Novartis Corporation v. Juergen Wolf
Claim Number: FA1101001366725
Complainant is Novartis Corporation (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is Juergen Wolf (“Respondent”), Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ritalin.biz>, registered with GoDaddy.com, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 10, 2011; the National Arbitration Forum received payment on January 10, 2011.
On January 10, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <ritalin.biz> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 January 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 2, 2011 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@ritalin.biz. Also on January 13, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 4, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ritalin.biz> domain name is identical to Complainant’s RITALIN mark.
2. Respondent does not have any rights or legitimate interests in the <ritalin.biz> domain name.
3. Respondent registered and used the <ritalin.biz> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Novartis Corporation, develops, manufactures and distributes medications for the treatment of a variety of medical conditions. Complainant owns a United States Patent and Trademark Office (“USPTO”) trademark registration for the RITALIN mark, which it uses in connection with its medication for attention deficit disorder (Reg. No. 517,928 issued November 22, 1949).
Respondent, Juergen Wolf, registered the <ritalin.biz> domain name on January 21, 2010. The disputed domain name resolves to a pay-per-click website that features both unrelated and competing links, such as “Natural ADHD Remedy” and “University of Phoenix.”
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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 owns a USPTO trademark registration for the RITALIN mark, which it uses in connection with its medication for attention deficit disorder (Reg. No. 517,928 issued November 22, 1949). The Panel finds that evidence of a USPTO trademark registration conclusively proves Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <ritalin.biz> domain name is identical to Complainant’s RITALIN mark as the only inconsequential difference is the addition of the generic top-level domain (“gTLD”) “.biz.” The Panel finds adding the gTLD does not substantively alter Complainant’s mark in the disputed domain name because a gTLD is a required element. See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (finding that the domain name <continentalairlines.biz> is identical to the complainant’s CONTINENTAL AIRLINES mark); see also Exxon Mobil Corp. v. Prop. Mgmt. Prof’l, FA 1059655 (Nat. Arb. Forum Sept. 25, 2007) (holding that the <exxon.biz> domain name is identical to Complainant’s EXXON mark despite the addition of the gTLD “.biz” because a “gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis”). Thus, the Panel finds that Respondent’s <ritalin.biz> domain name is identical to Complainant’s RITALIN mark according to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Abiding by the requirements of Policy ¶ 4(a)(ii), Complainant has presented a prima facie case alleging Respondent’s lack of rights and legitimate interests. As the Panel deems Complainant’s case to be sufficient, the burden to demonstrate rights and legitimate interests transfers to Respondent. In failing to respond, however, Respondent has defaulted on its obligation to show proof and thus the Panel finds it has not established rights and legitimate interests under Policy. See Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name.”); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed). The Panel will consider the evidence in the record, however, in order to independently determine whether Respondent possesses rights and legitimate interests.
Complainant contends that neither Respondent nor Respondent’s business is known by the RITALIN mark or by the <ritalin.biz> domain name. Complainant asserts that Respondent has no connection or affiliation with Complainant and that Complainant has not consented to Respondent’s use of the disputed domain name. The WHOIS information for the disputed domain name identifies the registrant as “Juergen Wolf,” a name that has no association to the disputed domain name. The Panel accordingly concludes that Respondent is not commonly known by the <ritalin.biz> domain name and does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant alleges that Respondent uses the <ritalin.biz> domain name to host a website advertising for unrelated and competing third-party websites through pay-per-clicks, such as “Natural ADHD Remedy” and “TV Production.” The Panel finds that maintaining a web directory of pay-per-click links at a domain name appropriating Complainant’s mark does not satisfy the requirements of Policy ¶ 4(c)(i) as a bona fide offering of goods or services or of Policy ¶ 4(c)(iii) as a legitimate noncommercial or fair use. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. 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).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <ritalin.biz> domain name disrupts Complainant’s business and facilitates the diversion of Complainant’s customers to competitors through pay-per-click links like “Natural ADHD Remedy” that are displayed on the resolving website. The Panel agrees with Complainant and holds that Respondent’s actions evidence bad faith registration and use according to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Complainant asserts that Respondent operates a website at the <ritalin.biz> domain name that provides links to websites featuring information about attention problems and competing “natural” pharmaceutical treatments. Complainant alleges that Respondent’s use of Complainant’s RITALIN in the disputed domain name is intended to attract consumers and profit Respondent by creating confusion about a potential association between Respondent and Complainant. The Panel finds these activities reveal Respondent’s bad faith registration and use of the <ritalin.biz> domain name under Policy ¶ 4(b)(iv). Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shouldbe GRANTED.
Accordingly, it is Ordered that the <ritalin.biz> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: February 5, 2011
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