PARTIES' CONTENTIONS:
COMPLAINANT:
The Complainant contends that the disputed domain name is identical to the Trademark as the disputed domain name includes the Trademark in its entirety and as the gTLD ".info" does not add any distinctiveness to the disputed domain name.
The Complainant also states that the Respondent does not have any rights or legitimate interest with regard to the disputed domain name. The Complainant argues that the parties have never had any previous relationships, nor has the Complainant ever granted the Respondent with any rights to use the Trademark in any form, including the disputed domain name. It further contends that the Respondent is neither commonly known by the disputed domain name nor has legitimate interest over the disputed domain name. Finally, the Complainant states that the Respondent’s name is “Antonio G. Pugliese”, which has no connection to the Complainant nor to the term “Novartis” in any way.
With regard to bad faith, the Complainant states that the disputed domain name was registered and is being used in bad faith. With regard to bad faith registration, it argues that the Respondent very likely knew about the Complainant and its Trademark because the Trademark is well-known (which already has been confirmed in prior UDRP decisions), because the Complainant is very active in the Respondent’s home country and because the gTLD “.app” is closely related to the Complainant and its business activities. With regard to bad faith use, the Complainant contends that the disputed domain name is listed for sale for 3,000 USD to the public and that the Respondent has been using a privacy shield to conceal its identity and that the Respondent therefore acted in bad faith.
RESPONDENT:
The Respondent denies the Complainant’s assertions and requests the Complaint to be denied. It argues as follows:
- The Complainant does not actually operate as an app developer and that the gTLD “.app” is, according to the sponsoring registrar, „a more secure domain for apps“. The Respondent further argues that many domain names with the same SLD and different TLDs are used by different companies in different fields and that this coexistence, per se, does not create any confusion at all, especially if the class of the product or service is absolutely different. The Respondent states that the Complainant has no right to monopolize the Trademark under all Top-Level-Domains.
- The name "NovArtis" comes from the two latin words "nova" and "artis". The Registrant is Italian, and the Italian language is the closest language to Latin, from which it descends via Vulgar Latin. In Italian the two latin words “nova artis” mean the generic concept of “nuova arte” (new art). The word NovArtis is a composite word and the result of a crasis.
- The Respondent chose the disputed domain name exclusively with reference to the theme of “New Art” and there was absolutely no connection to the Complainant. The target of the Respondent’s planned app is exclusively the art, offering tools & events for galleries, collectors, artists, and art lovers, which is clearly unrelated to the Trademark.
- The disputed domain name has been registered after several sunrise periods (in which the Complainant had the chance to register it) and was available many times since it was first made available. The Respondent states that it is obvious that the Complainant had no real interest in the disputed domain name.
- The Trademark is well known only by a specific target group (i.e. doctors, pharmacists) and, unlike Amazon, Apple, Coca-Cola, not by the general public. The Respondent states that it is not a doctor nor a pharmacist and it didn’t know the Trademark when registering the disputed domain name.
- The disputed domain name is not yet used by the Respondent because the Complainant had locked the disputed domain name less than a week after its registration and the Respondent, therefore, could not use the disputed domain name or redirect it to its intended website/web app that is still being developed and tested before the launch. The Respondent argues that the lock is causing damages and delay to the developing project.
- The Respondent states that the disputed domain name is not used and will never be used to mislead consumers.
- The Respondent states that the Complainant’s assertion that it offered the disputed domain name for sale is false. It argues that, in fact, GoDaddy and other marketplaces are selling the disputed domain name without the Respondent’s permission, as a premium domain. It further argues that the disputed domain name may have been listed by a prior owner.
- The Respondent states that it is a lawyer and an entrepreneur who has already signed a NDA (non-disclosure agreement) with a highly qualified HK company involved in investing and developing digital assets. The Respondent asserts that it has already put hours of sweat equity in coding, analysing the market, validating the need, thinking about a suitable brand name and using precious resources in getting a start-up idea off the ground. The Respondent asserts that it registered the disputed domain name in good faith, adding that it capitalized the "N" and "A" because "NovArtis" is a two-word Latin name.
- The Respondent further alleges that the Complaint contains various false allegations and finally requests a finding for Reverse Domain Name Hijacking.
COMPLAINANT’S SUPPLEMENTAL FILING
The Complainant replied to the Response with the following arguments:
- The Respondent claimed that it “was unaware of the existence of the Complainant (name / company / brand / trademark).” However, the Respondent itself is Italian, it is located in the Czech Republic, and its business partner for the “Novartis.app” project is a UK company. The Complainant is well-known across the world including the above-mentioned three countries, e.g. it has subsidiaries in all three countries and a dedicated official website for the three countries, it is very unlikely that the Respondent was not aware of the Complainant when it registered the disputed domain name.
- The Respondent claimed that it had “already put hours of sweat equity in coding, analyzing the market, validating the need, thinking about a suitable brand name and using precious resources in getting a start-up idea off the ground.” Therefore, it is reasonable to assume that the Respondent had conducted sufficient Internet search before it registered the disputed domain name. As provided in the first filing, a public search of the term “Novartis” all pointed to the Complainant and its business activities, it is impossible that the Respondent was not aware of the Complainant.
- The Respondent claimed that it was developing an application and there would be Android and IOS versions, however, search in Google Play and AppStore again pointed to the Complainant. It is impossible that the Respondent was still not aware of the Complainant and its trademark “Novartis” after it spent hours analyzing the market.
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