WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novartis AG v. Anonymouse
Case No. DNL2016-0052
1. The Parties
Complainant is Novartis AG of Basel, Switzerland, represented by Dreyfus & associés, France.
Respondent is "Anonymouse" of "Anonymouse", the Netherlands.
2. The Domain Name and Registrar
The disputed domain name <ritalin-kopen.nl> (the "Domain Name") is registered with SIDN through AXC BV.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 26, 2016. On September 27, 2016, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On September 28, 2016, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details, which were of an anonymous nature. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the "Regulations").
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 29, 2016. In accordance with the Regulations, article 7.1, the due date for Response was October 19, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 20, 2016.
The Center appointed Remco M.R. van Leeuwen as the panelist in this matter on November 7, 2016. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.
4. Factual Background
Complainant, created in 1996 from the merger of the companies Ciba-Geigy and Sandoz, is a world leader in pharmaceutical products. One of the key marketed products of Complainant is "Ritalin". This medicine is indicated for the treatment of attention deficit hyperactivity disorder (ADHD) and narcolepsy in children and adults. Ritalin was first marketed during the 1950s and is available in over 70 countries.
Complainant is, inter alia,holder of the European Union Trade Mark RITALIN, registered on January 8, 2004, registration number: 002712818, for goods in class 5 (pharmaceutical preparations) (hereinafter referred to as the "Trademark"). According to Complainant, the Trademark is highly distinctive and well-known and enjoys a worldwide reputation.
Complainant and its affiliates also own several domain names consisting of the Trademark, such as <ritalin.com>, registered on March 6, 2000 and <ritalin.org>, registered on April 11, 2000.
The Domain Name was registered on June 5, 2016. The Domain Name resolves to a website commercializing prescription-only Ritalin products without prescription, as well as competitors' products.
5. Parties' Contentions
Complainant bases its Complaint on the Trademark.
The Domain Name is identical or confusingly similar to the Trademark
Complainant contends that the Domain Name is confusingly similar to the Trademark. Complainant argues that many panels have considered that the incorporation of a trademark in its entirely may be sufficient to establish that a domain name is identical or confusingly similar to a complainant's registered trademark.
According to Complainant, the Domain Name entirely reproduces the Trademark with the Dutch generic term "kopen" (translated as "buy" in English) intersected by a hyphen. Adding a generic and descriptive term to the Trademark in the Domain Name does not influence the similarity between the Trademark and the Domain Name. Complainant also contends that hyphenation in the Domain Name is insufficient to distinguish the Domain Name from the Trademark because the dominant portion of the Domain Name is the Trademark. Finally, the country code Top-Level Domain ".nl" should be disregarded under the confusing similarity test, since it is a technical registration requirement, according to Complainant.
Complainant asserts that Internet users are likely to believe that the Domain Name has been endorsed or authorized by Complainant due to the offering of Ritalin products without prescription on the website to which the Domain Name resolves and the images of Complainant's products depicted on said website.
Accordingly, Complainant further alleges, by registering the Domain Name, Respondent created a likelihood of confusion with the Trademark and it is likely that the Domain Name could mislead Internet users into thinking that Respondent is, in some way, associated with Complainant.
No rights to or legitimate interests in the Domain Name
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name.
Respondent is not affiliated with Complainant in any way nor has Respondent been authorized by Complainant to register and use the Trademark, or to seek registration of any domain name incorporating the Trademark or to use photographs of the product Ritalin. The registration of the Trademark precedes the registration of the Domain Name by years.
According to Complainant, the Domain Name is so similar to the well-known Trademark that Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the Domain Name. It cannot be inferred that Respondent is making a legitimate noncommercial or fair use of the Domain Name since Respondent did not demonstrate use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services. This, according to Complainant, is because Respondent rather is illegitimately selling the products of Complainant or their imitation by exploiting Complainant's fame.
Respondent is making a non-legitimate use of the Domain Name with intent for commercial gain to misleadingly divert consumers from Complainant's official website and it is likely that Respondent uses the Domain Name to sell fake items that could be hazardous to people's health, which cannot be regarded as a legitimate or fair use of the Domain Name, according to Complainant.
In addition, Complainant argues that Respondent never answered Complainant's letter despite Complainant's reminders and it thus can be assumed that Respondent has no rights or legitimate interests in the Domain Name. Moreover, Respondent registered the Domain Name anonymously to hide its identity and prevent Complainant from contacting Respondent, which highlights the fact that Respondent has no rights or legitimate interests in the Domain Name.
The Domain Name has been registered and is being used in bad faith
Complainant contends that Respondent registered the Domain Name in bad faith.
Complainant argues that bad faith can be found where respondent knew or should have known of the Trademark. It is unlikely that Respondent was unaware of Complainant when it registered the Domain Name, especially since the Trademark is highly distinctive and has no meaning in the Dutch language. Considering that the Domain Name means "buy Ritalin", it is impossible that Respondent did not have the Trademark in mind while registering the Domain Name. In view of the website to which the Domain Name resolves, it is impossible to infer that Respondent was not aware of Complainant at the time of registration of the Domain Name. In light of the reputation of the Trademark, Respondent's reproduction of the Trademark proves that Respondent was aware of the existence of the Trademark taking into account that Respondent has registered the Domain Name which reproduces the Trademark and additionally resolves to a website commercializing Complainant's products. Respondent registered the Domain Name anonymously to hide its identity and contact details, thus preventing Complainant from contacting it which constitutes a deliberate concealment of identity and contact information which may in itself indicate registration in bad faith.
Complainant further contends that Respondent also uses the Domain Name in bad faith.
