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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Novartis AG v. Hideki Tominaga

Case No. D2021-3560

1. The Parties

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

The Respondent is Hideki Tominaga, Japan.1

2. The Domain Name and Registrar

The disputed domain name <buyvoltaren.xyz> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2021. On October 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 27, 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 November 15, 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 in English on November 17, 2021.

On November 15, 2021, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On November 15, 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 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 in English and Japanese of the Complaint, and the proceedings commenced on December 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 2, 2022.

The Center appointed Erica Aoki as the sole panelist in this matter on January 21, 2022. 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

Founded in 1996, the Complainant is a global healthcare company based in Switzerland that provides solutions to address the evolving needs of patients worldwide. The Complainant was resulted from a merger of Ciba-Geigy and Sandoz. The Complainant and its predecessor companies trace roots back more than 250 years ago, with a rich history of developing innovative products. From beginnings in the production of synthetic fabric dyes, the companies that eventually became the Complainant branched out into producing chemicals and ultimately pharmaceuticals. The Complainant’s products are available in 155 countries and the Complainant has more than 200 products in its clinical pipelines and 500 clinical trials are in progress.

The Complainant owns numerous VOLTAREN trademark registrations around the world, including the International Registration No. 215704 registered on December 20, 1958, and International Registration No. 983810 registered on November 7, 2008, designating, among other countries, Japan.

The disputed domain name <buyvoltaren.xyz> was registered on October 2, 2021. The disputed domain name resolves to a page in Japanese, promoting equipment for facial mask.

5. Parties’ Contentions

A. Complainant

VOLTAREN is a nonsteroidal anti-inflammatory drug sold over the counter (“OTC”), the No. 1 topical pain reliever worldwide and the fastest growing Top 10 OTC brand in the world.

The Complainant owns numerous VOLTAREN trademark registrations around the world, including the international trademark VOLTAREN No. 215704, registered on December 20, 1958, duly renewed, covering goods in class 5 and international trademark VOLTAREN No. 983810, registered on November 7, 2008, duly renewed, covering goods in class 10.

In addition, the Complainant owns several domain names such as: <voltaren.com> registered on September 3, 1997, and also <voltaren.jp> registered on March 30, 2005.

The disputed domain name resolves to a page in Japanese, promoting equipment for facial mask. Moreover, email servers have been configured. As such, there might be a risk of phishing.

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s VOLTAREN trademark, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

The Complainant is required to establish the requirements specified under paragraph 4(a) of the Policy:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in respect of which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Japanese. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated.

However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. General Energy a/k/a Edison GE GEEEEGE.COM a/k/a Edison-GE and Edison Electric Corp., WIPO Case No. D2006-0334).

In deciding whether to allow the proceeding to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances” of the case. The factors that the Panel should take into consideration include inter alia whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without causing injustice to the Parties.

According to section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), prior UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.

The Complainant has submitted a request that the language of the proceeding be English. The Complainant contends that it is located in France and has no knowledge of Japanese. The Complainant would have to retain specialized translation services in order to proceed in Japanese, which would impose an extra burden on the Complainant and unnecessarily delay the proceeding.

The Panel notes that the Center notified the Respondent in Japanese and English regarding the language of the proceeding and the Respondent was invited to present its objection to the proceeding being held in English and if the Center did not hear from the Respondent by the specified due date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceeding. The Respondent had the opportunity to raise objections or make known its preference but did not do so. The Panel further notes that the Center notified the Respondent in Japanese and English regarding the commencement of the proceeding, and the Respondent was informed that it could file a Response either in Japanese or English, but the Respondent did not send any response.

In addition, the disputed domain name is in Latin characters, and contains an English word “buy”. The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Japanese.

Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English.

B. Identical or Confusingly Similar

Based on the facts presented by the Complainant, this Panel finds that the disputed domain name is confusingly similar to a mark in which the Complainant has rights under Policy, paragraph 4(a)(i). The Complainant has established its rights in VOLTAREN through registration and use. The Panel finds that there is no doubt that the disputed domain name is confusingly similar to the Complainant’s registered trademark, as the disputed domain name includes the Complainant’s mark in full, with only the addition of the word “buy” to the VOLTAREN mark, which does not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview 3.0).

C. Rights or Legitimate Interests

The Panel finds the following on record in this proceeding under the Policy:

The Respondent is in default and thus has made no affirmative attempt to show any rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy indicates that a registrant may have a right or legitimate interest in a domain name if it uses the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute. In this regard, the Respondent is in no way connected with the Complainant and has no authorization to use any of the Complainant’s trademarks. The disputed domain name resolves to a page in Japanese, promoting equipment for facial mask and displaying a link which appears to redirect Internet users to another online store.

There is no evidence on record that the Respondent is or was commonly known by the disputed domain name as an individual, business, or other organization.

There is no evidence on record that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.

Thus, the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Panel therefore finds that the Complainant has established an unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, under Policy paragraph 4(a)(ii).

D. Registered and Used in Bad Faith

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy and that the Respondent has used the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to the Respondent’s website or other online location by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s site or of a product or service offered on the Respondent’s site.

The Complainant’s VOLTAREN trademark was registered long before the registration of the disputed domain name. The Complainant has extensively promoted its products under the VOLTAREN trademark. Also, considering the fame and distinctiveness of the Complainant’s VOLTAREN trademark, the Panel finds that it is most likely that the Respondent was aware of the Complainant’s rights to VOLTAREN trademark at the time the disputed domain name was registered, indicating that such registration was made in bad faith.

The disputed domain name resolves to a page in Japanese, promoting equipment for facial mask and displaying a link which appears to redirect Internet users to another online store. Based on that evidence, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to an online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or other online location, and this constitutes evidence of bad faith under Policy, paragraph 4(b)(iv).

Accordingly, and as also supported by the Panel’s findings above under the second element of the Policy, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith under Policy, paragraph 4(a)(iii).

7. Decision

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 <buyvoltaren.xyz> be transferred to the Complainant.

Erica Aoki
Sole Panelist
Date: February 4, 2022

1 The disputed domain name was originally registered through a privacy service.

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