Novartis AG v. Sandoz India
Claim Number: FA1906001850261
Complainant is Novartis AG (“Complainant”), represented by Kathryn M. Eyster of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is Sandoz India (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sandozindia.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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 28, 2019; the Forum received payment on June 28, 2019.
On June 28, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <sandozindia.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 July 2, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 2019 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@sandozindia.com. Also on July 2, 2019, 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 July 26, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
Complainant discovers, develops, manufactures and distributes medications, vaccines and consumer products on a global basis. Complainant has rights in the SANDOZ trademark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 315,685 registered Aug. 7, 1934). Respondent’s <sandozindia.com> domain name is confusingly similar to Complainant’s SANDOZ trademark as the domain name contains the trademark in its entirety and adds the geographic descriptor “India” along with the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <sandozindia.com> domain name as Respondent is not commonly known by the disputed domain name.
Respondent registered and is using the <sandozindia.com> domain name in bad faith by creating a likelihood of confusion with Complainant’s trademark. Respondent had constructive or actual knowledge of Complainant’s rights in the SANDOZ trademark prior to registering and subsequently using the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 315,685 SANDOZ (word), registered August 7, 1934 for goods in classes 1, 2 and 5;
No. 4,179,672 SANDOZ (word), registered July 24, 2012 for services in class 42;
No. 3,030,053 SANDOZ (word), registered December 13, 2005 for goods in class 5;
No. 3,152,875 S SANDOZ (fig), registered October 10, 2006 for goods in class 5;
No. 4,566,018 S SANDOZ (fig), registered July 15, 2014 for goods in class 14; and
No. 5,186,841 SANDOZ CUSTOMER CONNECT (word), registered April 18, 2017 for services in class 35.
Respondent registered the <sandozindia.com> domain name on June 22, 2019.
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.
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”).
The Complainant claims rights in the SANDOZ trademark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in the trademark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with a copy of its USPTO registration for the SANDOZ trademark (e.g. Reg. No. 315,685 registered Aug. 7, 1934). Therefore, the Panel finds that Complainant has rights in the SANDOZ trademark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <sandozindia.com> domain name is confusingly similar to the SANDOZ trademark as the domain name contains the trademark in its entirety and only adds the geographic descriptor “India” along with the “.com” gTLD. The additions of a geographic term and gTLD to a trademark does not distinguish a domain name from a trademark per Policy ¶ 4(a)(i). See Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶4(a)(i) analysis.”); see also Roche Therapeutics Inc. v. Williams Shorell, FA 1684961 (Forum Aug. 30, 2016) (“Complainant asserts Respondent’s <boniva.top> domain name is identical to the BONIVA mark. The addition of a generic top level domain to a mark does not differentiate the domain from said mark under Policy ¶ 4(a)(i).”). Therefore, the Panel agrees and finds that Respondent’s <sandozindia.com> domain name is confusingly similar to Complainant’s SANDOZ trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 lacks rights and legitimate interests in the <sandozindia.com> domain name because Respondent is not authorized or permitted to use Complainant’s SANDOZ trademark and is not commonly known by the disputed domain name. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the 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 WHOIS information for the disputed domain name identifies the registrant as “Sandoz India”. In normal case, this could indicate that Respondent had a business name that was identical with the disputed domain name and thereby legitimate interest to the said domain name. However, in this case it is also noted that Respondent used a WHOIS protection services – thereby indicating that Respondent has something to hide when it comes to Respondent’s pure identity - and further has used <sandozindia.com> for a webpage that clearly is created in order to give the false impression that the connected webpage is the Complainant’s local Indian site for the SANDOZ trademark. The Respondent provides no affirmative evidence in support of the identity as “Sandoz India” and no evidence in the record suggests that Respondent is authorized to use the SANDOZ trademark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to a webpage that uses Complainant’s logo and trademark in an attempt to divert internet users. Use of a domain name to divert internet users to by creating the appearance that some sort of affiliation exists is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (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 finds that Respondent fails to make a bona fide offering of goods or services of legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent registered and used the <sandozindia.com> domain name in bad faith by creating a likelihood of confusion with Complainant’s trademark. Use of a disputed domain name to include a famous trademark to create a likelihood of confusion for commercial gain may be evidence of bad faith per Policy ¶ 4(b)(iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain). As described above, it is indeed clear that Respondent has made every step in order to create the false impression that the domain name and connected website is related to the Complainant. The Panel finds that Respondent has engaged in bad faith registration and use per Policy ¶ 4(b)(iv).
Lastly, Complainant argues that Respondent had constructive or actual knowledge of Complainant’s rights in the SANDOZ mark by trying to create a similar website design to Complainant. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, actual knowledge of Complainant’s rights in the trademark prior to registering the disputed domain name is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Use of a disputed domain name to copy or imitate a complainant may be evidence of actual knowledge of a complainant’s rights a mark per Policy ¶ 4(a)(iii). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the SANDOZ trademark which constitutes bad faith per 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 <sandozindia.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: August 5, 2019
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