WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Novartis AG v. Radu Luca

Case No. D2017-0793

1. The Parties

The Complainant is Novartis AG of Basel, Switzerland, of Switzerland, represented by Dreyfus & associés, France.

The Respondent is Radu Luca of Bucuresti, Romania.

2. The Domain Name and Registrar

The disputed domain name <ritalin-online.com> (the "Domain Name") is registered with DomainContext, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 20, 2017. On April 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 24, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Registrar informed the Center that the language of the Registration Agreement for the Domain Name was Russian. On April 26, 2017, the Center sent the the language of the proceedings document in both English and Russian, and invited the Complainant to state its position on this issue by April 29, 2017, and the Respondent by May 1, 2017. On April 26, 2017, the Complainant submitted the amended Complaint, which contained a request that English be the language of the proceeding. The Respondent did not submit any comments on the language issue.

The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 24, 2017.

The Center appointed Olga Zalomiy as the sole panelist in this matter on June 1, 2017. 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

The Complainant is a global healthcare company headquartered in Switzerland. The Complainant owns RITALIN trademark registrations around the world, such as European Union trademark RITALIN n° 002712818, filed on May 27, 2002 and registered on January 8, 2004 and duly renewed, covering goods in class 5. In 2000, the Complainant also registered two domain names reflecting its RITALIN trademark: <ritalin.org> and <ritalin.com>.

The Respondent registered the Domain Name on November 22, 2016. The Domain Name <ritalin-online.com> resolves to a page commercializing RITALIN products without prescription. The page also contains pictures of Complainant's products (Annex 1 of the Complaint). The website is offering imitations of the products which can be hazardous for consumer's health.

On January 4, 2017, the Complainant sent a cease and desist letter to the Respondent notifying him about the Complainant's rights in the RITALIN trademark, reminding him that he had already been subject to two UDRP proceedings involving the same Complainant and demanding that the Respondent ceased the use of the Domain Name. The Respondent failed to reply to the letter and to comply with the Complainant's demands.

5. Parties' Contentions

A. Complainant

The Complainant claims that the Domain Name is confusingly similar to the Complainant's trademark. The Complainant contends that it owns numerous trademark registrations for the RITALIN trademark and two domain name registrations reflecting the mark. The Complainant argues that the Domain Name incorporates the Complainant's widely known mark in its entirety and such incorporation may be sufficient to establish that the Domain Name is confusingly similar to its mark. The Complainant claims that adding a generic word or hyphen does not influence finding a confusing similarity between the Domain Name and the Complainant's RITALIN trademark. The Complainant points out that the likelihood of confusion is reinforced by the website to which the Domain Name directs. The Complainant claims that the website commercializes RITALIN product without prescription and contains pictures of Complainant's products. Finally, the Complainant claims that the generic Top-Level domain ".com" ("gTLD") should not be taken into consideration when examining confusing similarity between the Domain Name and the Complainant's trademark.

The Complainant claims that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant alleges that the Respondent is not affiliated with the Complainant and has not been authorized by the Complainant to use and register its trademark or to register any domain names incorporating the RITALIN trademark. The Complainant argues that the Respondent has no rights or legitimate interests in the Domain Name preceding the Complainant's rights because the Complainant registered its trademark many years before the Respondent registered the Domain Name. The Complainant contends that the Respondent did not demonstrate use of the Domain Name in connection with a bona fide offering of goods or services, because the Domain Name resolves to a website commercializing RITALIN products sold without a prescription along with products of the Complainant's competitors. The Complainant claims that the Respondent is making a non-legitimate use of the Domain Name with the intent for commercial gain to misleadingly divert customers from the Complainant's official website. The Complainant emphasizes that the Respondent is selling fake items that could be hazardous to people's health.

The Complainant claims that the Domain Name was registered and is being used in bad faith. The Complainant argues that it is implausible that the Respondent was unaware of the Complainant when he registered the Domain Name because the Complainant's trademark is widely known. Furthermore, the Complainant claims that the Domain Name resolves to a website commercializing Complainant's products, which conforms the Respondent's knowledge of the Complainant and the Complainant's trademarks. The Complainant claims that its investigation revealed that the Respondent have registered several domain names, one of which reproduces the Complainant's famous trademark ADDERALL and another one incorporates a trademark of the Complainant's competitor. The Complainant claims that the Respondent has been a respondent in three prior UDRP proceedings involving the Complainant. The Complainant argues that bad faith registration of the Domain Name may be inferred from the Complainant's registration of the Domain Name incorporating the Complainant's well-known trademark. The Complainant alleges in absence of any license or permission from the Complainant to use such widely known mark as RITALIN, no actual or contemplated bona fide or legitimate use of the Domain Name could reasonably be claimed. The Complainant contends that the Respondent registered the Domain Name to prevent the Complainant from reflecting its RITALIN trademark in the Domain Name. The Complainant claims that it is likely that the website connected to the Domain Name is offering for sale imitations of the products that can be hazardous for consumers' health. Finally, the Complainant claims that the Respondent's primary motive in registering and using the Domain Name was to capitalize on or to take advantage of the Complainant's trademark through the creation of the initial interest of confusion.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

6.1. Language of the proceeding

Paragraph 11(a) of the Rules provides that: "Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."

