WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novartis AG v. Alexander Kravtsov
Case No. D2010-1157
1. The Parties
Complainant is Novartis AG of Basel, Switzerland represented by Pavel Guerman of Russian Federation.
Respondent is Alexander Kravtsov of Khabarovskiy kray, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <voltaren.org> is registered with Bizcn.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2010. On July 14, 2010, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the disputed domain name. On July 20, 2010, Bizcn.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 11, 2010.
The Center appointed Eduardo Machado as the sole panelist in this matter on August 13, 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 Novartis AG, the titleholder of the Russian trademark registration no. 45917 for the trademark VOLTAREN, to identify pharmaceutical products.
5. Parties’ Contentions
A. Complainant
Complainant briefly alleges that the disputed domain name is identical to the mark VOLTAREN, in which Complainant has rights.
Complainant alleges that Respondent has no rights or legitimate interests as the website hosted under the disputed domain name would only contain advertisements for counterfeited Voltaren products, and has links to different online pharmaceutical stores that sell counterfeited products, which could be dangerous for consumers’ health. Complainant contends that Respondent is not legally related to it.
Complainant contends that the disputed domain name was registered and is being used in bad faith because Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested: (i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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, Policy, paragraph 4(a).
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to Complainant’s VOLTAREN trademark. The mere addition of the gTLD .org is not sufficient to escape the finding of identity.
The Panel, therefore, finds that Complainant has established the first condition of the paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name that contains in its entirety Complainant’s VOLTAREN mark.
Complainant has made a prima facie case in support of its allegations and, therefore, the burden of proof shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name, according to paragraph 4(a)(ii) of the Policy.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared 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.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name, or a name corresponding to it, in connection with a bona fide offering of goods or services.
At the time the UDRP complaint was filed, the disputed domain name was associated with websites that offered Complaint’s Voltaren counterfeited drugs for sale, offering a potential danger to consumers. The Panel finds that this is not a bona fide offering of goods and services.
So, in view of the above, the Panel finds that Complainant has established the second condition of the paragraph 4(a) of the policy.
C. Registered and Used in Bad Faith
Under paragraph 4(b), a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s site or of a product or service offered on the respondent’s site. Policy paragraph 4(b)(iv).
The Panel finds that Respondent registered the domain name in bad faith.
Respondent has intentionally registered the disputed domain name which totally reproduces Complainant’s trademark VOLTAREN. By the time the disputed domain name was registered, Respondent had knowledge of Complainant’s rights on the trademark VOLTAREN.
Complainant’s allegations of bad faith are not contested. The documentation provided by Complainant evidences that it had long been using its VOLTAREN registered trademark when the disputed domain name was registered. The Panel finds that Respondent must have been aware of Complainant’s rights in the mark and, further, that Respondent knowingly infringed Complainant’s trademark when it registered the disputed domain name.
Also, under the Policy, it is evidence of bad faith that, “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”, Policy paragraph 4(b)(iv). Respondent used Complainant’s trademark to attract users to Respondents’ website where Complainant’s VOLTAREN counterfeited drugs are offered for sale. This is evidence of the intention by Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondents’ website or of a product or service on Respondents’ website.
In light of these, the Panel finds that Complainant has established the third element of the paragraph 4(a) of the Policy.
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 <voltaren.org> be transferred to Complainant.
Eduardo Machado
Sole Panelist
Dated: August 27, 2010
