WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novartis AG v. Domain Administrator, See PrivacyGuardian.org / Annamaira Revak
Case No. D2021-2485
1. The Parties
The Complainant is Novartis AG, Switzerland, represented by Dreyfus & Associés, France.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Annamaira Revak, Germany.
2. The Domain Name and Registrar
The disputed domain name <ritalin-kaufen.org> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2021. On August 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 2, 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 August 6, 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 August 10, 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 August 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 21, 2021.
The Center appointed Peter Burgstaller as the sole panelist in this matter on September 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 focusing on innovative medicines, generics, and eye care devices (Annex 3 to the Complaint).
The Complainant is owner of several trademark registrations (Annex 4 to the Complaint) containing the mark RITALIN, especially:
- RITALIN (word), European Trademark Registration No 2712818, registered on January 8, 2004, in international Class 5;
- RITALIN (word), International Registration No 278969, registered on January 25, 1964, in international Classes 1, 2, 3, and 5 designated inter alia for Austria and Germany.
Additionally, the Complainant is the registrant of the domain names <ritalin.com> registered on March 6, 2000, and <ritalin.eu> registered on December 15, 2017 (Annex 5 to the Complaint).
The disputed domain name was registered on June 25, 2021, and resolved to a webpage in German offering the RITALIN drug for sale (Annex 1 to the Complaint).
5. Parties’ Contentions
The Complainant is a global healthcare company based in Switzerland providing solutions to address the evolving needs of patients worldwide. The Complainant was created in 1996 through a merger of
Ciba-Geigy and Sandoz; the Complainant and its predecessor companies trace roots back more than 250 years. The Complainant’s products are available in about 155 countries and they reached nearly 1 billion people globally in 2017. About 126,000 people of 145 nationalities work with the Complainant around the world.
Among the Complainant’s products, RITALIN, first marketed in the 1950’s, is indicated for the treatment of attention deficit hyperactivity disorder (ADHD) and narcolepsy in children and adults.
The Complainant owns numerous RITALIN trademark registrations around the world and enjoys a worldwide reputation. Moreover, the Complainant uses the domain name <ritalin.com> since 2000.
The disputed domain name exactly reproduces the Complainant’s trademark RITALIN, associated with the generic term “kaufen” (i.e., “to buy” in German) intersected by a hyphen, which does not prevent any likelihood of confusion. On the contrary, this term increases the likelihood of confusion since it could mislead consumers into believing that this is the official site registered by the Complainant to sell its goods online on German market.
The Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating said trademark. Furthermore, the Respondent cannot claim prior rights or legitimate interest in the domain name as the RITALIN trademarks precede the registration of the disputed domain name for years and the Respondent is not commonly known by the disputed domain name or the name “RITALIN”.
The disputed domain name was registered and used in bad faith:
It is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name, since the Complainant is well known throughout the world. The composition of the domain name entirely reproducing the Complainant’s trademark RITALIN, which is a widely known trademark, with the addition of the generic term “kaufen” (i.e., “to buy” in German), confirms that the Respondent was aware of the Complainant and its trademark. Moreover, the Respondent registered the disputed domain name through a privacy shield service to hide its identity and contact details, thus, preventing the Complainant from contacting; the concealment of identity and contact information may in itself indicate registration in bad faith.
The disputed domain name is also being used in bad faith since it resolves to a webpage in German offering the RITALIN drug for sale online without prescription. Moreover, 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, where the use of an email address with the disputed domain name presents a significant risk where the Respondent could aim at stealing valuable information such as credit cards from the Complainant’s clients or employees.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant submitted evidence, which incontestably and conclusively establishes rights in the registered trademark RITALIN.
The disputed domain name is <ritalin-kaufen.org> and is therefore confusingly similar to the Complainant’s registered distinctive mark RITALIN since it entirely contains this trademark and only adds the term “kaufen” (“buy” in German) separated by a hyphen.
It has long been established under UDRP decisions that where the relevant trademark is recognizable within the disputed domain name the mere addition of other terms whether descriptive or otherwise will not prevent a finding of confusing similarity under the first element of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Finally, suffixes such as a generic Top-Level Domain (“gTLD”) are viewed as a standard registration requirement and as such are disregarded under the first element confusing similarity test (see section 1.11 WIPO Overview 3.0); therefore, gTLD cannot typically negate confusing similarity where it otherwise exists, as it does in the present case.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 the WIPO Overview 3.0).
In the present case, the Respondent failed to submit a Response. Considering all of the evidence in the Complaint (especially with regard to the Annexes presented by the Complainant) and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no connection or affiliation with the Complainant, and the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademarks RITALIN in a domain name or in any other manner, lead the Panel to the conclusion that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant.
Moreover, the Complainant has furnished evidence demonstrating that the disputed domain name resolves to a website allegedly offering for sale the Complainant’s products without authorization or prescription. Panels have categorically held that the use of a domain name for illegal activity can never confer rights or legitimate interests on a respondent. See section 2.13 of the WIPO Overview 3.0.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As stated in many decisions rendered under the Policy (e.g., Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001) both conditions, registration and used in bad faith, must be demonstrated; consequently, the Complainant must show that:
- the disputed domain name was registered by the Respondent in bad faith, and
- the disputed domain name is being used by the Respondent in bad faith.
(a) The disputed domain name was registered on June 25, 2021. The Complainant has registered trademark rights in the mark RITALIN since decades as well as the domain name <ritalin.com> in 2000 and <ritalin.eu> in 2017. The mark RITALIN is distinctive.
The Panel is convinced that it is inconceivable that the Respondent has registered the disputed domain name without knowledge of the Complainant’s rights; this is especially supported by the fact that the Respondent used “kaufen” as suffix to the Complainant’s distinctive trademark which means “to buy” the Complainant’s product RITALIN.
These facts lead the Panel to the conclusion that the disputed domain name was registered with full knowledge of the Complainant’s rights and as such in bad faith by the Respondent.
(b) The disputed domain name moreover resolved to a webpage in German offering the RITALIN drug for sale. Such use demonstrates the Respondent’s intention to 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 Respondent’s website. The Respondent therefore abusively benefited from the Complainant’s reputation and particularly the RITALIN trademark to obtain commercial gains from offering the Complainant’s product for sale. Hence, the Respondent used the disputed domain name in bad faith.
There is no conceivable plausible reason for good faith registration and use with regard to the disputed domain name by the Respondent. The evidence and documents produced and put forward by the Complainant together with the fact that the Respondent has failed to present any evidence of any good faith registration and use with regard to the disputed domain name leads the Panel to the conclusion, that the disputed domain name was registered and is being used by the Respondent in bad faith under 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 <ritalin-kaufen.org> be transferred to the Complainant.
Date: October 11, 2021