Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complaint has rights.
(ii) The Respondent has no rights or legitimate interests in the disputed domain name.
(iii) The disputed domain name has been registered and used in bad faith.
(i) Identical or confusingly similar
The Panel is satisfied that the Complainant is the owner of International trade mark registrations for NOVARTIS that predate the registration of the disputed domain name.
The disputed domain name is comprised of the Complainant’s well-known trade mark NOVARTIS, plus the TLD ".shop". The most distinctive part of the disputed domain name is the Complainant’s mark, NOVARTIS. The addition of the TLD ".shop" does not prevent the disputed domain name being confusingly similar to the Complainant’s trade mark NOVARTIS.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark NOVARTIS, and that the requirements of paragraph 4(a)i of the Policy have been met.
(ii) No rights or legitimate interest in the disputed domain name
The Complainant asserts that the Respondent has no rights or interests in the disputed domain name. The Complainant says that:
1. The Respondent is not commonly known by disputed domain name.
2. The disputed domain name is not active and there is nothing to indicate that the disputed domain name has, or will be used, or that there are preparations to use it, in connection with a bona fide offering of goods or services. The Respondent has made no claims to have any relevant prior rights of its own, or to have made legitimate, non-commercial use of the disputed domain name.
3. The Complainant is identified as associated with the term NOVARTIS and has not authorised the Respondent to use its trade mark.
4. The intention of the Respondent in registering the disputed domain name is to take advantage of an association with the business of Complainant.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or a legitimate interest in the disputed domain name. The Respondent has not filed a Response, nor contested any of the Complainant’s submissions, nor provided any evidence of any rights or legitimate interests in the disputed domain name. There is nothing to indicate that he Respondent has any relevant rights itself. The Respondent is not commonly known by the disputed domain name and has not been authorised by the Complainant to use the name NOVARTIS.
Panel finds that the Respondent does not have any rights or legitimate interest in the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).
(iii) The disputed domain name has been registered and is being used in bad faith
The Complainant asserts that:
1. The Respondent is not authorised to register the disputed domain name and it is inconceivable that registering the unique combination of the well-known mark NOVARTIS in the disputed domain name along with the TLD suffix “shop” is not a deliberate and calculated attempt to improperly benefit from the Complainant’s rights.
2. The Respondent has registered approx. 98 domain names including well-known brands such as <american-express.info>, <americaneagleoutfitters.site> and <calvin-klein.club>. Such pattern of abusive conduct constitutes evidence of bad faith according to Paragraph (6) (ii) of the Policy.
3. The trade mark NOVARTIS is a well-known mark worldwide, including in China where the Respondent is located, and there is no way in which the disputed domain name could be used legitimately by the Respondent.
4. Inference of bad faith registration and use of the disputed domain name is also given by the fact that the Respondent replied to the Complainant’s cease and desist letter requesting a high price for the disputed domain name.
5. Further, the disputed domain name was listed for sale at SEDO.COM with a minimal offer of 90 USD.
The Complainant’s well-known registered trade mark NOVARTIS predates the registration of the disputed domain name. The Panel finds that there appears no reason why the Respondent would register the Complainant's well-known mark as part of the disputed domain name, other than to create the impression that it is connected to the Complainant's business. The offer to sell the domain name at a price that exceeds out-of- pocket expenses, and the pattern of registering other well-known bands as domain names also indicates bad faith.
The Panel finds that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(a) (iii) of the Policy.
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