Because the language of the Registration Agreement for the Domain Name is Russian, the default language of the administrative proceeding would be Russian. However, the Complainant contends that the registration agreement for the Domain Name also exists in English and the registration agreement for the Domain Name may thus be English or Russian.

In addition, the Complainant requested that the language of the proceeding be English because forcing the Complainant to translate the documents in this proceeding into Russian, the language, which the Complainant does not know, will put undue financial burden on the Complainant and will result in undue delay. The Complainant also points out that the Domain Name includes only Latin characters, which strongly suggests that the Respondent has knowledge of languages other than Russian. Finally, the Complainant claims that English is the primary language for international relations and it is one of the working languages of the Center.

The Panel accepts the Complainant's arguments. Previous UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. "Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant's mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names."¹

Some of such scenarios are present in this case. Here, the Respondent has registered domain names that incorporated the Complainant's RITALIN trademarks in the past. Those domain names were subject to three prior UDRP proceedings. Prior UDRP panels determined that the domain names resolved to websites in languages other than Russian. See, Novartis AG v. Radu Luca, WIPO Case No. D2016-0087, Novartis AG v. Radu Luca, WIPO Case No. D2016-2582, Novartis AG v. Radu Luca, WIPO Case No. D2015-1029. All three prior proceedings involving the Respondent and the Complainant were conducted in English. Id. Although in one of the three cases the language of the registration agreement for the disputed domain name was Russian, the panel determined that it was fair to conduct the proceeding in English. Novartis AG v. Radu Luca, WIPO Case No. D2015-1029. Therefore, the Panel finds that it is likely that the Respondent is proficient in English and would not be unfairly prejudiced by use of English as the language for this proceeding. Instead, forcing the Complainant to translate the Complaint and supporting documents into Russian will impose undue financial burden on the Complainant and delay resolution of the dispute.

In addition, on April 26, 2017, the Center notified the parties in both Russian and English of the potential language issue, inviting the Complainant to either translate the Complaint or to submit a supported request that the Complaint be accepted in language filed, and that such be the language of proceedings, and similarly providing the Respondent with an opportunity to comment on or object to any such language request that may be made by the Complainant. In response, the Complainant submitted the amended Complaint with a request that the present proceedings be conducted in English and the Respondent did not object to the Complainant's request.

Therefore, based on the circumstances of the case, the Panel grants the Complainant's request that English be the language of this proceeding.

6.2. General discussion

Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and

(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).

A. Identical or Confusingly Similar

Under the first UDRP element, the Complainant is required to prove that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant has established its rights in the RITALIN trademark by submitting a copy of the European Union trademark registration for the RITALIN mark, n° 002712818, filed on May 27, 2002 and registered on January 8, 2004 and duly renewed, covering goods in class 5. Pursuant to Paragraph 1.2.1 of the WIPO Overview 3.0, "[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case".

It is well-established that the test for confusing similarity "typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name."² "Where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing."³ "Where trademark is recognizable within the disputed domain name, the addition of other terms … would not prevent finding of confusing similarity".⁴ Furthermore, "the broader case context such as website content trading off the complainant's reputation, or a pattern of multiple respondent domain names targeting the complainant's mark within the same proceeding, may support a finding of confusing similarity."⁵

Here, the Domain Name consists of the Complainant's RITALIN trademark, a generic word "online", a hyphen and the gTLD suffix ".com". A side-by-side comparison of the Domain Name shows that the Domain Name incorporates the Complainant's well-known trademark in its entirety and the RITALIN trademark is easily recognizable in the Domain Name. As a result, the addition of the generic word "online" and the "hyphen" do not prevent finding of confusing similarity. The addition of the gTLD ".com" is disregarded under the confusing similarity test⁶. The fact that the Domain Name resolves to a website containing pictures of the Complainant's RITALIN drug and offering the drug for sale without prescription, supports finding of confusing similarity.

Thus, the Domain Name is identical or confusingly similar to the Complainant's RITALIN mark and the first element of the UDRP has been satisfied.

B. Rights or Legitimate Interests

Under the second UDRP element, a complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the respondent⁷. Once the Complainant has made out the prima facie case, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name⁸. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.⁹

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name because the Complainant has not authorized the Respondent to use and register the Complainant's RITALIN trademark, or to register any domain names incorporating the RITALIN mark, or to use photographs of the Complainant's product on the Respondent's website. Previous UDRP panels have found that in the absence of any license or permission from a complainant to use complainant's trademarks, no bona fide or legitimate use of the domain name could reasonably be claimed. See, LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com, Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138.

The Complainant contends that Respondent has no rights or legitimate interest in the Domain Name preceding those of the Complainant. The evidence on file shows that the Complainant registered its RITALIN trademark many years prior to the Respondent's registration of Domain Name.