In the absence of any license or permission from Complainant to use the Trademark, no actual or contemplated bona fide or legitimate use of the Domain Name could reasonably be claimed. Also the use of photographs of Complainant's products without any authorization suggests bad faith. It is likely that Respondent registered the Domain Name to prevent Complainant from reflecting the Trademark in the Domain Name. Internet users attempting to visit Complainant's website have ended up on the webpages set up by Respondent and, as the Domain Name is confusingly similar to the Trademark, a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from Complainant's site to Respondent's site.
Moreover, it is most likely that the website to which the Domain Name resolves is offering imitations of the products of Complainant which can be hazardous for consumer's health and thus the use of the Trademark without any prior consent to promote products and services that are similar to the products and services of the Trademark supports a finding of bad faith. Respondent is trying to benefit from the fame of the Trademark to commercialize fake products and to make undue profit and it is thus more likely that Respondent's primary motive in registering and using the Domain Name was to capitalize on or otherwise take advantage of Complainants' trademark right, through the creation of initial interest confusion, according to Complainant.
Complainant has submitted documents, including references to panel decisions, in support of the above arguments.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
As Respondent has not filed a response, the Panel shall rule on the basis of the Complaint. In accordance with article 10.3 of the Regulations, the Complaint shall in that event be granted, unless the Panel considers it to be without basis in law or fact. The Panel is entitled to further inform itself by limited reference to matters of public record (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 4.5).1
The Panel notes that, in accordance with article 16.4 of the Regulations, the Center has fulfilled its obligation to employ reasonably available means to achieve actual notice of the Complaint to Respondent.
Pursuant to article 2.1 of the Regulations, Complainant's request to transfer the Domain Name must meet three cumulative conditions:
a. the Domain Name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which Complainant has rights, or other name by means of article 2.1(a) under II of the Regulations; and
b. Respondent has no rights to or legitimate interests in the Domain Name; and
c. the Domain Name has been registered or is being used in bad faith.
Considering these conditions, the Panel rules as follows:
A. Identical or Confusingly Similar
Complainant has based its Complaint on the Trademark. Complainant has submitted a copy of its trademark registration demonstrating that it is the holder of the Trademark. The Trademark is protected under Dutch law.
It is established case law that the Top-Level Domain ".nl" may be disregarded in assessing the similarity between the relevant trademark(s) on the one hand, and the disputed domain name on the other hand (see Caterpillar Inc. v. H. van Zuylen Materieel, WIPO Case No. DNL2011-0073; Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).
The Domain Name includes the entire Trademark together with the Dutch term "kopen", intersected by a hyphen. The addition of this generic and descriptive term and a hyphen to the Trademark in the Domain Name does not influence the similarity between the Trademark and the Domain Name. The Domain Name is textually, visually and phonetically nearly identical to the Trademark.
The Panel finds that the Domain Name is confusingly similar to the Trademark for purposes of the Regulations. Therefore, the first requirement of article 2.1(a) under I of the Regulations is met.
B. Rights or Legitimate Interests
Complainant alleges that Respondent lacks rights to or legitimate interests in the Domain Name for the reasons set out above in Section 5.A. The Panel is satisfied that Complainant has fulfilled its obligation to establish prima facie that Respondent has no rights to or legitimate interests in the Domain Name.
As a result of its failure to submit a response, Respondent has not refuted the arguments of Complainant and shown rights to or legitimate interests in the Domain Name. The Panel could not establish any indication that any of the circumstances as described in article 3.1 of the Regulations apply, nor that Respondent in any possible other way has a right to or legitimate interest in the Domain Name.
The Panel concludes that Complainant has met the second requirement of article 2.1(b) of the Regulations.
C. Registered or Used in Bad Faith
Considering the apparent well-known status of the Trademark and prior rights of Complainant, the fact that Complainant has never licensed or otherwise authorized Respondent to use the Trademark in a domain name, that the word "ritalin" does not have a generic meaning, that the Domain Name means "buy Ritalin" and the nature of the website to which the Domain Name resolves, the Panel is of the opinion that Respondent knew or should have known of the Trademark at the time of registration of the Domain Name and that also the use of the Domain Name indicate registration and use of the Domain Name in bad faith.
Previous panels have found that the incorporation of a well-known trademark in a domain name without plausible explanation is in itself an indication of bad faith (see Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273 in which the panel stated: "The incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith"). In this respect, the Panel notes that Respondent has not offered any such explanation.
The specific cumulative circumstances in this case in which the Domain Name is almost identical to the Trademarks and in which Respondent has provided no evidence whatsoever of any actual or contemplated good-faith use of the Domain Name (the Panel notes in particular Respondent's current use to sell (without prescription) Complainant's product and competitors' products), are indicative of bad faith on the part of Respondent in its registration of the Domain Name as well (see The Coca-Cola Company v. P. Engbers, WIPO Case No. DNL2012-0037; and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Furthermore it is established case law that a deliberate concealment of identity and contact information may in itself indicate registration in bad faith (see Schering Corporation v. Name Redacted, WIPO Case No. D2012-0729 and TTT Moneycorp Limited. v. Diverse Communications, WIPO Case No. D2001-0725).
On the above grounds, the Panel finds that the requirements of registration or use in bad faith of the Domain Name pursuant to article 2.1(c) of the Regulations have been met.
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name, <ritalin-kopen.nl>, be transferred to Complainant.
Remco M.R. van Leeuwen
Date: November 11, 2016
1 While the Complaint is brought under the Regulations, and not the Uniform Domain Name Dispute Resolution Policy ("UDRP"), given the similarities between the two, where applicable the Panel considers UDRP precedent relevant to the current proceeding, and will refer to it where appropriate.