The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy). It should be highlighted that most of Complainant’s trademark registrations predate the registration of the disputed domain name and the Respondent has never been authorized by the Complainant to register the disputed domain name. Considering the renown of the Complainant and its trademark NOVARTIS, and the overall composition of the disputed domain name, i.e. using the term “Novartis” in connection with the gTLD “.dev” which has several interpretations that closely relate to the Complainant and its business activities, it follows that the combination of the well-known trademark NOVARTIS in the disputed domain name is a deliberate and calculated attempt to improperly benefit from the Complainant’s rights and reputation.
Additionally, considering the fact that:
• The Respondent very likely knew about the Complainant and its trademark;
• The Complainant’s trademark NOVARTIS is a distinctive, well-known trademark worldwide and in the USA where the Respondent resides;
• 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.:
“If on the other hand circumstances indicate that the respondent’s intent in registering the disputed domain name was in fact to profit in some fashion from or otherwise exploit the complainant’s trademark, panels will find bad faith on the part of the respondent. While panel assessment remains fact-specific, generally speaking such circumstances, alone or together, include: (i) the respondent’s likely knowledge of the complainant’s rights, (ii) the distinctiveness of the complainant’s mark, … (vii) failure of a respondent to present a credible evidence-backed rationale for registering the domain name,…”
and para.3.1.4:
“Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.”
Firstly, as noted in the previous paragraphs, the disputed domain name does not resolve to any active websites, which constitutes passive holding/non-use of the disputed domain name.
Secondly, the Complainant has tried to reach the Respondent by a cease-and-desist notice sent on 6 April 2020, and as the registrant was under privacy shield, sent to the privacy e-mail novartisvaccinesdirect.com@domainsbyproxy.com as provided in the WHOIS. However, until the time the Complainant prepared this Complaint, it has not received any response from the Respondent. Since the amicable approach has been unsuccessful, the Complainant chose to file a UDRP complaint.
In terms of paragraph 4(b)(iv) of the Policy, the above facts demonstrate the Respondent’s use of the disputed domain name in bad faith. See “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246:
“The Domain Name was not resolving to an active website at the time of filing. However, the consensus view amongst WIPO panellists is that ‘the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trade mark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trade mark, no response to the complaint having been filed, and the registrant’s concealment of its identity’.”
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