WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Novartis AG v. Domains by Proxy, LLC, Domains By Proxy, LLC/ Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2021-3372

1. The Parties

The Complainant is Novartis AG, Switzerland, represented by Dreyfus & associés, France.

The Respondent is Domains by Proxy, LLC, Domains By Proxy, LLC, United States of America (“United States”) / Carolina Rodrigues, Fundacion Comercio Electronic, Panama.

2. The Domain Name and Registrar

The disputed domain names <xiidraiinsidet.com>, <xiidraiisider.com>, <xiidraininsider.com> and <xiidralnsider.com> (the “Disputed Domain Names”) are registered with GoDaddy.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2021. On October 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On October 13, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 14, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 18, 2021

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2021.

The Center appointed Gareth Dickson as the sole panelist in this matter on November 15, 2021. 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.

4. Factual Background

The Complainant is one of the largest pharmaceutical companies in the world and is based in Switzerland. It has over a hundred thousand employees worldwide and its products reach nearly 1 billion people globally.

“Xiidra” is an eye drop solution manufactured by the Complainant. The Complainant is the owner of a number of trade mark registrations for XIIDRA and XIIDRA INSIDER (the “Marks”) around the world, including:

- International Trade Mark XIIDRA registration number 1350341, registered on March 18, 2017;
- United States Trade Mark XIIDRA registration number 5050074, filed on September 5, 2013 and registered on September 27, 2016; and
- International Trade Mark XIIDRA IINSIDER registration number 1545139, registered on June 29, 2020.

The Disputed Domain Name <xiidraiinsidet.com> was registered on March 26, 2021 and the Disputed Domain Names <xiidraiisider.com>, <xiidraininsider.com> and <xiidralnsider.com> were registered on July 16, 2021. The Disputed Domain Names currently direct Internet users to a webpage featuring what appear to be sponsored links. The email servers for the Disputed Domain Names have also been activated.¹

5. Parties’ Contentions

A. Complainant

The Complainant argues that it has rights in the Marks by virtue of its ownership of various trade mark registrations for the Marks around the world. It contends that the Disputed Domain Names are examples of typo-squatting and are confusingly similar to the Marks since they incorporate the mark XIIDRA in its entirety (which is recognisable within each of the Disputed Domain Names) with the addition, again in each of the Disputed Domain Names, of one of the following misspellings of “iinsider”, namely “iinsidet”, “iisider”, “ininsider” or “lnsider”, under the generic Top-Level Domain (“gTLD”) “.com”. The word “iinsider” is incorporated into the Complainant’s International Registration number 1545139, as set out above.

The Complainant confirms that the Disputed Domain Names were registered by the Respondent without its permission and that the Respondent is not a licensee of the Complainant. It alleges that the Respondent has been using the Disputed Domain Names to give the false impression that the Disputed Domain Names are related to the Complainant and/or to divert consumers to pages with sponsored links. It expresses a concern that the configuration of email servers for the Disputed Domain Names means that the Respondent is sending emails that are intended to, and will, confuse recipients of those emails as to their origin, possibly in the promotion of a phishing scheme.

The Complainant submits that there is no evidence to suggest that the Respondent: has been commonly known by the Disputed Domain Names; is making, or intends to make, a legitimate noncommercial or fair use of it or has ever used or demonstrated preparations to use it in connection with a bona fide offering of goods or services.

The Complainant submits that the Respondent must have known of the Complainant and the Marks when it registered the Disputed Domain Names and therefore registered them and is using them in bad faith. The Marks, according to the Complainant, are well-known throughout the world and are highly distinctive, making a coincidental adoption of the Disputed Domain Names by the Respondent virtually impossible.

The Complainant notes too that the Respondent has used a privacy service to conceal its identity for as long as possible. The Respondent did not engage with the Complainant’s correspondence regarding the Disputed Domain Names prior to the filing of the Complaint, and in fact appears to have registered three of the four Disputed Domain Names after the Complainant first wrote to it. Finally, the Complainant asserts that the Respondent is a well-known cyber-squatter and has been the subject of more than 80 UDRP proceedings.

Together, the Complainant submits that the Respondent is using the Disputed Domain Names in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:

a) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

b) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

c) the Disputed Domain Names have been registered and are being used in bad faith.

These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Marks.

Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that: “[I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.

Section 1.8 of the WIPO Overview 3.0 further provides that: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.

The Panel therefore finds that the Disputed Domain Names are confusingly similar to the Complainant’s XIIDRA mark, since the Disputed Domain Names incorporate the mark XIIDRA in its entirety. The addition of any of the terms “iinsidet”, “iisider”, “ininsider” or “lnsider” in the Disputed Domain Names does not prevent a finding of confusing similarity, nor does the addition of the gTLD “.com”.

Further, section 1.9 of the “WIPO Overview 3.0” provides that “[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”.

