Novartis AG v. Taslim Abir / Sandoz Bangladesh Limited
Claim Number: FA2008001907747
Complainant is Novartis AG (“Complainant”), represented by Kathryn M. Eyster of Tepper & Eyster, PLLC, United States. Respondent is Taslim Abir / Sandoz Bangladesh Limited (“Respondent”), represented by Morshed Mir, Bangladesh.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sandozbd.com>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Flip Petillion as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 10, 2020; the Forum received payment on August 10, 2020.
On August 10, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <sandozbd.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 13, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 2, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@sandozbd.com. Also on August 13, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on August 24, 2020.
On August 27, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Flip Jan Claude Petillion as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant explains that it discovers, develops, manufactures and distributes medications, vaccines and consumer products on a global basis. Complainant argues to have rights in the SANDOZ mark through registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 315,685, registered Aug. 7, 1934). See Compl. Ex. 2. Complainant considers that Respondent’s <sandozbd.com> domain name is confusingly similar to Complainant’s mark as Respondent adds the generic term “bd” and the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
Complainant submits that the Respondent has no rights or legitimate interests in the <sandozbd.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Complainant argues, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is hosting pay-per-click hyperlinks with an intent of diverting Internet users seeking Complainant’s goods or services.
Complainant considers that Respondent registered and used the <sandozbd.com> domain name in bad faith. Specifically, Respondent had actual or constructive knowledge of Complainant’s rights in the SANDOZ mark at the time of registration, according to Complainant. Additionally, Complainant argues, Respondent attempts to divert Internet users seeking information about Complainant. No plausible explanation exists for copying the Complainant’s trademark except for the purpose of creating a likelihood of confusion with and trade on the goodwill of the Complainant.
B. Respondent
Respondent advances to operate a company called Sandoz Bangladesh Ltd. Respondent explains that this company is registered as a limited company with the appropriate government agency in Bangladesh. The <sandozbd.com> domain name is not confusingly similar to Complainant’s mark according to Respondent, as the parties’ trade or service marks or not the same.
Respondent argues to have rights and legitimate interest in the disputed domain name as Respondent operates a company with the same name. Respondent submits it did not register and does not use the <sandozbd.com> domain name in bad faith.
Complainant, Novartis AG, is a globally active pharmaceutical and healthcare company. Complainant has rights in the SANDOZ mark based upon registrations with the USPTO (e.g Reg. No. 315,685, registered Aug. 7, 1934 in classes 1, 2 and 5). See Compl. Ex. 2.
The disputed domain name was created on April 9, 2020. The registrar NameCheap, Inc. identified Respondent as Taslim Abir/Sandoz Bangladesh Limited.
The disputed domain name refers to a parking page including links related to the pharmaceutical sector, such as links referencing competitors of the Complainant and links referencing a variety of diseases treated by Complainant’s medications.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant claims rights in the SANDOZ mark through registrations of the mark with the USPTO (e.g., Reg. No. 315,685, registered Aug. 7, 1934). See Compl. Ex. 2. Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the Complainant has rights in the SANDOZ mark under Policy ¶ 4(a)(i).
Complainant argues Respondent’s <sandozbd.com> domain name is confusingly similar to Complainant’s mark as Respondent adds the generic term “bd” and the “.com” gTLD to Complainant’s mark. Adding a generic term and a gTLD to a complainant’s mark is usually not sufficient to distinguish a disputed domain name form the mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). Here, Complainant asserts that the term “bd” may refer to the country code of Bangladesh or a pharmacy abbreviation to inform patients to take the medication twice daily. The confusing nature of this additional term will likely bear on the assessment of the second and third elements of the Policy. In any event, Complainant’s distinctive SANDOZ mark is clearly recognizable within the <sandozbd.com> domain name and the addition of the term “bd” is not sufficient to distinguish the disputed domain name from Complainant’s mark. Therefore, the Panel finds that Respondent’s <sandozbd.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <sandozbd.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s SANDOZ mark. Lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The Panel notes that the WHOIS of record identifies the Respondent as “Taslim Abir / Sandoz Bangladesh Limited” and no information in the record indicates that Respondent was authorized to use Complainant’s mark.
