WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novartis AG v. Radu Luca
Case No. D2016-0087
1. The Parties
The Complainant is Novartis AG of Basel, Switzerland, represented by Dreyfus & associés, France.
The Respondent is Radu Luca of Bucuresti, Romania.
2. The Domain Names and Registrar
The disputed domain names <ritalinbest.com> and <ritalineurope.com> are registered with DomainContext, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 15, 2016. On January 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 19, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's contact details.
The Center verified that the 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 January 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 15, 2016.
The Center appointed Felipe Claro as the sole panelist in this matter on February 25, 2016. 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
According to the Complainant, and uncontested by the Respondent, the Complainant enjoys a worldwide reputation. The Complainant owns numerous RITALIN trademark registrations around the world. The Complainant is, in particular, the owner of the following trademark registrations:
- Community trademark RITALIN No. 002712818, dated of May 27, 2002 and duly renewed, covering goods in class 5;
- International trademark RITALIN No. 278969, dated January 25, 1964, duly renewed and covering goods in class 5.
In addition, the Complainant is the owner of several domain names which incorporate the trademark RITALIN:
- <ritalin.org> registered on April 11, 2000;
- <ritalin.com> registered on March 6, 2000.
The disputed domain name <ritalinbest.com> was registered on October 12, 2015 and the disputed domain name <ritalineurope.com> was registered on October 29, 2015. The disputed domain name <ritalinbest.com> resolves to an online pharmacy selling Ritalin. The disputed domain name <ritalineurope.com> formerly resolved to a similar site, but was taken down by the Registrar, and is currently passively held.
5. Parties' Contentions
Created in 1996 from the merger of the companies Ciba-Geigy and Sandoz, the Complainant is a world leader in pharmaceutical products. The Complainant provides innovative healthcare solutions that address the evolving needs of patients and societies. Headquartered in Basel, Switzerland, the Complainant offers a diversified portfolio to best meet these needs: innovative medicines, eye care and cost-saving generic pharmaceuticals. The Complainant is the only global company with leading positions in these areas. The Complainant's Pharmaceuticals Division is a world leader in offering innovation-driven, patent-protected medicines to patients and physicians. The Pharmaceuticals Division researches, develops, manufactures, distributes and sells patented pharmaceuticals in a wide variety of therapeutic areas. In addition, the Division's portfolio of development projects includes 142 potential new products and new indications or new formulations for existing products in various stages of clinical development. The Complainant has an international presence, including in Romania where it has several of its offices.
Among its key products, Ritalin 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. In 2014 sales, Ritalin has been classified among the top 20 pharmaceutical products.
The Complainant's attention was drawn by the disputed domain name <ritalinbest.com>, as it entirely reproduces its trademark RITALIN with the association of the generic term "best". In addition, this disputed domain name is linked to a page displaying information about Ritalin products and aims at attracting consumers by the repeated use of specific keywords such as "cheap Ritalin". The page also commercializes original or fake Ritalin products, which are offered for sale without prescription. Then, the Complainant noticed that the same registrant registered the disputed domain name <ritalineurope.com>, which also reproduces its trademark RITALIN but with the adjunction of the geographical term "europe". This disputed domain name was previously linked to a website similar to the website under <ritalinbest.com>. Now, the disputed domain name <ritalineurope.com> is inactive.
Before starting the present proceeding, the Complainant made some efforts to resolve this matter amicably. On November 10, 2015 and on November 26, 2015, the Complainant sent cease-and-desist letters to the Respondent via registered letter and email on the basis of its trademark rights. The cease-and-desist letters requested the Respondent to cease the use of the domain names as well as to cancel them.
The Respondent never replied to the Complainant's cease-and-desist letters despite several reminders. The postal version of the cease-and-desist letter sent on November 10, 2015 was returned undelivered. The Registrar has suspended the domain name <ritalineurope.com>.
The Complainant previously filed a successful UDRP complaint against the Respondent – Novartis AG v. Radu Luca, WIPO Case No. D2015-1029 – related to similar domain names (<bestellenritalin.com> and <ritalintabs.com>) that were also linked to online pharmacies selling Ritalin.
The Complainant contends that the three elements of the Policy, paragraph 4(a) are satisfied in relation to the disputed domain names.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In view of the lack of a response filed by the Respondent as required under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(e), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding on the basis of the Complainant's undisputed representations. In that regard the Panel makes the following findings.
