PARTIES' CONTENTIONS:
COMPLAINANT:
A. THE DISPUTED DOMAIN NAME IS IDENTICAL OR CONFUSINGLY SIMILAR
The Disputed Domain Name was registered on 20 December 2019 according to the WHOIS and incorporates the Complainant’s well-known, distinctive trademark NOVARTIS in its entirety combined with a generic term “podcast”, which is closely related to the Complainant and its business activities. The addition of the gTLD “.com” does not add any distinctiveness to the Disputed Domain Name. See as an example the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0"), paragraph 1.11. as well as the International Business Machines Corporation v. Sledge, Inc. / Frank Sledge WIPO Case No. D2014-0581 (“it is generally accepted that the addition of the top-level suffix in the domain name (e.g., “.com”) is to be disregarded under the confusing similarity test”). The same reasoning should apply in the current case and the Disputed Domain Name should be considered as confusingly similar to the trademark NOVARTIS.
B. RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTEREST IN RESPECT OF THE DOMAIN NAME
The Complainant has never granted the Respondent any right to use the NOVARTIS trademark within the Disputed Domain Name, nor is the Respondent affiliated to the Complainant in any form. The Complainant has not found that the Respondent is commonly known by the Disputed Domain Name or that it has interest over the Disputed Domain Name or the major part of it. When entering the terms “NOVARTIS” and “podcast” in the Google search engine, the returned results pointed to the Complainant and its business activities. The Respondent could have easily performed a similar search before registering the Disputed Domain Name and would have quickly learnt that the trademarks are owned by the Complainant and that the Complainant has been using its trademarks in the USA and many other countries of the world. However, the Respondent still chose to register the Disputed Domain Name as such.
By the time the Complainant prepared this Complaint on 08 April 2020, the Disputed Domain Name redirected to an active website “www.globalpodcast.com” where the Respondent operates its own business “Chicago Business Podcast.” From the Complainant’s perspective, the Respondent deliberately chose to use the well-known, distinctive trademark NOVARTIS as a distinctive component of its domain name, very likely with the intention to benefit from the Complainant’s worldwide renown and to confuse internet users as to the source or sponsorship and therefore cannot be considered as a bona fide offering of goods or services.
The Complainant a cease-and-desist letter on 30 December 2019, followed by a reminder sent on 16 January 2020. As the Respondent was using privacy shield, such communication was sent through the email k4hn2lsolkff@contactprivacy.email, to the Registrar through the email registrar-abuse@google.com and sent via online contact form. The Respondent replied on 20 January 2020 with the contact information as Drew Sikula <drew@negotiationmatters.com>, claiming that it is a “developing venture” which “aimed at providing news reporting, comment, and, in some cases, criticism about companies known to, and important to, American consumers and the global marketplace.”
The Respondent did not deny the fact that it knew about the Complainant and its well-known trademark NOVARTIS, and still did not justify the reason why it picked the term “Novartis” as the distinctive component in its domain name while it operated its own business under the name “globalpodcast.com”/“Chicago Business Podcast”. Moreover, when searched for the term “Novartis” on the website of “globalpodcast.com”, the Complainant did not find any result. In its response, it has proposed 2 options: sell the Disputed Domain Name to the Complainant for an out-of-pocket expense or let the Disputed Domain Name expire. The Complainant followed up on 24 January 2020, intending to accept the first option: “Kindly inform us the amount of the out-of-pocket costs.” The Respondent replied on 7 February 2020 stating the “out-of-pocket expense” of “$12 plus attorney’s fees.”
The Complainant in reply on 18 February 2020 countered “We are ready to compensate [only] out-of-pocket expenses (i.e. costs for registration of the domain name).” The Respondent replied on 19 February 2020, rejecting such offer:
“Per my original reply, I am willing to entertain transferring the domain to you if and when I decide not to use for my legitimate purposes. As I have not made that decision, I am not ready to transfer the domain at this time.”
From the Complainant’s perspective, the inconsistency of the Respondent’s claims only shows that it first attempted to collect commercial gain by selling the Disputed Domain Name to the Complainant at an excessive price which was obviously higher than the out-of-pocket expense, then later it changed its mind and used the Disputed Domain Name for its own business operations.
Therefore, the Respondent cannot be considered making a “legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the [complainant’s] trademark or service mark.” For the foregoing reasons, it shall be concluded that the Respondent has no right nor legitimate interest in respect of the Disputed Domain Name.
C. THE DOMAIN NAME WAS REGISTERED AND IS BEING USED IN BAD FAITH
i. THE DOMAIN NAME WAS REGISTERED IN BAD FAITH
It should be highlighted that the registration of the Complainant’s trademarks pre-dates the registration of the Disputed Domain Name and the Respondent has never been authorized by the Complainant to register the Disputed Domain Name. It is inconceivable that the combination of the well-known, distinctive trademark NOVARTIS and the term “podcast” in the Disputed Domain Name is not a deliberate and calculated attempt to improperly benefit from the Complainant’s rights.
Additionally, considering the fact that: the Respondent very likely knew about the Complainant and its trademark and
the Complainant’s trademark NOVARTIS is a distinctive, well-known trademark worldwide and in the USA where the Respondent resides and that the Respondent has failed in presenting a credible evidence-backed rationale for registering the Disputed Domain Name; the Disputed Domain Name shall be deemed as registered in bad faith, which is supported by WIPO Overview 3.0, para. 3.1.1.and para.3.1.4.
ii. THE DOMAIN NAME IS BEING USED IN BAD FAITH
Firstly, as noted in the previous paragraphs, the Disputed Domain Name redirected to the Respondent’s own website. As the Disputed Domain Name is confusingly similar to the Complainant’s trademark, internet users who look for products and/or services from the Complainant can be led to believe that the Disputed Domain Name and the website associated with it is somehow authorized or related to the Complainant. Therefore, the Complainant concludes that “by using the Disputed Domain Name, the Respondent has intentionally attempted 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 the respondent’s website or location.”
The finding of bad faith is also supported by WIPO DECISION Case No. D2018-1299, Jones Lang LaSalle IP, Inc. v. Rob Monster, DigitalTown, Inc., (“In view of the fact that the disputed domain names fully includes the JONES LANG LASALLE mark, it is easy to infer that Respondent was likely aware of Complainant’s rights in the JONES LANG LASALLE mark when Respondent registered the disputed domain name. In addition, given that Respondent registered and has used the disputed domain name to redirect web traffic to a website at ‘www.digitaltown.com’ that promotes the services of Respondent’s company, it appears more likely than not that Respondent registered the disputed domain name for Respondent’s profit. As Respondent has chosen not to contest the matter, it appears unlikely that Respondent had any legitimate purpose for registering and using the disputed domain name either at the time of registration or going forward.”) Secondly, also as mentioned here-above in the previous paragraphs, the Respondent first offered to sell the Disputed Domain Name to the Complainant for the Respondent’s “out-of-pocket costs in registering the domain name”, then asked for an amount which was obviously excessive to such costs in its responses that followed. When the Complainant insisted on the Respondent’s original offer, it further changed its mind and rejected the request of transfer. From the Complainant’s perspective, the conduct of the Respondent indicates bad faith use of the Disputed Domain Name as it has registered the Disputed Domain Name primarily for the purpose of transferring the Disputed Domain Name to the Complainant who is the owner of the trademark for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name.
RESPONDENT:
The Respondent relies on the correspondence and in particular annexes the exchange with the Complainant. He denies the allegations and relies in his letter on his fair and legitimate use of the Complainant’s name and mark to discuss the Complainant and its business.
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