Lec v. Perfect Privacy, LLC / Milen Radumilo, WIPO Case No. D2019-2541; Groupe IRCEM v. Perfect Privacy, LLC / Milen Radumilo, White & Case, WIPO Case No. D2018-2330; Carrefour v. Milen Radumilo / Privacy Inc. Customer 0151725578, WIPO Case No. D2018-2203; Teva Pharmaceutical Industries Limited v. Milen Radumilo, WIPO Case No. D2020-0658; American Airlines, Inc. v. Super Privacy Service LTD c/o Dynadot / Milen Radumilo, WIPO Case No. D2021-1242.
5. Parties’ Contentions
The disputed domain name is confusingly similar to the Complainant’s trademark ENTRESTO. Previous panel decisions have agreed that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s trademark. Further, the Complainant supports its allegations on the basis of previous decisions where it has been held that the addition of generic terms to a well-known trademark does not prevent the risk of confusion between the Complainant’s trademark and the disputed domain name.
The generic Top-Level-Domain (“gTLD”) “.com” is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademarks and the disputed domain name.
With regard to the second element, the Complainant asserts that the Respondent is neither known by the name “entresto”, nor in any way affiliated with the Complainant, nor authorized or licensed to use ENTRESTO trademark, or to seek registration of any domain name incorporating the aforementioned trademark.
Besides, the Complainant points out that panels have found that “domain names identical to a Complainant’s trademark carry a high risk of implied affiliation”.
Further, the Complainant alleges that the disputed domain name redirects to a pay-per-click (“PPC”) site, which are likely to generate revenues and fraudulent websites and, therefore, it cannot be inferred that the Respondent is making a legitimate noncommercial or fair use of disputed domain name. In such use of the disputed domain name, the Respondent is not accurately disclosing its relationship with the trademark by falsely suggesting it is the trademark owner and its website is an official website.
In addition, the Complainant says that an email server has been configured on the disputed domain name and thus, there might be a risk that the Respondent is engaged in a phishing scheme.
In respect to the third element, the Complainant contends that bad faith can be found where the Respondent “knew or should have known” of the Complainant’s trademark. The Complainant is well-known throughout the world, and it owns several international registrations for the trademark ENTRESTO. The composition of the disputed domain name reproducing the Complainant’s pharmaceutical product “Entresto”, which is a highly distinctive mark having no regular meaning, and associating it to multiple fraudulent websites, along with a parking page with commercial links, clearly demonstrate that the Respondent registered the disputed domain name based on the attractiveness of the Complainant’s trademark to divert Internet users to its websites. On the other hand, the Complainant’s ENTRESTO trademarks registrations predate the registration date of the disputed domain name.
The Complainant refers to section 2 of the Policy where the Registrant duties are established in order to prevent infringement of the rights of any third party before registering a domain name. The Respondent´s failure to do so is a contributory factor to its bad faith. A simple search via Google or any search engine would have result with the Complainant’s products or news.
Furthermore, the Respondent registered domain names through a privacy shield service to hide his identity and contact details, thus, preventing the Complainant from contacting him. Prior panels confirmed that a deliberate concealment of identity and contact information may in itself indicate registration in bad faith.
Finally, the Complainant highlights that the Respondent is a well-known cybersquatter that has been the subject of numerous previous UDRP proceedings.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(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 was registered and is being used in bad faith.
There are no exceptional circumstances within paragraph 5(e) of the Rules to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”. This dispute resolution procedure is accepted by the domain name registrant as a condition of registration
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
To the satisfaction of the Panel the Complainant has shown registered trademark rights in the mark ENTRESTO. Accordingly, the test for confusing similarity involves a comparison between the Complainant’s mark and the disputed domain name. The Panel looks at the section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “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”. The mere addition of other generic or descriptive terms such as “central” does not prevent a finding of confusing similarity under the first element. See WIPO Overview 3.0 section 1.8.
Therefore, the disputed domain name is to be considered confusingly similar to the aforementioned trademark for the purpose of the UDRP.
It is well established that gTLDs, in this case “.com”, are typically irrelevant to the consideration of identity or confusing similarity between a trademark and a domain name.
The Panel finds that the first requirement is met under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant alleges that the Respondent is not known by “entresto”, neither is affiliated with the Complainant or authorized to use its trademarks, nor is making any bona fide use of the disputed domain name.
The evidence put before the Panel show how the Respondent uses the disputed domain name to generate allegedly revenue by using PPC services while taking advantage of the Complainant’s trademark notoriety. Such use cannot be considered as a bona fide offering of goods or services or a noncommercial use.
The Panel also notes that the disputed domain name implies affiliation with the Complainant, its mark ENTRESTO and the program carried out by the Complainant “Entresto Central Patient Support Program”. See section 2.5.1 of the WIPO Overview 3.0. Besides, no disclaimer is put forward the Internet users to avoid confusion. It is an accepted principle that the use of a domain name suggesting affiliation cannot be "legitimate". See The Procter & Gamble Company v. Whoisguard, Inc. / Enzo Gucci, Xtremcare, Tony Mancini, USDIET, USDIET Ltd, WIPO Case No. D2016-1881.
Accordingly, there is no evidence before the Panel of any rights or legitimate interests of the Respondent with regard to the disputed domain name
In accordance to the WIPO Overview 3.0, section 2.1: “[W]here 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.” As noted above, the Respondent did not come forward with relevant evidence and allegation demonstrating rights or legitimate interests in the disputed domain name.
In accordance, the Panel finds that the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in the disputed domain name to the satisfaction of the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Panel finds that upon the evidence in the case file, the Respondent knew about the Complainant’s trademark when registering the disputed domain name. For such, the Panel takes into account that the trademark is well-known and the disputed domain name fully replicates the trademark.
Further, the disputed domain name is a form of impersonation and of itself indicative of bad faith registration and use by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of his website and to attract Internet users to his website for his own commercial gain. Besides, the use of PPC links that referred to the Complainant’s business, falls with the scope of the example of circumstances indicating bad faith registration and use set out in paragraph 4(b)(iv) of the Policy. While the websites the disputed domain name resolves to are not always connected to the Complainant’s business, the Panel finds that such result does not prevent a finding of bad faith.
The Panel notes the Respondent's cybersquatting activity has been proven and considers that such activity a pattern of conduct in cybersquatting for the purpose of the Policy.
On the other hand, the failure of the Respondent to submit a formal Response or to provide any evidence of actual or contemplated good faith use, the Respondent’s concealing of its identity behind a privacy service, and the implausibility of any good faith use to which the disputed domain name may be put, affirm a finding of bad faith. See Fédération Internationale de Football Association (“FIFA”) v. Whois Privacy Shield Services / Winsum Wong WIPO Case No. D2016-2310.
The Panel, therefore, concludes that the Complainant has made out the requirements of paragraph 4(a)(iii) 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 <entrestocentral.com> be transferred to the Complainant.
Date: August 10, 2021