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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Novartis AG v. 石磊 (shi lei)

Case No. D2021-3890

1. The Parties

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

The Respondent is 石磊 (shi lei), China.

2. The Domain Name and Registrar

The disputed domain name <ilarisconect.com> (the “Disputed Domain Name”) is registered with DNSPod, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2021. On November 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 24, 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 24, 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 25, 2021.

On November 24, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On November 25, 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 of the Complaint, and the proceedings commenced on November 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2021.

The Center appointed Peter J. Dernbach as the sole panelist in this matter on January 14, 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

The Complainant is a global healthcare company based in Switzerland.

The Complainant is the owner of ILARIS trademarks including:

International trademark ILARIS, registration number 704672, registered since December 4, 1998, which designates the United States of America, China, and Viet Nam; and

International trademark logo, registration number 1003225, registered since April 16, 2009, which designates Australia, China, Japan, Singapore, and Russian Federation.

The Complainant is the owner of <ilaris.com>, <ilaris.cn> and <ilaris-connect.com>.

The Disputed Domain Name <ilarisconect.com> was registered on August 13, 2021. The Disputed Domain Name resolved to a parking page displaying commercial links.

5. Parties’ Contentions

A. Complainant

The Complainant’s submissions may be summarized as follows:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights or interests.

The Complainant argues that the Disputed Domain Name is confusingly similar to the Complainant’s ILARIS trademark. The Disputed Domain Name reproduces the Complainant’s ILARIS trademark in its entirety. The Disputed Domain Name is also similar to the Complainant’s official domain name, <ilaris-connect.com>. The Disputed Domain Name reproduces the Complainant’s official domain name, <ilaris-connect.com>, by omitting the hyphen and misspelling the term “connect” as “conect”, which can be regarded as “typosquatting” since the omission and misspelling do not significantly affect the similarity. Furthermore, the addition of the Top-Level Domain (“TLD”) “.com” is irrelevant in determining the identity or similarity between the Disputed Domain Name and the Complainant’s ILARIS trademark.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use or register the Complainant’s ILARIS trademarks. There is no evidence showing that the Respondent is commonly known by the Disputed Domain Name. Also, the Disputed Domain Name directs Internet users to a parking page with pay-per-click links which are likely used to generate revenues, and may lead to various fraudulent websites. Thus, it cannot be inferred that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name.

Furthermore, the Complainant claims that it attempted to contact the Respondent by sending cease-and-desist letters via an online form and emails through the Registrar. However, the Respondent never replied to the Complainant.

The Complainant concludes that for the above reasons, the Respondent has no rights or legitimate interests in respect to the Disputed Domain Name under Paragraph 4(a)(ii) of the Policy.

(iii) The Disputed Domain Name was registered and is being used in bad faith.

The Complainant argues that the Complainant’s ILARIS trademark is well-known throughout the world. The Respondent knew or should have known the Complainant’s ILARIS trademark when registering the Disputed Domain Name. A quick search of the term “ilaris” would have revealed to the Respondent the existence of the Complainant and its ILARIS trademarks and products had the Respondent done so. The Respondent registered the Disputed Domain Name long after the Complainant registered the ILARIS trademarks. Also, there are various WIPO UDPR cases that are against the same Respondent. This shows that the Respondent is a well-known cyber-squatter.

In addition, the Respondent used the Disputed Domain Name to direct Internet users and generate more traffic to a parking page displaying commercial links that are likely to generate revenues. This demonstrates that the Respondent is taking undue advantage of the Complainant’s trademark and using the Disputed Domain Name to generate profits.

The Complainant then concludes that the combination of the above evidence shows that the Respondent has acted in bad faith when registering and using the Disputed Domain Name.

B. Respondent

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

6. Language of the Proceeding

Paragraph 11(a) of the Rules provides that “[u]nless 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”.

Paragraph 10(b) of the Rules provides that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case”; and paragraph 10(c) of the Rules provides that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition”.

