Complainant is Novartis AG of Basel, Switzerland, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
Respondent is Jordan Smith / Stanley Pace of Utah, United States of America / Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <nodoz.com> (the “Domain Name”) is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2009. On December 18, 2009, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the Domain Name. On December 21, 2009, Fabulous.com transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 4, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 8, 2010. 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 Respondent of the Complaint, and the proceedings commenced on January 11, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 5, 2010.
The Center appointed Anna Carabelli as the sole panelist in this matter on February 12, 2010. 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
Complainant is a multi-national pharmaceutical company based in Basel, Switzerland, engaged, amongst other, in the development, manufacture and marketing of self-medication over-the-counter (“OTC”) healthcare products. Complainant's products include a drowsiness relief product marketed under the trademark NODOZ since the early sixties.
As shown by documents submitted by Complainant, the word NODOZ was registered as a trademark in the U.S (Reg. No. 792,839) by Bristol-Meyers Company (see Annex K of the Complaint) and acquired by Complainant on August 31, 2005 together with the NODOZ drowsiness relief product line and right (see Annex M of the Complaint). In addition Complainant owns trademark registrations for its NODOZ mark in various countries outside the U.S. (see Annex L of the Complaint).
Complainant's NODOZ trademark and product have been supported by intensive advertising campaigns particularly in the US where NODOX annual sales exceeded $6 million in 2009 (see Annex O of the Complaint).
Respondent Stanley Page registered the Domain Name on March 4, 1999.
Complainant's letters sent prior to the commencement of these proceedings requesting voluntary transfer of the Domain Name (see Annex V,W,X,Y of the Complaint) were not answered by Respondent Pace.
Respondent Pace contacted Complainant offering to transfer the Domain Name for payment of unspecified costs only after commencement of these proceedings (see Annex C of the Complaint) but a few hours later, before the Domain Name registration could be locked by the Registrar, he transferred the Domain Name to Respondent Jordan Smith (Annex D of the Complaint). After such transfer Respondent Pace sent an e-mail to Complainant's counsel indicating that he still maintained control over the Domain Name (Annex E of the Complaint). Later on, Respondent Smith, in his turn, offered to turn over the Domain Name to Complainant to avoid dispute (Annex F).
The homepage of the “www.nodoz.com” website associated with the Domain Name contains a box that states: “Buy this domain. The domain name <nodoz.com> may be for sale by its owner” with a hyperlink to “www.sedo.com” website where prospective purchasers are invited to submit an offer (Annexes Q, R and S). The home page also contains links to websites advertising, amongst others, caffeine and other drowsiness relief in competition with Complainant's products NODOZ (Annexes Q and S of the Complaint).
5. Parties' Contentions
A. Complainant
Complainant contends that:
- the Domain Name is confusingly similar to its NODOX registered trademark as it incorporates entirely the NODOX mark;
- Respondent has no rights or legitimate interests in the Domain Name under paragraph 4(c) of the Policy;
- Respondent registered the Domain Name in bad faith as shown by the fact that the Domain Name (i) is obviously connected with Complainant's NODOZ famous trademark and (ii) was registered for the purpose of selling it;
- Respondent is using the Domain Name in bad faith. In this connection Complainant notices that (i) Respondent's offer to sell the Domain Name on the web is it-itself evidence of bad faith use, (ii) the display on Respondent's website “www.nodoz.com” of sponsored links to other commercial websites allows Respondent to collect a financial remuneration proportional to the number of connections and this practice constitutes bad faith use;
- Further evidence of bad faith use is given by (i) Respondent's “cyberflight” efforts (namely, their transfer of the Domain Name shortly after the filing of the Complaint) and (ii) Respondent's history of cybersquatting. As matter of fact Respondent (Pace and Jordan) has registered hundreds of domain names many of which infringe the rights of other trademark owners (Annexes T and U of the Complaint) and has been held to be cybersquatter in at least one prior UDRP proceedings.
B. Respondent
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to 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.
Under paragraph 4(a) of the Policy, the complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to the complainant's trademark or service mark; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which if proved by the respondent, shall be evidence of the respondent's rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
Complainant is required under paragraph 4(a)(i) of the Policy to prove that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.
Complainant has proven its trademark rights in the mark NODOZ.
The Domain Name entirely incorporates Complainant's trademark.
It is an established principle that the addition of the gTLD .com has no legal significance when comparing the domain name and the complainant's trademark (Telecom Personal, S.A., v. NAMEZERO.COM, Inc,,WIPO Case No. D2001-0015) and Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri,WIPO Case No. D2002-0760).
Based on the above the Panel finds that this element has been established.
B. Rights or Legitimate Interests
The Complainant contends that none of the three circumstances establishing legitimate interests or rights under paragraph 4(c) of the Policy applies. Respondent's offers to turn the Domain Name over to Complainant after these proceedings have commenced (Annexes E and F of the Complaint), tend to confirm the above.
As stressed by many WIPO UDRP decisions, if the complainant provides prima facie evidence of lack of rights or legitimate interests, the burden of proof shifts on the respondent to rebut the evidence (see among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia,
WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,
WIPO Case No. D2002-0683; Belupo d.d.v. WACHEM d.o.o.,
WIPO Case No. D2004-0110).
Respondent has not filed any submission or evidence whatsoever and is in default.
There is no evidence before the Panel that Respondent has any rights or legitimate interests in the Domain Name for the purpose of paragraph 4(a)(ii) of the Policy under the above criteria or otherwise.
The Panel therefore finds that Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Based on Complainant's allegations and documents, the Panel is of the opinion that the Domain Name has been registered and is being used in bad faith.
Paragraph 4(b)(i) of the Policy provides that sufficient evidence of bad faith may consist of:
“(i) Circumstances indicating that you have registered or that you have required 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 that Complainant for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name”;
The home page of the “www.nodoz.com” website associated to the Domain Name contains the indication that the Domain Name “may be for sale by its owner!” and the invitation to activate hyperlink to the “www.sedo.com” website where prospective purchasers may submit their offers to purchase the Domain Name.
The Panel concludes in the circumstances that the Domain Name was primarily registered for the purpose of selling it.
Moreover, Complainant's trademark NODOZ is undoubtedly well known in the US, and it is inconceivable to this Panel that Respondent registered/acquired the Domain Name unaware of Complainant's rights in the NODOZ mark and with an intent to use it in good faith.
The “www.nodoz.com” website associated to the Domain Name also contains links to various third parties' websites advertising, amongst others, caffeine and other drowsiness relief in competition with Complainant's NODOZ products. It is now a well known practice to display on a web page various links to other commercial websites, for every link activated by an Internet user enables the host of the web page to collect financial remuneration proportional to the number of connections. Previous panels have established that this practice constitutes bad faith use (Lowen Corporation d/b/a/ Lowen Sign Company v. Henry Chan,
WIPO Case No. D2004-0430; Associazione Radio Maria v. Mr. Hong Hee Dong,WIPO Case No. D2005-0062).
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <nodoz.com> be transferred to Complainant.
Anna Carabelli Sole Panelist
Dated: February 25, 2010
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