Novartis Corporation v. PrivateManagementGroup
Claim Number: FA1101001366724
Complainant is Novartis Corporation (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is PrivateManagementGroup (“Respondent”), Mongolia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ritalin.asia>, registered with GoDaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically January 10, 2011; the National Arbitration Forum received payment January 10, 2011.
On January 10, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <ritalin.asia> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc., verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and thereby has agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 18, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 7, 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.asia. Also on January 18, 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 11, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson sits as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <ritalin.asia> , is identical to Complainant’s RITALIN mark.
2. Respondent has no rights to or legitimate interests in the <ritalin.asia> domain name.
3. Respondent registered and used the <ritalin.asia> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Novartis Corporation, manufactures and distributes medication for various medical conditions. Complainant owns the RITALIN mark and uses the mark in connection with its pharmaceutical products and services. Complainant holds a trademark registration for its RITALIN mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 517,928 issued Nov. 22, 1949).
Respondent, PrivateManagementGroup, registered the <ritalin.asia> domain name October 14, 2009. The disputed domain name resolves to a website featuring information about attention deficit disorder, commonly associated with Ritalin, and advertisements for online pharmacies purportedly selling Complainant’s medication.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 to 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 contends that it has established rights in its RITALIN mark. A Complainant that shows that it has a trademark registration for the mark in issue has established sufficient rights under the Policy. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (the complainant established rights to the MILLER TIME mark through its federal trademark registrations); See also 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).” Complainant is not required to show that it has registered the mark in the country of residency of the Respondent. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Here, Complainant holds a trademark registration for its RITALIN mark with the USPTO (Reg. No. 517,928 issued Nov. 22, 1949). Therefore, the Panel finds that Complainant demonstrated rights in its RITALIN mark through its federal trademark registration pursuant to Policy ¶ 4(a)(ii).
Complainant asserts that Respondent’s <ritalin.asia> is identical to its RITALIN mark. The disputed domain name consists solely of Complainant’s mark and only differs by the addition of the generic top-level domain (“gTLD”) “.asia.” The Panel finds that the mere affixation of a gTLD does not sufficiently distinguish the disputed domain name from Complainant’s mark. See Reebok Int’l Ltd. v. Ohno, FA 511463 (Nat. Arb. Forum Aug. 23, 2005) (holding that the <reebok.net> domain name was identical to the complainant’s REEBOK mark because it fully incorporates the mark and merely adds a generic top-level domain); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark).
The Panel finds that the <ritalin.asia> domain name is identical to Complainant’s RITALIN mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name. In Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008), the panel found that “once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.” Here, Complainant made a prima facie case to support its allegations against Respondent. Given Respondent’s failure to submit a response to the Complaint, the Panel may assume that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, this Panel still looks to the record to determine whether evidence there suggests that Respondent has rights or interest pursuant to Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the <ritalin.asia> domain name. The WHOIS information identifies Respondent as “PrivateManagementGroup,” which is not similar to the disputed domain name. Complainant asserts that it has not consented to Respondent’s use of the RITALIN mark within the domain name, and that Respondent has no rights in the mark or business interests operating under the mark. The Panel finds that Respondent is not commonly known by the <ritalin.asia> domain name according to a Policy ¶ 4(c)(ii) analysis. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent uses the disputed domain name to operate a website featuring information about attention deficit disorder and third-party links and advertisements to online pharmacies purportedly selling Complainant’s medication. Respondent likely receives click through fees from these links. The Panel finds that Respondent’s use of the identical domain name to host a website misleading Internet users to third-party pharmaceutical sites in competition with Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Complainant contends that Respondent is offering the <ritalin.asia> domain name for sale. The resolving website features the phrase, “This Site Is For Sale.” The Panel finds that Respondent’s offer of the domain name to the general public is further evidence that Respondent has no rights or legitimate interests in the disputed domain name under Policy¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant urges that Respondent registered and used the disputed domain name in bad faith. Complainant alleges that Respondent is attempting to sell the <ritalin.asia> domain name. The resolving website features the phrase: “This Site Is For Sale.” The Panel finds that Respondent’s indication that the disputed domain name is for sale is evidence to support findings of bad faith registration and use under a Policy ¶ 4(b)(i) analysis. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale).
Complainant argues that Respondent’s use of the <ritalin.asia> domain name disrupts its business within the pharmaceutical industry. Respondent uses the disputed domain name to direct Internet users to a website featuring information about attention deficit disorder and links to third-party online pharmacies, purportedly selling Complainant’s medication. Internet users intending to purchase Complainant’s medication may land on Respondent’s website due to the identical disputed domain name which contains the name of Complainant’s medication in its entirety. The third-party links on the resolving website may lead users to purchase similar medication from a competitor instead of Complainant. The Panel finds that Respondent’s use of the disputed domain name is evidence of bad faith use and registration under 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).
In such circumstances, the Panel also is permitted to make an inference that Respondent likely receives click-through fees from these third-party links to online pharmacies. Internet users searching for Complainant’s website may find Respondent’s website instead. Due to Respondent’s use of Complainant’s mark within the disputed domain name, and content on the resolving site regarding attention deficit disorder, which is commonly associated with Complainant’s medication, users may become confused as to Complainant’s association with the disputed domain name, website content, and links. Respondent attempts to profit from this confusion through the receipt of click-through fees. The Panel finds that such use of the disputed domain name to commercially gain constitutes bad faith use and registration under Policy ¶ 4(b)(iv). See 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 Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <ritalin.asia> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 24, 2011.
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