Novartis AG v. ADMIN CONTACT / NAME FOR SALE
Claim Number: FA1808001802650
Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is ADMIN CONTACT / NAME FOR SALE (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sandozmedicinalcannabis.com>, <sandozcannabis.com>, <sandozhemp.com>, and <sandozmedicalhemp.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
James Bridgeman as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 22, 2018; the Forum received payment on August 22, 2018.
On August 23, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <sandozmedicinalcannabis.com>, <sandozcannabis.com>, <sandozhemp.com>, and <sandozmedicalhemp.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 23, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 2018 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@sandozmedicinalcannabis.com, postmaster@sandozcannabis.com, postmaster@sandozhemp.com, and postmaster@sandozmedicalhemp.com. Also on August 23, 2018, 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 September 10, 2018.
On September 17, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on its rights in the SANDOZ trademark acquired through its United States trademark registrations referred to below and its extensive use of the name and mark in its international pharmaceutical business.
Complainant submits that the disputed domain names <sandozmedicinalcannabis.com>, <sandozcannabis.com>, <sandozhemp.com>, and <sandozmedicalhemp.com> are confusingly similar to Complainant’s SANDOZ mark because they are each composed of Complainant’s mark in its entirety in combination with descriptive terms namely “hemp,” “cannabis,” “medicinal,” and/or “medical” together with the generic top-level domain (“gTLD”) extension a “.com”.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names arguing that Respondent is not authorized to use Complainant’s SANDOZ mark; that Respondent is not commonly known by the disputed domain name; and that Respondent does not use the disputed domain names in connection with any bona fide offering of goods or services or make any legitimate noncommercial or fair use of them. Rather, Respondent’s disputed domain names resolve to web pages that generate click-through revenue via unrelated hyperlinks and advertisements, largely associated with the sale of marijuana, and including references “SANDOZ tablets”.
Complainant furthermore claims that Respondent registered and is using the disputed domain names in bad faith arguing that Respondent attempts to attract, for commercial gain, users to the disputed domain names’ website which hosts pay-per-click links and advertisements. Furthermore, Complainant asserts that Respondent had actual and constructive knowledge of Complainant’s rights in the SANDOZ marks prior to registering the disputed domain names and that there is no reasonable explanation as to why the disputed domain names should have been registered except to take unfair advantage of Complainant’s reputation and goodwill.
B. Respondent
Respondent denies that the disputed domain names are identical or confusingly similar to Complainant’s SANDOZ mark arguing that the addition of the “various terms to the end of the mark” distinguishes each of the disputed domain names from Complainant’s mark.
Furthermore, Respondent argues that Complainant’s registered trademark rights to the SANDOZ mark only exist in the United States and not in Canada where Respondent owns the disputed domain names.
Respondent asserts that it has rights and legitimate interests in the disputed domain names which are a part of Respondent’s portfolio of domain names and are parked for protection of cybersquatting, exposure, revenue, sale, rent, or lease.
Respondent furthermore claims that each of the disputed domain names are used to advertise categories of goods or services that have some relation to the domain name itself; that each of the disputed domain names contain terms associated with marijuana; and that the links displayed on the webpages to which the disputed domain name resolves also contain terms associated with marijuana. Advanced Drivers Educ. Prods. & Training, Inc. v. MDNH, Inc., FA 567039 (Forum Nov. 10, 2005) (finding that the disputed domain name was not used in the trademark sense, but was “a descriptor of the site’s intended content or theme,” and therefore that complainant failed to prove that Respondent lacked any rights or legitimate interests in the disputed domain name).
Respondent denies that it has made active use of the disputed domain names in large part because The Cannabis Act which will legalize the sale of recreational marijuana in Canada will not become operative until October 17, 2018 and such sale remains illegal until then.
Respondent denies registering or using the disputed domain names in bad faith stating that the links on the webpages associated with the domain names are associated with marijuana use. Respondent in particular states that the link “Sandoz Tablet” located at the <sandozhemp.com> domain name is merely generic and would not disrupt Complainant’s business or cause any confusion.
Furthermore Respondent argues that the term “SANDOZ” is clearly a family name used by many on the Internet, and Complainant does not hold an exclusive monopoly over the term. In this regard Respondent cites the decision in Bloomberg Finance L.P. v. zhang guo jie., FA 1727926 (Forum Jun. 8, 2017) (Further even taking account of the public use which has been made of the trade mark, it is a common family name, which might remain open to use in good faith by any number of traders.)
Complainant is a member of an international group of pharmaceutical corporations with a world-wide business in the field of development, manufacture and distribution of pharmaceutical and medical products.
Complainant is the owner of a portfolio of trademark registrations for the SANDOZ mark including United States Patent and Trademark Office (“USPTO”) registration number. No. 315,685, registered on Aug. 7, 1934.
Complainant has an established Internet presence and is the owner of inter alia the internet domain name <sandoz.com> which has been registered since January 6 1993 and <sandozpharmaceuticals.com> which was registered on August 8, 2006.
Respondent is the owner of a portfolio of Internet domain names including the disputed domain names.
Each of the disputed domain names were registered on March 21, 2018 and each resolves to a very basic website with pay-per click-links related to marijuana and health-related topics such as “medical cards”, “avurvedic medicine” and “homeopathic medicines online” as well as other goods and services such as smart-phones and smart-phone accessories in the case of sandozhemp.com.
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 its trademark registrations with the USPTO (e.g., Reg. No. 315,685, registered Aug. 7, 1934).