The Complainant claims that the Domain Name is so similar to the Complainant's well-known trademark that the Respondent could not have possibly used the Domain Name for any bona fide offering of goods or services. The Panel finds this claim plausible especially in light of the previous three UDRP proceedings between the same parties that also concerned domain names incorporating the Complainant's RITALIN mark. See, Novartis AG v. Radu Luca, WIPO Case No. D2016-0087, Novartis AG v. Radu Luca, WIPO Case No. D2016-2582, Novartis AG v. Radu Luca, WIPO Case No. D2015-1029.

The Panel also finds that there is no evidence of the Respondent's use, or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. The Complainant argues that the Domain Name directs to a website, which offers for sale RITALIN products without prescription as well as competitor's products. The evidence on file shows that the Domain Name resolves to a website, which offers for sale the Complainant's drugs without prescription. Such use is not bona fide.

Prior UDRP panels 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". Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 citing to Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199 (where the panel found that the registrant had no legitimate interest in its domain name where the registrant was using its domain name <wwwpfizer.com> to redirect Internet users to an on-line pharmacy). "[T]he 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." Novartis AG v. Radu Luca, WIPO Case No. D2015-1029. Here, the Respondent is using the Domain Name to redirect Internet users to a website offering RITALIN or fake products under the RITALIN mark and other drugs for sale without prescription. Such sales may be dangerous for consumers' health and such use does not create any rights or legitimate interests in the Domain Name for the Respondent.

The Panel therefore finds that the Complainant has made out a prima facie case in respect to the Respondent's lack of rights or legitimate interests in the Domain Name. Since the Respondent failed to rebut the Complainant's case, the Panel holds that the second element of the UDRP has been satisfied.

C. Registered and Used in Bad Faith

Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.

Pursuant to paragraph 4(b) of the UDRP, any one of the following non-exclusive scenarios constitutes evidence of a respondent's bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 the respondent's 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 on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.

First, the Complainant claims that the Respondent registered the Domain Name in bad faith because it "knew or should have known" of the Complainant's well-known trademark. Prior UDRP panels inferred the respondent's knowledge of complainant's trademarks, where, like here, the complainants marks were widely known and "a respondent could not credibly claim to have been unaware of the mark".¹⁰ Here, the Respondent was clearly aware of the Complainant's widely known RITALIN trademark because he registered several domain names containing the Complainant's widely known RITALIN mark in the past and because it used photographs of the Complainant's RITALIN product on the website connected to the Domain Name.

Second, the Panel finds that the Respondent registered and used the Domain Name in bad faith, because the Respondent has been engaged in a pattern of registering domain names preventing the Complainant from reflecting its RITALIN mark in corresponding domain names as contemplated in paragraph 4(b)(ii) of the UDRP. Prior UDRP panels have held that "establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration"¹¹, such as a situation where, like here, "a respondent, on separate occasions, has registered trademark-abusive domain names, even where directed at the same brand owner.¹² The evidence on files shows that the Respondent has been a respondent in three prior UDRP cases concerning registration of abusive domain names incorporating the Complainant's RITALIN mark. See, Novartis AG v. Radu Luca, WIPO Case No. D2016-0087, Novartis AG v. Radu Luca, WIPO Case No. D2016-2582, Novartis AG v. Radu Luca, WIPO Case No. D2015-1029.

Third, the Panel finds that the Respondent is using the Domain Name in bad faith because it intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website by creating likelihood of confusion with the Complainant's mark as to the affiliation or endorsement of either the Respondent or its website. First, It is well-established, that the registration of a well-known mark as a domain name is clear indication of bad faith in itself, even without considering other elements. See The Gap, Inc. v Deng Youqian, WIPO Case No. D2009-0113. Prior UDRP panels held that the Complainant's RITALIN trademark is widely known and connected to the Complainant¹³. Second, the Respondent has made several attempts to trade on the fame of the Respondent's product and he is doing it again by using the Domain Name, incorporating the RITALIN mark to direct to the website, which offers for sale the Complainant's products along with products of its competitors. The Respondent is using pictures of the Complainant's RITALIN Products to exacerbate the confusion.

Therefore, the Panel finds that the Domain Name was registered and is being used in bad faith. The third element of the UDRP has been proved.

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 disputed domain name, <ritalin-online.com> be transferred to the Complainant.

Olga Zalomiy
Sole Panelist
Date: June 14, 2017

¹Paragraph 4.5.1, Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").

²Paragraph 1.7, WIPO Overview 3.0.

³ Id.

⁴Paragraph 1.8, WIPO Overview 3.0.

⁵Paragraph 1.7, WIPO Overview 3.0.

⁶Paragraph 1.11.1, WIPO Overview 3.0.

⁷Paragraph 2.1, WIPO Overview 3.0.

⁸Id.

⁹Id.

¹⁰Paragraph 3.2.2., WIPO Overview 3.0.

¹¹Paragraph 3.1.2., WIPO Overview 3.0.

¹²Id.

¹³Novartis AG v. Radu Luca, WIPO Case No. D2016-0087