Complainant is Novo Nordisk A/S of Bagsvaerd, Denmark, represented internally.
Respondent is Zigmond Levin of Tzfat, Israel.
The disputed domain name <nextdayprandin.com> is registered with Realtime Register B.V.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2012. On March 2, 2012, the Center transmitted by email to Realtime Register B.V. a request for registrar verification in connection with the disputed domain name. On March 5, 2012, Realtime Register B.V. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 27, 2012.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on March 30, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
According to paragraph 11(a) of the Rules, “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. In the present case, the Registration Agreement is in English and the parties have not agreed to use another language. Respondent has not replied to the Complainant. Therefore, the language of the registration agreement shall dictate the language of the proceeding. Thus, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding be English.
Complainant is Novo Nordisk A/S, a Danish company which has its headquarters in Denmark. Complainant portrayed itself as being the leader in diabetes cares. Complainant has subsidiaries all over the world and notably in France and in the United States of America and employs more than 32,600 employees. Complainant is listed on NASDAQ OMX Copenhagen and on the New York Stock Exchange. Novo Nordisk A/S is the result of a merger which took place as early as 1989.
Complainant is at the forefront of diabetes cares and defends the irenic goal of easing the access to diabetes care all over the world including developing countries. This deep concern to fight against the plague which is the diabetes epidemic is at the cornerstone of its activities since its inception.
Complainant owns miscellaneous registered trademarks all over the world incorporating the sign “Novo Nordisk.”
Complainant also happens to be the owner of another trademark which bears on the sign “Prandin.” To be more accurate the drug “Prandin” is a non-insulin oral anti-diabetic agent that lowers the blood glucose levels in patients by stimulating the release of insulin from the pancreas. To give a glimpse of Complainant’s trademark portfolio the Panel can quote the following registrations which were enclosed within Complainant’s records:
- United States trademark PRANDIN, No. 2330531 registered on March 21, 2000, duly renewed on March 22, 2010 and covering goods in class 5;
- Community Trade Mark PRANDIN, No. 000485987 registered on April 7, 1999, duly renewed on April 8, 2007 and covering goods in class 5.
It occurs that Complainant owns miscellaneous domain names through which it communicates on its activities incorporating the trademark NOVO NODISK and of utmost importance, the PRANDIN trademark:
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<novonordisk.com> |
Created on September 21, 1998 |
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<prandin.com> |
Created on April 17, 1998 |
After a cursive research made by the Panel, it can be taken for granted that the domain name <novonordisk.com> really resolves to the official website of Complainant. The domain name <prandin.com> however, redirects Internet users towards the website “www.novo-pi.com” which displays a notice of the medicine “Prandin” in the pdf format. It occurs that the domain name <novo-pi.com> is owned by Novo Nordisk Inc and not by Complainant.
When Complainant noticed that the disputed domain name <nextdayprandin> was registered and used it decided to contact Respondent and to request him to transfer the disputed domain name. Nonetheless, Respondent did not bring the proof of the amicable settlement stage. It is rather likely that Complainant contacted Respondent by a cease-and-desist letter requesting the transfer of the disputed domain name.
Respondent is Zigmond Levin, an Israeli citizen, Gisha-Abuse being the administrative contact for the disputed domain name. In the annexes enclosed in Complainant’s argumentation a screenshot of Respondent’s website shows up that on March 2, 2012, the disputed domain name <nextdayprandin.com> redirected towards an online pharmacy where Internet users can purchase the Prandin medicine without prescription. The concerned registrar Realtime Register B.V. confirmed that that the disputed domain name was registered on April 2, 2011. There is no information of any kind on the business activity run by Zigmond Levin. The Panel notes that Respondent has not been a party in recent UDRP proceedings. Lastly, the website to which the disputed domain name resolves is currently inactive.
Complainant contends that the disputed domain name is confusingly similar to the PRANDIN trademark in which Complainant has rights because the only difference is the addition of the generic and descriptive words ”next” and “day”. Complainant states that a former WIPO UDRP panel found that the addition of the very same terms, “next” and “day” to a drug trademark does not alleviate the confusing similarity to the trademark. (See Sanofi-aventis v. Whoisguard, tvforever, michael trinidad, WIPO Case No. D2009-1671 <ambien-next-day.info>). Complainant further alleges that the presence of the “.com” extension should be disregarded in the finding of confusing similarity according to the established and recognized principle under the UDRP.
Moreover, Complainant highlights that Respondent does not have any rights or legitimate interests in the disputed domain name <nextdayprandin.com>. Respondent is not commonly known under the “prandin” name. Given the fact that the disputed domain name redirects to a website with hyperlinks towards an online pharmacy where the PRANDIN medicine can be purchased by customers, Respondent’s use of the disputed domain name cannot be deemed as being a bona fide offering of goods or services.
