Arbitration and mediation center administrative panel decision




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ARBITRATION
AND
MEDIATION CENTER


ADMINISTRATIVE PANEL DECISION

Novartis AG v. Radu Luca



Case No. D2015-1029

1. The Parties
The Complainant is Novartis AG of Basel, Switzerland, represented by Dreyfus & associés, France.
The Respondent is Radu Luca of Bucharest, Romania.

2. The Domain Names and Registrar
The disputed domain names and are registered with DomainContext, Inc. (the “Registrar”).

3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2015. On June 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 23, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, providing the contact details and informing that the registration agreement was in Russian. The Center sent an email communication to the Parties in English and Russian on June 25, 2015 regarding the language of proceeding. The Complainant filed an amended Complaint on June 26, 2015, requesting English to be the language of proceeding. The Respondent did not submit any language request.
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(a) and 4(a), the Center formally notified t he Respondent of the Complaint in English and Russian, and the proceedings commenced on July 3, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 23, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 24, 2015.
The Center appointed Irina V. Savelieva as the sole panelist in this matter on July 31, 2015. 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.
Due to exceptional circumstances the Panel extended the decision due date to August 24, 2015.

4. Factual Background
The Complainant is a leader in pharmaceutical products in many countries, including Romania. Among its products is the medication RITALIN for treatment of attention deficit hyperactivity disorder first marketed in the 1950s and available in 70 countries.
The Complainant is the trademark owner of the Community Trade Mark RITALIN registration number 002712818 registered on January 8, 2004. The Complainant has several domain names which incorporate the trademark RITALIN including and registered respectively on April 11, 2000 and March 6, 2000.
The disputed domain name was registered on February 19, 2015 and the disputed domain name was registered on June 13, 2014.

5. Parties’ Contentions
A. Complainant
(a) The disputed domain names are confusingly similar to a trademark or service mark in which the Complainant has rights:
The Complainant contends that the disputed domain names are confusingly similar to the Complainant’s trademark. The first disputed domain name reproduces the trademark RITALIN with the addition of the German term “bestellen” meaning “to order”. The second disputed domain name also reproduces the trademark RITALIN with the addition of the generic term “tabs” which denotes “tablets” as of drugs or medication.
The Complainant submits that the association of the term RITALIN with generic and descriptive words is likely to induce Internet users to believe that the disputed domain names are in some way associated with or endorsed by the Complainant.
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain names:
The Complainant notes that the Respondent is not affiliated with the Complainant in any way and has not been authorised by the Complainant to register the disputed domain names.
The Complainant further contends that due to the fact that the trademark RITALIN is well known, the Respondent cannot reasonably pretend that it intended to develop a legitimate activity using the disputed domain names. Besides, the Respondent did not demonstrate use of the disputed domain names in connection with a bona fide offering of goods and services. The disputed domain name resolves to a website in German which is commercialising RITALIN products without prescription and selling generic or likely imitations of the Complainant’s products from European, Chinese and Indian manufactures. The other disputed domain name resolves to an inactive page.
The Complainant attempted to contact the Respondent several times, however, the Respondent did not reply. In the Complainant’s view it is additional demonstration that the Respondent has no rights or legitimate interests in the disputed domain names.
(c) The disputed domain names were registered and are being used in bad faith:
The Complainant submits that it is unlikely that the Respondent was unaware of the Complainant’s trademarks and its products, namely RITALIN. To support this claim, the Complainant presents additional evidence referring to the registration by the Respondent of other domain names, one of which reproduce the trademark of the Complainant’s competitors, demonstrating the Respondent’s knowledge of the pharmaceutical industry.
It is likely that the Respondent registered the disputed domain names to prevent the Complainant from reflecting its trademarks in the disputed domain names. In addition, many Internet users attempting to visit the Complainant’s website have ended up on the web pages set up by the Respondent offering products which can be hazardous for consumer’s health. Therefore, it is not only an additional evidence of bad faith but it is a question of taking adequate measures to protect consumers and Internet users.
The Complainant contends that the Respondent’s operations demonstrate it is trying to benefit from the fame of the Complainant’s products and trademarks likely selling imitations of the Complainant’s products and to make an undue profit.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings
The Respondent was given notice of this proceeding in accordance with the Rules.
However, the Respondent failed to file a response to the Complaint and has not sought to answer the Complainant’s assertions, evidence or contentions in any other manner. The Panel finds that the Respondent has been given fair opportunity to present its case and finds no exceptional circumstances why it could not do so; and the Panel will proceed to a decision based on the Complaint in accordance with paragraph 5(f) of the Rules.
The Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove the elements required by the Policy. In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain names, the Complainant must prove that each of the three following elements are satisfied:
(i) the disputed domain names are 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 domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Pursuant to paragraph 15(a) of the Rules the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel’s decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to reply.

