WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novartis AG v. See PrivacyGuardian.org / Dhfjhgryr Yuan Han
Case No. D2021-3204
1. The Parties
The Complainant is Novartis AG, Switzerland, represented by Dreyfus & associés, France.
The Respondent is See PrivacyGuardian.org, United States of America (“United States”) / Dhfjhgryr Yuan Han, Angola.
2. The Domain Name and Registrar
The disputed domain name <safetykerb.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2021. On September 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 28, 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 September 30, 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 October 4, 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 October 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 28, 2021.
The Center appointed Steven A. Maier as the sole panelist in this matter on November 4, 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 pharmaceutical company based in Switzerland, which focuses on innovative patented medicines, generics and eye care devices.
The Complainant is the supplier of a pharmaceutical product named “Tykerb”, which is a prescription medicine used in the treatment of advanced or metastatic breast cancer.
The Complainant is the owner of registrations for the trademark TYKERB in multiple territories, including for example:
- United States trademark number 2895608 for the word mark TYKERB, registered on October 19, 2004;
- European Union Trade Mark number 003414075 for the word mark TYKERB, registered on September 21, 2005; and
- International trademark number 1148838 for the word mark TYKERB, registered on December 17, 2012.
The Complainant is also the owner of the domain name <tykerb.com>, registered on June 26, 2003, which redirects to a website providing information about its “Tykerb” product.
The disputed domain name was registered on August 8, 2021.
The Complainant has exhibited evidence that the disputed domain name has resolved to a Chinese language website at “www.safetykerb.com”, which the Complainant submits offered both gambling services and pornographic content. At the date of this decision, the website appears to offer similar content.
5. Parties’ Contentions
The Complainant submits that the disputed domain name is confusingly similar to its TYKERB trademark. It contends that the disputed domain name incorporates that trademark in full and that the addition of the term “safe” does not prevent a finding of confusing similarity. On the contrary, the Complainant submits that the use of the term “safe” in conjunction with the name of its pharmaceutical product is likely to suggest to Internet users that the disputed domain name relates to content endorsed by the Complainant.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has never licensed or authorized the Respondent to use its TYKERB trademark, that the Respondent has not been known by that name and that the Respondent is making neither bona fide commercial use nor legitimate non-commercial or fair use of the disputed domain name. Instead, the Complainant submits that the Respondent has used the disputed domain name misleadingly to divert Internet users to a website containing adult content, which tarnishes the Complainant’s reputation.
The Complainant submits that the disputed domain name has been registered and is being used in bad faith. It contends that its TYKERB trademark is well-known and highly distinctive and that it is implausible that the Respondent could have been unaware of that trademark when it registered the disputed domain name. The Complainant submits that the addition of the term “safe” also implies that the Respondent had the Complainant’s product in mind.
The Complainant submits that the Respondent chose the disputed domain name deliberately to cause confusion to Internet users and to take unfair advantage of the Complainant’s goodwill in its trademark for financial gain, by diverting those Internet users to a Chinese language website offering pornographic and gambling content. The Complainant states that both gambling and pornography are prohibited in China and this activity therefore causes additional detriment to the Complainant’s trademark.
The Complainant also contends that the postal address provided by the Respondent, which was only revealed once the Registrar provided that information, is fake and in particular that no such street address exists in Angola. The address includes the lines “serdtfjyg” and “retrytuyfghjhcsfdgfhty”.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are 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 in respect of 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 has established that it has registered trademark rights for the mark TYKERB. The disputed domain name <safetykerb.com> includes that trademark in full, together with the dictionary word “safe”, which does not prevent the Complainant’s trademark from being recognizable within the disputed domain name. In the circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not filed a Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise.
The Panel notes that, as well as the interpretation placed upon it by the Complainant, the disputed domain name could be argued to comprise a combination of two dictionary words, “safety” and “kerb”. However, the Respondent has advanced no such argument in this case, nor would the Respondent’s use of the disputed domain name for a website offering gambling and pornographic services bear any obvious relation to either or both of those terms.
In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
While the Complainant provides substantial evidence concerning its corporate history and reputation as an internationally-known pharmaceutical company, it provides little information concerning the history and reputation of the TYKERB trademark, which is the name in issue in this proceeding. Based on the Panel’s own limited research, however, it appears that the product was approved for use in the United States in 2007 and is currently approved for sale and clinical use in numerous other territories worldwide. The product appears to generate multi-million dollar sales in the United States, Europe, and the Far East.
While the Complainant has offered little evidence of the reputation of its TYKERB trademark, the Panel accepts that that trademark has been used in numerous counties around the world for well over a decade in connection with the Complainant’s relevant product. The Panel also accepts the Complainant’s submission that the addition of the term “safe” to the name of a pharmaceutical product, TYKERB, suggests that the Respondent may have had the Complainant’s product in mind at the time of registration of the disputed domain name. In these circumstances, and in the absence of any contrary submission from the Respondent, the Panel finds on balance that the Respondent is most likely to have registered the disputed domain name with the Complainant’s TYKERB trademark in mind and with the intention of taking unfair advantage of the goodwill attaching to that trademark.
The Panel also accepts that the Respondent’s adoption of the disputed domain name is inherently misleading, as being likely to suggest to a significant number of Internet users that it resolves to a website connected with the Complainant’s TYKERB product, which is likely to be operated or at least authorized by the Complainant. In fact the website is not only unauthorized, but has no connection with the Complainant’s product at all, being used instead to direct Internet users to adult content. The Panel finds therefore that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, 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 or of a product or service on its website (paragraph 4(b)(iv) of the Policy).
The Panel also notes that the Respondent’s address as supplied to the Registrar appears to be materially nonsensical and accepts the Complainant’s submission that no such address exists. This factor exacerbates the impression of bad faith intent on the Respondent’s part.
The Panel finds in the circumstances that the disputed domain name has been registered and is being used in bad faith.
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, <safetykerb.com>, be transferred to the Complainant.
Steven A. Maier
Date: November 9, 2021