Novartis AG v. Thanased chinorotjarhodsorn / ATXMEDIASTREAMING
Claim Number: FA2006001898499
Complainant is Novartis AG (“Complainant”), represented by Kathryn M. Eyster, North Carolina, USA. Respondent is Thanased chinorotjarhodsorn / ATXMEDIASTREAMING (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sandozacademythailand.com>, registered with Wild West Domains, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 1, 2020; the Forum received payment on June 1, 2020.
On June 2, 2020, Wild West Domains, LLC confirmed by e-mail to the Forum that the <sandozacademythailand.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC 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 June 2, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 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@sandozacademythailand.com. Also on June 2, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 25, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
1. Complainant, Novartis AG, discovers, develops, manufactures and distributes medications, vaccines, and consumer products. Complainant asserts rights in the SANDOZ mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 315,685, registered on August 7, 1934).
2. Respondent’s <sandozacademythailand.com>[i] domain name is legally equivalent and confusingly similar to Complainant’s SANDOZ mark, as it incorporates the mark in its entirety and merely adds the descriptive terms “academy” and “Thailand” along with the “.com” generic top-level domain (“gTLD”).
3. Respondent lacks rights or legitimate interests in the <sandozacademythailand.com> domain name.
4. Respondent is not commonly known by the domain name and is not affiliated with Complainant or its SANDOZ mark.
5. Respondent registered and uses the <sandozacademythailand.com> domain name in bad faith. Respondent’s use of Complainant’s mark signals an intent to deceive and create confusion and attract Internet users.
6. Additionally, Respondent had knowledge of Complainant’s rights in the mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SANDOZ mark. Respondent’s domain name is confusingly similar to Complainant’s SANDOZ mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <sandozacademythailand.com> domain name and that Respondent registered and uses the domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "t 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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the SANDOZ mark through its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in the 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).”). Complainant provides evidence of its registration with the USPTO (e.g., Reg. No. 315,685, registered on August 7, 1934). Therefore, Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <sandozacademythailand.com> domain name is confusingly similar to Complainant’s mark because the domain name incorporates the SANDOZ mark in its entirety and merely adds the terms “academy” and “Thailand” and the “.com” gTLD. The addition of a generic or descriptive term and a gTLD is not sufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); see also General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) (finding respondent’s <gm-uzbekistan.com> domain name confusingly similar to complainant’s GM mark as the addition of the geographic term “uzbekistan” is inconsequential to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel holds that the <sandozacademythailand.com> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <sandozacademythailand.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <sandozacademythailand.com> domain name, as Respondent is not commonly known by the domain name and has not been authorized to use the SANDOZ mark. Where a response is lacking, relevant WHOIS information can be used to determine if a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by that name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the <sandozacademythailand.com> domain name lists the registrant as “Thanased chinorotjarhodsorn / ATXMEDIASTREAMING” and nothing in the record indicates that Respondent is licensed to use Complainant’s mark or is commonly known by the <sandozacademythailand.com> domain name. Therefore, the Panel may find Respondent is not commonly known by the <sandozacademythailand.com> domain name per Policy ¶ 4(c)(ii).
Complainant further argues Respondent’s lack of rights or legitimate interests in the <sandozacademythailand.com> domain name is shown by its failure to use the name for bona fide offering of goods or services, or legitimate noncommercial or fair use. Rather, the evidence shows that Respondent is attempting to create the impression of association with Complainant to trade off the good will associated with Complainant. Attempting to create a false affiliation to divert Internet users seeking Complainant’s website is not a bona fide offering or legitimate use under Policy ¶ 4(c)(i) and (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Therefore, the Panel agrees with Complainant and finds that Respondent has does not have rights or legitimate interests in the <sandozacademythailand.com> domain name per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues Respondent registered and uses the <sandozacademythailand.com> domain name in bad faith. Specifically, Complainant claims that Respondent’s use of Complainant’s well known mark and stylized corporate logo signals an intent to deceive or mislead consumers. Use of a domain name to pass off as a complainant for commercial gain is evidence of bad faith under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”). Complainant argues that Respondent intentionally targeted the SANDOZ mark to create a likelihood of confusion in order to attract Internet users familiar with Complainant for Respondent’s own gain. The Panel agrees and holds that Respondent registered and uses the <sandozacademythailand.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Additionally, Complainant contends that Respondent registered the <sandozacademythailand.com> domain name with actual knowledge of Complainant’s rights in the SANDOZ mark due to Complainant’s longstanding use of the mark. Evidence of actual knowledge of a complainant’s rights in a mark may support a finding of bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Based on the notoriety of the SANDOZ mark, and its long-standing use by Complainant, the Panel holds that Respondent registered and uses the <sandozacademythailand.com> domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(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 <sandozacademythailand.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 29, 2020
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