WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Novartis AG v. James H Park

Case No. D2017-2355

1. The Parties

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

Respondent is James H Park of GimHae, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <voltaren.net> (the “Domain Name”) is registered with DropCatch.com 988 LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2017. On November 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing 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 Respondent of the Complaint, and the proceedings commenced on December 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 26, 2017.

The Center appointed Michael A. Albert as the sole panelist in this matter on January 12, 2018. 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 healthcare company producing, inter alia, pharmaceuticals and the registered owner of the following trademark registrations:

- International Trademark No. 1011414, for VOLTAREN, registered on July 10, 2009, designating the Republic of Korea, among other countries, and covering goods in class 5;

- International Trademark No. 215704, for VOLTAREN, registered on December 20, 1958 (duly renewed), and covering goods in class 5.

The Domain Name was registered July 31, 2017, and resolves to a pay-per-click webpage. It was offered for sale on the webpage for USD 2,800 and on the website Afternic for USD 7,000.

Complainant became aware of Respondent’s registration of the Domain Name and on September 22, 2017, sent a cease-and-desist letter to Respondent, requesting Respondent cease the use of the Domain Name and transfer it to Complainant free of charge. On October 17, 2017, Respondent replied and proposed to transfer the Domain Name for a payment of USD 750. Subsequently, Complainant initiated the present UDRP proceeding against Respondent.

5. Parties’ Contentions

A. Complainant

Complainant claims that the Domain Name is identical or confusingly similar to its registered VOLTAREN trademarks. Complainant states it has used the trademark VOLTAREN in connection with a wide variety of products and services around the world and as such, the public has learned to perceive the goods and services offered under the trademark as being those of Complainant. Complainant asserts there is a likelihood of confusion with its trademark because the Domain Name reproduces Complainant’s trademark VOLTAREN in its entirety. Complainant asserts the trademark VOLTAREN is the sole distinctive element in the Domain Name with the addition of the “.net” generic Top-Level Domain (“gTLD”) suffix. Complainant also asserts the Domain Name <voltaren.net> is virtually identical to Complainant’s domain name <voltaren.com> which would cause diversion from Complainant’s site to that of Respondent.

Complainant also claims that Respondent has no rights or legitimate interest in the Domain Name. It asserts Respondent is not affiliated with Complainant in any way nor is Respondent authorized or licensed by Complainant to use, register, or seek registration of any domain name incorporating the VOLTAREN trademark. Complainant asserts Respondent is not known by the name “Voltaren”. Complainant alleges Respondent has no prior rights or legitimate interests in the Domain Name because the registration of the VOLTAREN trademarks precedes the registration of the Domain Name. Complainant also asserts that because the Domain Name is so similar to the VOLTAREN trademark, Respondent cannot possibly contend that it was intending to develop a legitimate activity through the Domain Name. Complainant asserts Respondent has not demonstrated use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services, because the Domain Name directs users to a parking page with pay-per-click links likely to generate revenue. Complainant claims Respondent is a cyber-squatter associated with more than 5,200 domain names replicating well-known trademarks, including other well-known pharmaceutical trademarks. Finally, Complainant states that an email server has been configured to the Domain Name, thereby indicating a risk that Respondent is engaging in a phishing scheme.

Complainant claims that the Domain Name was registered and is being used in bad faith. It states Respondent knew or should have known of Complainant’s trademark for a number of reasons. First, the trademark registrations owned by Complainant cover the Republic of Korea, home country of Respondent. Second, there can be no doubt as to Respondent’s knowledge of Complainant’s trademark because the Domain Name is too similar to Complainant’s trademark. Third, in its response to Complainant’s cease-and-desist letter, Respondent did not deny knowing Complainant and its activities, and instead made an offer to sell the Domain Name to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires Complainant to prove all three of the following elements:

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

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

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

A. Identical or Confusingly Similar

Complainant has provided evidence demonstrating that it has rights in multiple registered marks containing the term “voltaren”. The Domain Name contains Complainant’s trademark in its entirety with the addition of the gTLD “.net”. URDP panels have held that incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113. Further the addition of a gTLD suffix such as “.net” cannot render a domain name distinctive because use of a gTLD is necessary to register the domain name. Swarovski Aktiengesellschaft v. Tiphayne Decultot, WIPO Case No. D2013-1858.

The Panel finds that the Domain Name is identical or confusingly similar to Complainant’s trademark. Therefore, the Panel holds that Complainant fulfills the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Complainant must establish a prima facie case in relation to the second element under paragraph 4(a) of the Policy. MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205. Once a prima facie showing is made, the burden of production shifts to Respondent to demonstrate that it does have rights or a legitimate interest in the disputed domain name. Vertex Pharmaceuticals Incorporated v. Private Data Domains Ltd / Antonio Marzelo, WIPO Case No. D2017-0240.

Complainant has provided no license or authorization to Respondent to use any of Complainant’s trademarks or to register any domain name incorporating those marks. Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055. The disputed domain name resolves to a parking page displaying pay-per-click links, and Respondent has not demonstrated the use of or preparation to use the domain name in connection with a bona fide offering of goods or services. M.F.H. Fejlesztõ Korlátolt Felelõsségû v. Satoshi Shimoshita, WIPO Case No. D2014-1726. Complainant asserts that an email server has been configured on the Domain Name and, as such, there is a risk that Respondent is engaged in a phishing scheme. Such a phishing scheme cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. CMA CGM v. Diana Smith, WIPO Case No. D2015-1774.

Complainant’s contentions are plausible, and Respondent offers nothing in response. Thus the Panel concludes that Respondent has no rights or legitimate interests in the Domain Name, and that Complainant has established the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Complainant has submitted evidence, unchallenged by Respondent, that Respondent registered the Domain Name in bad faith because it did so with knowledge of Complainant’s rights in Complainant’s trademark and Respondent was aware of Complainant’s trademark. Depending on the circumstances, there is proof of bad faith registration where a respondent has knowledge of the complainant’s trademark rights at the time of domain name registration. ALSTOM v. Domain Investments LLC, WIPO Case No. D2008-0287; NBC Universal Inc. v. Szk.com / Michele Dinoia, WIPO Case No. D2007-0077. In this case, the reproduction of Complainant’s trademark, in its entirety, by Respondent is evidence that Respondent was aware of the existence of Complainant’s trademark. Compagnie Générale des Etablissements Michelin (Michelin) v. Ruslan Meleshenkov, WIPO Case No. D2014-0703. Further, in the circumstances, the use of the Domain Name to resolve to a pay-per-click webpage and Respondent’s offer to sell the Domain Name for USD 750 is further evidence of bad faith registration and use.

The Panel finds that Respondent registered and used the Domain Name in bad faith. Thus, Complainant has established the third condition of paragraph 4(a) of the Policy.

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 Name <voltaren.net> be transferred to Complainant.

Michael A. Albert
Sole Panelist
Date: January 23, 2018