Registration of a mark with the USPTO sufficiently confers on Complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Respondent claims that Complainant only has registration rights to the SANDOZ mark in the United States and none in Canada where Respondent owns the domain names. It is well established however that registration of a mark with any governmental authority is sufficient for establishing rights in a mark in other countries. See Viber Media S.ŕ r.l. v. Kristaps Sirmais / SIA "FUN FACTORY", FA 1626671 (Forum Aug. 4, 2015) (“Accordingly, even though Respondent reportedly resides in Latvia, the Panel finds find that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i).”). Furthermore Complainant has a global reputation and long established Internet presence.
This Panel finds therefore that Complainant has rights in the SANDOZ mark sufficient to satisfy the requirements of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s infringing domain names are identical or confusingly similar to Complainant’s mark because Respondent has added descriptive terms (“hemp,” “cannabis,” “medicinal,” and/or “medical”) and the “.com” gTLD extension to Complainant’s mark.
This Panel finds that the each of the disputed domain names are confusingly similar to Complainant’s mark; that the only distinctive element in each of the disputed domain names is Complainant’s SANDOZ mark; and that the additional elements do not in any way reduce the confusingly similar character of the domain names. The generic Top Level Domain <.com> extension may be ignored for the purposes of comparison in the present case.
Accordingly Complainant has met the requirements of the first element of the test in Policy ¶ 4(a)(i).
It is well accepted that a complainant must first make out a prima facie case that a respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to the respondent to show it has such 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)).
Respondent has not denied Complainant’s assertions that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain names prior to their registration, nor has Complainant given Respondent permission, right or license to use the SANDOZ mark in any manner.
Complainant’s submissions in this regard are supported by the information in the WHOIS and the Parties submissions and evidence in the record. The WHOIS identifies “ADMIN CONTACT / NAME FOR SALE” as the registrant. Complainant has therefore made out a prima facie case as is required.
In its defense, Respondent is essentially claiming that it has rights and legitimate interest in the disputed domain names because they are descriptive of the goods and services advertised on the websites to which they each resolve. Each of the disputed domain names contain terms associated with marijuana. The links displayed on the webpages to which each disputed domain name resolves also contain terms associated with marijuana. It further argues that it is entitled to use the family SANDOZ because the Complainant has no registered rights in the SANDOZ mark in Canada and the Complainant’s mark is in any event a family name over which the Complainant does not have a monopoly.
This Panel rejects Respondent’s arguments. It appears that Respondent is using each of the disputed domain names to resolve to webpages with pay-per-click links. It is well established that using a domain name to offer links to services unrelated to a complainant’s does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Materia, Inc. v. Michele Dinoia, FA 1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”).
Complainant has a global reputation and goodwill in the SANDOZ name acquired by its extensive use of the mark in the pharmaceutical business. Respondent has not shown any basis on which it can claim a right to use the SANDOZ mark. While SANDOZ may be a family name it is not a name used by, owned by or associated with Respondent.
Accordingly, this Panel finds that, Complainant has made out a prima facie case and Respondent has failed to discharge the burden of production as required in such circumstances.
This Panel finds that Respondent has no rights or legitimate interests in the disputed domain names and Complainant therefore succeeds in the second element of the test in Policy ¶ 4(c)(ii).
On the evidence, this Panel accepts Complainant’s claims that the registrants of the disputed domain names <sandozmedicinalcannabis.com>, <sandozcannabis.com>, <sandozhemp.com>, and <sandozmedicalhemp.com> had actual knowledge of Complainant’s SANDOZ mark at the time each of the disputed domain names were chosen and registered.
While Complainant’s SANDOZ mark is also a family name, Respondent has given no explanation as to which it was chosen as the first and dominant element of the disputed domain names. This Panel finds that in the absence of any explanation to the contrary, on the balance of probabilities the disputed domain names were created to be used to take predatory advantage of Complainant’s mark and goodwill by creating confusion among users of the Internet. This Panel notes Respondent’s citation of Bloomberg Finance L.P. v. zhang guo jie. Claim Number FA1704001727926 (Forum Jun. 8, 2017) (Further even taking account of the public use which has been made of the trade mark, it is a common family name, which might remain open to use in good faith by any number of traders). But notes that in that case the panel found that there was no evidence of registration and use in bad faith.
Since the domain names were registered, Respondent has been using them to attract and divert Internet traffic, intended for Complainant, to websites from which Respondent is receiving remuneration from pay-per-click links and advertisements unrelated to services offered by Complainant.
In reaching this conclusion this Panel notes that there is a link entitled “Sandoz Tablet” located on the website to which the <sandozhemp.com> domain name resolves. This Panel rejects Respondent’s argument that this link is merely generic and would not disrupt Complainant’s business or cause any confusion. Respondent does not give any basis for its assertion that the link is “generic”.
Furthermore given that Complainant’s trademark is the dominant element of each of the disputed domain names, on the balance of probabilities, any use of the domain names by Respondent will inevitably cause confusion among Internet users resulting in disruption to Complainant’s business.
This Panel finds therefore that each of the disputed domain names were registered and are being used in bad faith. As Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(c)(iii) also it is entitled to the reliefs sought.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that each of the <sandozmedicinalcannabis.com>, <sandozcannabis.com>, <sandozhemp.com>, and <sandozmedicalhemp.com> domain names be TRANSFERRED from Respondent to Complainant.
________________________________
James Bridgeman SC
Panelist
Dated: October 1, 2018
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