A. Identical or Confusingly Similar
The disputed domain name <ritalinbest.com> entirely reproduces the Complainant's trademark RITALIN with the association of the generic term "best". Internet users are likely to be induced to believe that the Complainant has endorsed the said domain name.
The disputed domain name <ritalineurope.com> also reproduces the Complainant's trademark RITALIN, but with the adjunction of the geographical term "europe". Hence, Internet users might also wrongly believe that this disputed domain name is in some way related to the Complainant.
Numerous UDRP decisions have established that adding a generic or descriptive term to a complainant's mark does not influence the confusing similarity between a trademark and a domain name (Eurodrive Services and Distribution N.V v. Transure Enterprise Ltd, Host Master and Above.com Domain Privacy, WIPO Case No. D2012-1453; Swarovski Aktiengesellschaft v. Luo Li, WIPO Case No. D2012-1604; Compagnie Générale des Etablissements Michelin v. isman to, WIPO Case No. D2012-0739).
Moreover, many UDRP panels have determined that a domain name which consists of a trademark combined with a geographical term is confusingly similar to that mark, as the geographical term does not provide sufficient distinction (L'Oréal, Laboratoire Garnier & Compagnie v. Australian Internet Investments Pty Ltd, WIPO Case No. D2008-1640; L'Oréal v. Liao Quanyong, WIPO Case No. D2007-1552; Accor v. Serdar Ceylan, WIPO Case No. D2011-2231; and LeSportsac Inc. v. Zhao Zhao, WIPO Case No. D2012-2505).
Finally, the generic Top-Level Domain (gTLD) extension ".com" is not typically to be taken into consideration when examining the identity or confusing similarity between a complainant's trademark and a disputed domain name (Accor v. Noldc Inc., WIPO Case No. D2005-0016). The adjunction of the gTLD ".com" is irrelevant as it is well established that it is insufficient to avoid a finding of confusing similarity (L'Oréal v. Tina Smith, WIPO Case No. D2013-0820; Titoni AG v. Runxin Wang, WIPO Case No. D2008-0820; and Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877).
For all of the above reasons, the disputed domain names are confusingly similar to the trademark RITALIN in which the Complainant has rights, and therefore the condition of Policy, paragraph 4(a)(i) is fulfilled.
B. Rights or Legitimate Interests
The Respondent is not affiliated with the Complainant in any way nor has he been authorized by it to register any domain names incorporating its mark or to use photographs of its products (as he does or has done on the websites to which the disputed domain names resolve). Furthermore, the registration of the RITALIN trademark preceded the registration of the disputed domain names by years.
Additionally, the disputed domain names and the websites to which they resolve or resolved so clearly reference the Complainant's well-known RITALIN trademark that the Respondent cannot pretend that he was intending to develop a legitimate activity through the disputed domain names unrelated to the Complainant's Ritalin products.
Besides, the Respondent did not demonstrate use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. Indeed, the disputed domain name <ritalinbest.com> is linked to an online pharmacy commercializing Ritalin products, without prescription at low prices. As has frequently been found, "a registrant has no legitimate interest in a domain name that is similar to a pharmaceutical manufacturer's mark and that is being used to direct consumers to an on-line pharmacy." Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784.
This finding has to also be taken in consideration for the disputed domain name <ritalineurope.com>, as this disputed domain name was also linked to an online pharmacy relating to Ritalin products until the Registrar suspended it. Further, the current passive holding of <ritalineurope.com> does not give rise to any rights or legitimate interests.
Further, it cannot be inferred that Respondent is making a legitimate noncommercial or fair use of the disputed domain names. Rather, it is or was using them to illegitimately sell the Complainant's products, or counterfeits thereof, by exploiting the Complainant's fame.
The Complainant attempted to contact the Respondent by sending cease-and-desist letters and reminders. The Respondent never replied. If the Respondent indeed had any rights or legitimate interests in connection with the disputed domain names, he presumably would have vigorously defended his rights by quickly replying to the Complainant's cease-and-desist letters.
For all of the above reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect to the disputed domain names and that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
It is clear, based on the below, that the Respondent was aware of the Complainant and its RITALIN mark when he registered the disputed domain names.
Firstly, the Complainant's RITALIN trademark long predates the registration of the disputed domain names, and is highly distinctive and well known.