Lastly, Complainant points out that given the distinctiveness and the intensive use of the PRANDIN trademark, Respondent was aware of the existence of Complainant and its trademark when it registered the disputed domain name. As a result, the registration of the disputed domain name <nextdayprandin.com> was made in bad faith. As far as the use of the disputed domain name is concerned Complainant contends that Respondent attempted to lure Internet users to his online pharmacy. The sole goal of Respondent was to derive economic profit from such a likelihood of confusion, and thus such behavior cannot but evidence bad faith.
Respondent did not reply to Complainant’s contentions.
Under paragraph 4(a) of the Policy, Complainant must prove each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Firstly, Complainant alleges that its trademark PRANDIN is a well-known trademark which is a neologism but did not provide any evidence that PRANDIN is a well-known trademark.
The disputed domain name incorporates in its entirety the trademark PRANDIN owned by Complainant. The sole incorporation of a whole trademark in a domain name may be sufficient to the finding of confusing similarity. Moreover, the addition of the generic terms “next” and “day” is not sufficient to differentiate Complainant’s trademark from the disputed domain name. It occurs that users may rather believe that they can purchase the Prandin medicine on the website at the disputed domain name and that the drug will be delivered the day after. The terms “next” and “day” convey the idea that customers will be delivered very quickly, a commercial expression which will undoubtedly lure Internet users on the website. It has already been highlighted saliently in former UDRP decisions that the adjunction of generic terms which conjure up the idea that a drug will be delivered the day after or that the patient needs the drug quickly is likely to heighten the risk of confusion. A WIPO UDRP panel pointed out that: “[U]sers may understand this addition to Complainant’s trademark in the sense that they may need TAMIFLU very soon or that the on-line pharmacy, to which the domain name is linked, will provide them with TAMIFLU the next day. Such or similar assumptions are always linked to the TAMIFLU product, which clearly shows that the addition of the word ‘tomorrow’ cannot exclude confusing similarity between the domain name and the trademark of the Complainant” (F. Hoffmann-La Roche AG v. D.B, WIPO Case No. D2006-0170, <tamiflu-tomorrow.com>). The generic terms “next” and “day” imply that customers who purchase the medicine will be delivered quickly or overnight. It is a common pattern among cybersquatters to register well-known trademarks of drugs with the adjunction of generic terms conveying the idea of purchase like “buy” or the quickness of the delivery. Also, it has been consistently held by UDRP panels that the extension “.com” may be disregarded while assessing the risk of confusion.
In light of the above, the Panel finds that that the disputed domain name is confusingly similar to Complainant’s PRANDIN trademark, and thus that Complainant has satisfied paragraph 4(a)(i) of the Policy.
Respondent failed to provide any observation in order to rebut Complainant’s prima facie case. The fact that Respondent remained silent whereas the burden of production was on his side gives a first hint that he has no rights or legitimate interests in the disputed domain name. In the light of the screenshots of the website at the disputed domain name included in the Complaint, Respondent has not engaged in a noncommercial or fair use of the disputed domain name as the disputed domain name resolves to an online pharmacy. It is more likely than not that Respondent derives economic profit from the use of the disputed domain name. Such conduct cannot be deemed as being a bona fide offering of goods or services as Respondent, based on the available record, does not seem to have received any endorsement or authorization from Complainant.
In the absence of any evidence to the contrary, Complainant has therefore made out the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.”
Complainant argues that given the distinctiveness and the intensive use of its trademark PRANDIN it seems obvious that Respondent while registering the disputed domain name was aware of the existence of the PRANDIN trademark. Notwithstanding, Complainant did not provide sufficient evidence, like a press release or otherwise, which could highlight that PRANDIN is a well-known trademark.
Nonetheless, in this Panel’s view, as the disputed domain name wholly incorporates Complainant’s trademark, it is hardly possible that the Respondent was not aware of this trademark. In addition, the content of the website to which the disputed domain name resolves showed that Respondent did not use the disputed domain name in good faith. In directing Internet users to an online pharmacy where customers can purchase the Prandin medicine, Respondent must have been aware of the trademark PRANDIN.
Furthermore, there is no evidence that the products adduced by Respondent have been endorsed or authorized by the competent authorities. There is no guarantee of safety of the products that Internet users can purchase on Respondent’s website. Such a situation was already spotted in a former WIPO UDRP decision and helps to infer bad faith from Respondent’s behavior (See Forest Laboratories, Inc. v. Awad Kajouk, WIPO Case No.D2007-1650). Given that Respondent has failed to adduce any evidence of rights or legitimate interests in the disputed domain name, it seems rather obvious that he has not been given any endorsement or authorization of any kind.
Lastly, Complainant tellingly pinpoints that it is rather likely that Respondent also derived some profits from the use of the disputed domain name.
Accordingly, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith. Therefore, Complainant has satisfied the third requirement of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <nextdayprandin.com> be transferred to Complainant.
Nathalie Dreyfus
Sole Panelist
Dated: April 5, 2012