A. Language of Proceeding


Paragraph 11 of the Rules states that the language of the proceeding shall be the language of the Registration Agreement unless the Panel determines otherwise. The Registrar has confirmed that the Registration Agreement was in Russian. The Complainant has requested English as the language of proceeding. The Panel notes that the Complainant is located in Switzerland and has no knowledge of Russian. The Complainant will incur undue hardship and delay the proceeding if it was required to translate the Complaint into Russian. The Respondent has not objected to the Complainant’s language request. In the present circumstance, the Panel finds it fair to accept the Complainant’s complaint filed in English, while allowing the Respondent to respond in Russian. Given that the Respondent has not filed any submission, the Panel proceeds to a decision in English.

B. Identical or Confusingly Similar

The Complainant has registered the RITALIN trademark in all European member states, including Romania. The Complainant submits that the disputed domain names are confusingly similar to its trademark as the disputed domain names incorporate the RITALIN trademark in its entirety. As the word “ritalin” has no meaning in English, the Panel finds the Complainant’s RITALIN trademark to be highly distinctive.


The Panel refers to a number of past UDRP decisions, which confirm that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (Toyota France and Toyota Motor Corporation v. Computer Brain, WIPO Case No. D2002 0002 and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd., WIPO Case No. D2000 0802).
In relation to the incorporation in the disputed domain name of the generic expression “to order” (“bestellen”, meaning “to order” in German), the Panel finds that the inclusion of a generic element together with a trademark does not distinguish the disputed domain name from a registered trademark where such domain name incorporates a distinctive trademark. The Panel finds that the addition of the merely generic and descriptive elements “to order” in the disputed domain name does not avoid a finding of confusing similarity in this case. Indeed, the inclusion of the term “order” in the disputed domain name may increase the risk of confusion for the Internet users taking into account that the Respondent is using the disputed domain name to link to a website that is offering the ability to purchase drugs, including the drug similar to RITALIN manufactured by other European, Chinese and Indian manufacturers.
It is clear in the Panel’s view that in the mind of an Internet user, the disputed domain name could be directly associated with the Complainant’s trademark, which is likely to be confusing to the public as suggesting either an operation of the Complainant or one associated with or endorsed by it (See AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003 0327).
The Panel finds the same with the other disputed domain name , which also reproduces the trademark RITALIN with the addition of the generic term “tabs” which denotes “tablets” as of drugs or medication.
In any event the Panel finds that the incorporation of the merely generic and descriptive words “bestellen” and “tabs” to the Complainant’s mark in the disputed domain names does not distinguish the disputed domain names and the disputed domain names are confusingly similar to the Complainant’s trademark RITALIN.
The Panel finds that the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names.



Even though the Respondent has not filed a response to the Complaint and has not contested the Complainant’s assertions, the Panel will need to consider whether the Respondent’s use of the disputed domain names would indicate the Respondent’s rights or legitimate interests in the disputed domain names.
According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) the respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s marks.
A respondent may show its rights or legitimate interests, non-exhaustively, by producing proof under paragraphs 4(c)(i)-(iii) of the Policy.
By not responding to the Complainant’s contentions, the Respondent in this proceeding has not attempted to demonstrate its rights or legitimate interests. The Panel further notes that there is no evidence that before any notice of the dispute with the Complainant, the Respondent was using the disputed domain names for a bona fide offering of goods or services.
According to the documents submitted by the Complainant the disputed domain name links to a website that offers for sale medicines, including under the trademark RITALIN but not manufactured by the Complainant. It is clear to the Panel that the Complainant did not authorize the Respondent to use its mark to offer these products for sale in such fashion.
Internet users are directed to an online pharmacy from the disputed domain name and according to Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784, “several cases have found that 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”.
While the disputed domain name does not resolve to an active site, the Panel notes that it has previously provided for “order now” button which could indicate that this domain name was used for offering drugs for sale under the Complainant’s mark without authorization from the Complainant.
The above described use of the dispute domain names, in the Panel’s view, cannot constitute a bona fide offering of goods and services in the circumstances of this case, and the Respondent has not brought any evidence to show rights or legitimate interests in respect of the disputed domain names under paragraph 4(c)(i) of the Policy.
As to paragraph 4(c)(ii) of the Policy, there is no evidence that the Respondent has been commonly known by the disputed domain names.
The Panel recalls that the Respondent registered the disputed domain names in 2014 and 2015. The Complainant asserts that the product under the RITALIN trademark has been on the market since the 1950s and has been registered as domain names in 2000 and as Community trademark in 2002 and that the product is widely known by the RITALIN trademark, which is recognized across the world and is registered as a trademark all over Europe.
Therefore as the disputed domain names have been registered more than ten years after the registration of the Complainant’s RITALIN trademark, it is highly unlikely that the Respondent known as Radu Luca, has been commonly known by the disputed domain names as provided in paragraph 4(c)(ii) of the Policy.