Secondly, as described above the Respondent has been named as a respondent in at least one previous UDRP proceeding involving the Complainant's RITALIN mark (which was decided before the registration of the disputed domain names), and therefore was presumably on notice of the Complainant's mark by the time of registration.
Thirdly, the Respondent has used the disputed domain names for websites selling Ritalin products.
Fourthly, investigations carried out by the Complainant on the Respondent revealed that he has registered several domain names, one of which reproduces the trademark ADDERALL, which – as with the trademark RITALIN – refers to medication for ADHD.
In light of all of the above, doubts concerning the Respondent's knowledge of the Complainant's existence, business activities, and RITALIN trademark at the time of registration do not arise. Previous panels have established that knowledge of a complainant's intellectual property rights, including trademarks, at the time of registration of a domain name involving that mark proves bad faith registration (Caixa D'Estalvis I Pensions de Barcelona ("La Caixa") v. Eric Adam, WIPO Case No. D2006-0464; NBC Universal Inc. v. Szk.com, WIPO Case No. D2007-0077; and Alstom v. Domain Investments LLC, WIPO Case No. D2008-0287).
The Panel therefore finds that the disputed domain names were registered in bad faith.
The Respondent neither tried to defendhis rights nor stated any valid arguments to justify the registration of the disputed domainnames, either in response to the Complainant's cease-and-desist letters or to its UDRP Complaint. As indicated in another UDRP decision, "it would have been pertinent for Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with Complainant and its products" (Bouygues v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325).
The Respondent failed to provide correct contact details since he provided an invalid postal address. Even if the Complainant sent a cease-and-desist letter by registered letter, such information was not up to date to allow for effective postal contact with the Respondent.
The Respondent's silence and the incorrect postal details he provided are both indicative of bad faith in the circumstances of this case.
Moreover, the evidence suggests that the Respondent has registered the disputed domain names to prevent the Complainant from reflecting its trademark in corresponding domain names, and has engaged in a pattern of such conduct. The Complainant, as described above and in Novartis AG v. Radu Luca, supra, has registered at least four domain names containing the Complainant's distinctive RITALIN mark, a pattern of conduct evidencing bad faith registration and use as per Policy, paragraph 4(b)(ii).
It is likely that many Internet users attempting to visit the Complainant's website have ended up on the websites set up by the Respondent. As the disputed domain names are confusingly similar to the Complainant's trademark, the Panel notes that previous panels have ruled that "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" (MasterCard International Incorporated ("MasterCard") v. Wavepass AS, WIPO Case No. D2012-1765; Edmunds.com, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095).
Moreover, it is also possible that the website "www.ritalinbest.com" is offering imitation Ritalin products of unknown provenance which can be hazardous for consumers' health. In any event, this website clearly markets Ritalin products without the need for a medical prescription, which cannot be viewed as a good faith use if sales are taking place in jurisdictions where a prescription is required for Ritalin products.
The Respondent is trying to benefit from the fame of the Complainant's marks to commercialize products and to make undue profit. In other words, it is likely that the Respondent's primary motive in registering and using the disputed domain name was to capitalize on or otherwise take advantage of the Complainant's trademark rights, through the creation of Internet user confusion.
While the disputed domain name <ritalineurope.com>, previously linked to a similar page, is now inactive, such passive holding does not preclude a finding of bad faith in the circumstances of this case: "A principle widely adopted by panels since shortly after the inception of the UDRP has been to examine all the surrounding circumstances in which a disputed domain name may appear to be, or is claimed to be, held passively without any evident usage or purpose" (Cleveland Browns Football Company LLC v. Andrea Denise Dinoia, WIPO Case No. D2011-0421). In this case the Registrar suspended <ritalineurope.com> due to the Complainant's cease-and-desist letter against the Respondent. The Respondent has not replied to any cease-and-desist letter and reminders the Complainant sent. Such behavior has already been considered as an inference of bad faith by previous panels (Bayerische Motoren Werke AG v. (This Domain Is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787). In these circumstances, including the Respondent's failure to reply to the Complainant's cease-and-desist letter and the former use of the disputed domain name for an online pharmacy, the Panel finds that the disputed domain name <ritalineurope.com> is being used in bad faith.
Consequently, it is established that the Respondent both registered and is using the disputed domain names in bad faith in accordance with 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 names <ritalinbest.com> and <ritalineurope.com> be transferred to the Complainant.
Date: March 12, 2016