The Panel therefore also accepts that the Disputed Domain Names are confusingly similar to the Complainant’s “XIIDRA IINSIDER” mark since it is a common, obvious or intentional misspelling of the Complainant’s International Registration number 1545139, comprising the replacement of “r” with “t” in “xiidraiinsidet”, the omission of “n” in “xiidraiisider”, the addition of “n” in “xiidraininsider” and the replacement of “ii” with “l” in “xiidralnsider” in the Disputed Domain Names, which are all minor differences to the XIIDRA IINSIDER mark and do not alter the phonetic or conceptual similarity between the Disputed Domain Names and the Marks.

Accordingly, the Panel finds that the Disputed Domain Names are confusingly similar to the trade marks in which the Complainant has rights.

B. Rights or Legitimate Interests

Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

In the current proceedings, the Complainant has established its prima facie case. The evidence before the Panel is that the Marks are neither generic nor descriptive but are highly distinctive, making a coincidental adoption by the Respondent highly unlikely. The Complainant states that it has not given the Respondent permission to use the Marks, in a domain name or otherwise, and submits that the Respondent has not been commonly known by the Disputed Domain Names.

There is no evidence that the Respondent has acquired any common law rights to use the Marks, is commonly known by the Marks or has chosen to use the Marks in the Disputed Domain Names in any descriptive manner or is making any use of the Disputed Domain Names that would establish rights or legitimate interests as a result of a noncommercial or fair use of it.

The Disputed Domain Names appear to resolve to websites offering pay-per-click links. The fact that the beneficiaries of these links (in addition to the Respondent) are not direct competitors of the Complainant is a factor to be considered when assessing whether the Respondent may have relevant rights or legitimate interests in respect of a domain name. However, section 2.9 of the WIPO Overview 3.0 states that: “Panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”. Such consideration applies here: the Disputed Domain Names are not solely comprised of common dictionary or descriptive words whose incorporation into a domain name giving access to sponsored links might be justified, but have been adopted to capitalise on the reputation and goodwill of the Marks and are designed to mislead Internet users. As such, any commercial activity under them cannot be considered to amount to a bona fide offering sufficient to generate rights or legitimate interests in respect of the Disputed Domain Names.

By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element.

As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”.

Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.

C. Registered and Used in Bad Faith

The Panel notes that the Disputed Domain Names were registered many years after the Marks were registered and accepts that the Disputed Domain Names were chosen by reference to the Marks.

The Disputed Domain Names are clear examples of typo-squatting domain names, that is, names which were chosen with a trade mark owner in mind, usually after the relevant trade marks have been registered, and for the purpose of diverting traffic away from that trade mark owner by capitalizing on Internet users’ typographical mistakes. This conclusion is inevitable from the fact that the Marks are highly distinctive and have no meaning other than as a reference to the Complainant.

As a result, and in the absence of evidence from the Respondent that the similarity of the Disputed Domain Names to the Marks is coincidental, the Panel must conclude that the Respondent knew of the Complainant’s rights in the Marks when it registered the Disputed Domain Names.

The Panel therefore finds that the Respondent’s registration of the Disputed Domain Names was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant, rights in the Complainant’s Marks.

The Disputed Domain Names are also being used in bad faith in that they are using the Complainant’s Marks for a commercial purpose that involves redirecting Internet users (in particular those seeking the Complainant) to entities other than the Complainant.

The Panel also notes that the Respondent may have used (or may be preparing to use) the Disputed Domain Names as a means of communication in a manner that will inevitably confuse recipients of such communications as to their origin.

The Respondent has not sought to explain its registration and use of the Disputed Domain Names, has attempted to conceal its identity, and has not participated in these proceedings. There is also no conceivable use of the Disputed Domain Names by the Respondent that would not be illegitimate and therefore there is no basis for the Panel to conclude that the Respondent’s use of the Disputed Domain Names is justified.

In addition, the existence of so many other UDRP proceedings having been won against the Respondent is a relevant factor for the Panel to consider. While such results do not create a presumption of bad faith per se, they do tend to support such a finding of bad faith where the Respondent has not taken any steps to answer the Complaint.

Therefore, and on the basis of the information available to it, the Panel must, and does, find that the Respondent’s use of the Disputed Domain Names is without justification and is inconsistent with the Complainant’s exclusive rights in the Marks. Consideration of these and other factors militates in favour of a finding of bad faith.

The Panel finds that the Respondent has registered and is using the Disputed Domain Names in bad faith.

7. Decision

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 Names <xiidraiinsidet.com> <xiidraiisider.com> <xiidraininsider.com> and <xiidralnsider.com> be transferred to the Complainant.

Gareth Dickson
Sole Panelist
Date: December 3, 2021

¹ The Complainant has requested that its Complaint against Domains by Proxy, LLC and Carolina Rodrigues be "consolidated" into a single Complaint under Paragraph 10(e) of the Rules, which states that: "A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules." Paragraph 4(f) of the Policy permits consolidation "of multiple disputes between [a respondent] and a complainant". Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, addresses the factors that panels will typically consider in determining whether or not to permit consolidation. While the Panel has had regard to those provisions and agrees that it is appropriate to determine the Complaint in respect of the Disputed Domain Names in a single proceeding, it notes that "consolidation" per se is not typically required where the existence of two respondents to a complaint is merely the result of a registrant having used a proxy service when registering the disputed domain name(s) and having been unmasked as part of the Complaint.