It is the Panel’s view, on the present facts, that the Respondent most likely registered the disputed domain names with full awareness of the Complainant’s trademark as well as the goodwill associated with it.


There is further evidence that the Respondent is making or has made commercial use from the disputed domain names. The Respondent is using the disputed domain name to further misleadingly divert customers to other websites that are not associated with the Complainant. Therefore, paragraph 4(c)(iii) of the Policy does not apply.
The Panel draws special observation on the danger of diverting customers of the legitimate RITALIN products to a website selling similar products under the trademark RITALIN but not manufactured by the Complainant, which can be hazardous for consumer’s health. The Respondent’s use of a picture of genuine Novartis’ RITALIN medicine pack only contributes to misleading Internet customers.
The Panel finds the Complainant has carried out its burden to show that the Respondent has no rights or legitimate interests in the disputed domain names and the Respondent has failed to rebut the Complainant’s case.
Accordingly, the Complainant has satisfied the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a respondent has registered and is using a domain name in bad faith:


(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.
The Complainant contends that the Respondent has violated the bad faith provision of the Policy because the disputed domain names have been used in connection with unauthorized sale of medicines via a website under its trademark and further redirects the users at the time of payment to another online pharmacy selling numerous other drugs that may be similar to the Complainant’s product. The Complainant further contends that the disputed domain name was registered and used primarily for the purpose of confusing and misleading the public as to the affiliation of the disputed domain name as well as associated website with the trademark of the Complainant.
The Panel finds that the Respondent’s use of the disputed domain names shows the Respondent’s intent to create a risk of confusion with the Complainant’s product and trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain names and websites associated with them.

The fact that the disputed domain name resolves to an inactive page, in the Panel’s view, does not preclude a finding of bad faith under the present facts, in particular when the page contained the photographs of RIVALIN products.


The Panel finds that the Complainant has presented evidence that the Respondent was and is in violation of the provisions of paragraph 4(b)(iv) of the Policy in respect of the disputed domain names.
The Panel holds that the Respondent has registered the disputed domain names in bad faith. In the circumstances, the Respondent knew about the Complainant’s products and was aware of the trademark of the Complainant as evidenced by the Respondent’s website. The Panel is not aware of the Respondent conducting any legitimate business activity using the disputed domain names. These findings, together with the finding that the Respondent has no rights or legitimate interests in the disputed domain names, lead the Panel to conclude that the disputed domain names were registered and used by the Respondent in bad faith.
The Panel draws further inferences from the fact that the website to which is linked sells the drugs manufactured by other manufactures aimed to provide the same medical results as RIVALIN and therefore these drugs are in competition with the Complainant. The Panel refers to F. Hoffmann-La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049, “the website resolving to the domain name at issue has been used to provide an online pharmacy which offers (…) as well as various other drugs which directly compete with the Complainant. The use of the disputed domain name thus appears to be an attempt to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark. This is evidence of bad faith registration and use pursuant to the Policy, paragraph 4(b)”.
The Panel also draws inferences of bad faith from the lack of any response from the Respondent to the Complaint.
The Panel finds the Complainant has shown that the Respondent registered and used the disputed domain names in bad faith.

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 domain names, and be transferred to the Complainant.

Irina V. Savelieva

Sole Panelist



Date: August 25, 2015



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