Moreover, as mentioned above, Complainant asserts that the term “bd” may be the country code of Bangladesh, or a pharmacy abbreviation to inform patients to take the medication twice daily. Where a domain name consists of a trademark plus an additional term (at the second or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. In the present case, the Panel finds that the term “bd” may increase the likelihood of confusion for potential customers researching the Complainant’s activities and product availability. Therefore, the <sandozbd.com> domain name carries a risk of implied affiliation with the Complainant.
Although included under Complainant’s arguments related to bad faith, Complainant also argues that Respondent fails to use the <sandozbd.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use and instead uses the disputed domain name to host pay-per-click hyperlinks related to the Complainant’s business with an intent of diverting Internet users seeking Complainant’s goods or services. Using a confusingly similar domain name to divert Internet users seeking a complainant’s goods or services to a website that hosts pay-per-click hyperlinks is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). Here, Complainant provides screenshots of the <sandozbd.com> domain name’s resolving webpage, which shows hyperlinks related to the pharmaceutical sector, such as links referencing competitors of the Complainant and links that Complainant argues are referencing a variety of diseases treated by Complainant’s medications See Compl. Ex. 5.
Therefore, the Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. The burden therefore shifts to Respondent to come forward with evidence of its rights or legitimate interests.
Respondent argues it has rights and legitimate interest in the disputed domain name as Respondent operates a company under the name Sandoz Bangladesh Ltd. Respondent provides proof of the incorporation of this company under the name Sandoz Bangladesh Ltd.
While such company name may in certain circumstances provide rights or legitimate interests in a domain name, in this case Respondent fails to prove use or preparations to use the <sandozbd.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent also fails to prove any activity under the name Sandoz Bangladesh Ltd. Therefore, the Panel finds that Respondent fails to meet its burden of proof. The Panel concludes that Respondent has no rights or legitimate interests in the <sandozbd.com> domain name.
Complainant argues Respondent registered and used the <sandozbd.com> domain name in bad faith. Specifically, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant’s rights in the SANDOZ mark at the time of registering the <sandozbd.com> domain name. In the present case, the Panel finds it is inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the disputed domain name. The disputed domain name includes Complainant’s distinctive and well-known trademark in its entirety, and the parking page linked to the disputed domain name contains links related to the Complainant’s business or competitors. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). The Panel finds that Respondent’s knowledge of Complainant’s rights in the SANDOZ mark supports a finding of bad faith under Policy ¶ 4(a)(iii).
As mentioned before, the <sandozbd.com> domain name refers to a parking page containing links related to the pharmaceutical sector, such as links referencing competitors of the Complainant. Registering a disputed domain name hosting competing pay-per-click hyperlinks to divert Internet users away from a complainant’s legitimate website is further evidence of bad faith under Policy ¶ 4(b)(iii)). See Independent Insurance Agents & Brokers of America, Inc. v. Liqian, FA1409001582252 (Forum Nov. 10, 2014) (concluding that because the complainant operated in the insurance business and the respondent was using the disputed domain name to display hyperlinks that ultimately promoted insurance companies and quote rates, the respondent was disrupting the complainants business and demonstrating bad faith registration and use of the domain name under Policy ¶ 4(b)(iii)). Respondent did not provide any explanation about its use or future plans to use the disputed domain name. The Panel finds that by using the disputed domain name incorporating Complainant’s trademark in connection with a website containing sponsored links to products and services relating to Complainant, its competitors and pharmaceutical products and services, Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s trademark. Therefore, the Panel finds Respondent registered and used the <sandozbd.com> domain name in bad faith under Policy ¶ 4(b)(iii))
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sandozbd.com> domain name be TRANSFERRED from Respondent to Complainant.
Flip Petillion, Panelist
Dated: September 4, 2020
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