A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a complainant to show that a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant has provided evidence that it owns the NOVARTIS trademark.
The differences between the disputed domain name and the Complainant’s NOVARTIS trademark are the addition of the descriptive terms “patient” and “oncology” and a gTLD “.com”.
It is established that the addition of a descriptive term would not prevent a finding of confusing similarity under the first element (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
It is also established that gTLD is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (WIPO Overview 3.0, section 1.11). The addition of a gTLD to a disputed domain name does not avoid confusing similarity as the use of a TLD is technically required to operate a domain name (see Accor v. Noldc Inc. WIPO Case No. D2005-0016; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; L’Oréal v Tina Smith, WIPO Case No. 2013-0820; Titoni AG v Runxin Wang, WIPO Case No. D2008-0820; and Alstom v. Itete Peru S.A. WIPO Case No. D2009-0877).
The disputed domain name consists of the Complainant’s NOVARTIS mark and the addition of the descriptive terms “patient” and “oncology” and a gTLD “.com” which in the Panel’s view does not avoid confusing similarity with the Complainant’s trademark (see Schneider Electric S.A. v. Domain Whois Protect Service / Cyber Domain Services Pvt. Ltd., WIPO Case No. D2015-2333; WIPO Overview 3.0, section 1.9). in this case, the descriptive terms are related to the Complainant’s business which further does not serve to obviate confusing similarity with the NOVARTIS mark.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the NOVARTIS mark and the element under paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the complainant to show that the respondent has no rights or interests in respect of the domain name. Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the domain name (see WIPO Overview 3.0, paragraph 2.1).
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Complainant submitted evidence that it did not authorize or license the Respondent to use the NOVARTIS mark (See OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, WIPO Case No. D2015-1149; Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).
In addition, the evidence submitted by the Complainant shows that the Respondent is not commonly known by the disputed domain name.
The Respondent did not submit a response in the present case and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain name which is sufficient to rebut the Complainant’s prima facie case. In the particular circumstances of the present case, the Respondent’s use of the disputed domain name to host a parked page comprising PPC links which compete with the Complainant does not represent a bona fide offering of goods or services.
The Panel is therefore of the view that the Respondent has no rights or legitimate interests in respect of the disputed domain name and accordingly, paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The complainant must show that the respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence that the disputed domain name resolved to a parked page comprising PPC links which compete with the Complainant.
In this case, the evidence shows that the Complainant’s mark is distinctive and has attained significant reputation. The strong reputation and distinctive character of the Complainant’s mark is evidence that the Respondent is unlikely to have registered the disputed domain name without sight and knowledge of the Complainant’s marks and it is implausible that there is any good faith use to which the disputed domain name may be put to. It is also the Complainant’s evidence that the Respondent could not have registered the disputed domain name without prior knowledge of the Complainant’s mark as the Respondent’s name has no connection with the Complainant’s NOVARTIS mark which was registered long ago. This is another indicator of bad faith on the part of the Respondent (see Boursorama SA v. Estrade Nicolas, WIPO Case No. D2017-1463).
The Respondent did not submit a Response in this proceeding which is a further indication of the Respondent’s bad faith, which was considered by the Panel.
The Complainant submitted evidence that it had issued a cease-and-desist letter to the Respondent through the Registrar as the Respondent’s information was hidden behind a privacy shield. The Complainant did not receive a response from the Respondent. This is yet another indication of bad faith by the Respondent.
Based on the particular circumstances of the present case, the Panel also draws an adverse inference from the Respondent’s use of privacy shield to hide its identity which is another indication of the Respondent’s bad faith.
Based on the evidence presented to the Panel, including the confusing similarity between the disputed domain name and the Complainant’s mark, the fact that the disputed domain name was used to host a parked page comprising PPC links and the fact that no Response was submitted by the Respondent in response to the Complainant’s cease-and-desist letter and to the Complaint, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.
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