The language of the Registration Agreement for the Disputed Domain Name is Chinese. However, the Complainant requested that the language of the proceeding be English. The Disputed Domain Name resolves to a parking page that contains links in English to other websites, which suggests that the Disputed Domain Name is being used in a manner directed to English speaking Internet Users. This suggests that the Respondent is able to understand and use English and that conducting the proceeding in English would not be unfair to the Respondent. In addition, the Center has communicated with the Respondent in both Chinese and English, and the Respondent was given an opportunity to comment on the language of the proceeding and failed to do so. In order to proceed in Chinese, the Complainant would have to retain specialized translation services which would add unnecessary time and expense to the proceeding.

Given the above considerations, the Panel decides that the language of the proceeding be English. The Panel believes that such decision is fair to both Parties while ensuring the proceeding takes place with due expedition.

7. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding and obtain the requested remedy (in this case, transfer of the Disputed Domain Name), the Complainant must prove that each of the three following elements are present:

(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 is the owner of the registered ILARIS trademarks. The Disputed Domain Name is a combination of the Complainant’s ILARIS trademark, the term “conect”, and the TLD “.com”. The Disputed Domain Name incorporates the Complainant’s ILARIS trademark in its entirety. The Disputed Domain Name is similar to the Complainant’s official domain name, <ilaris-connect.com>. The term “conect” does not contain any specific meaning and is misspelling of the term “connect” that is used in the Complainant’s official domain name. The misspelling can be regarded as “typosquatting” and thus does not affect the confusing similarity between the Disputed Domain Name and the Complainant’s ILARIS trademark. Moreover, the addition of the TLD “.com” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s ILARIS trademark.

For the above reasons, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark, and the condition of paragraph 4(a)(i) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, the Disputed Domain Name, for the purposes of paragraph 4(a)(ii) of the Policy:

“(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [Disputed Domain Name] or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [Disputed Domain Name], even if [the Respondent has] acquired no trademark or service mark rights; or

(iii) [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 trademark or service mark at issue.”

The Complainant states that it has neither licensed nor authorized the Respondent to use and register the Complainant’s ILARIS trademark. According to the information provided by the Registrar, it appears that the Respondent’s name, 石磊 (shi lei), is not related to the Disputed Domain Name and there is no evidence in the file to suggest the Respondent is commonly known by any name similar to the Disputed Domain Name. The Disputed Domain Name directs Internet users to a parking page with commercial links, which is not a legitimate noncommercial or fair use of the Disputed Domain Name.

The Complainant therefore 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. The Respondent has not submitted any argument or evidence to rebut the Complainant’s prima facie case.

Therefore, based on the above, the Panel concludes that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative dispute resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith.”

The Complainant is a global healthcare company and its ILARIS trademark is well-known worldwide. The Complainant’s ILARIS trademarks were registered long before the registration of the Disputed Domain Name. The Respondent knew or should have known the Complainant’s ILARIS trademark when registering the Disputed Domain Name. A quick search of the term “ilaris” would have revealed to the Respondent the existence of the Complainant and its ILARIS trademarks, but the Respondent failed to do so. The Panel further notes that there are several WIPO UDPR decisions involving the same Respondent who has not prevailed, which demonstrates that the Respondent has engaged in a pattern of cyber-squatting. The Panel therefore finds that the Disputed Domain Name has been registered in bad faith.

The Respondent used the Disputed Domain Name to direct Internet users and generate traffic to a parking page displaying commercial links that are likely to generate revenues. This shows that the Respondent is taking undue advantage of the Complainant’s trademark to generate profits. The Complainant sent cease-and-desist letters to the Respondent via an online form and emails through the Registrar. The Respondent’s failure to respond to the Complainant’s cease-and-desist letters and to this Complaint further evidences the Respondent’s bad faith use of the Disputed Domain Name. The Panel therefore concludes that the Disputed Domain Name is being used in bad faith.

Having considered the above, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith, and the Complainant fulfills the conditions provided in paragraph 4(a)(iii) of the Policy.

8. 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 <ilarisconect.com> be transferred to the Complainant.

Peter J. Dernbach
Sole Panelist
Date: January 28, 2022

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