FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:
ABOUT COMPLAINANT AND THE BRAND NOVARTIS
The Novartis Group is one of the biggest global pharmaceutical and healthcare groups. It provides solutions to address the evolving needs of patients worldwide by developing and delivering innovative medical treatments and drugs. Novartis AG (the “Complainant”), created in 1996 through a merger of two other companies Ciba-Geigy and Sandoz, is the holding company of the Novartis Group.
The Complainant’s products are manufactured and sold in many regions worldwide, including Benin where the Respondent is located.
The Complainant is the owner of the well-known trademark NOVARTIS registered as both a word and device mark in several classes worldwide, including Benin. The vast majority of the Complainant’s trademark registrations significantly predates the registration of the Disputed Domain Name. Namely, the Complainant’s trademark registrations in Benin applying to the present proceedings include the following earlier rights:
Trademark: NOVARTIS
Reg. no: 663765
Reg. date: 1 July 1996
Moreover, previous UDRP Panels have stated that the NOVARTIS trademark is well-known (inter alia Novartis AG v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, / Sergei Lir, WIPO Case No. D2016-1688).
The Complainant owns numerous domain names composed of either its trademark NOVARTIS alone, including <novartis.us> (created on 19 April 2002) and <novartis.com> (created on 2 April 1996) or in combination with other terms, e.g. <novartispharma.com> (created on 27 October 1999). The Complainant uses these domain names to promote the NOVARTIS mark with related products and services.
The Complainant enjoys a strong presence online also via its official social media platforms.
LEGAL GROUNDS:
A. THE DOMAIN NAME IS IDENTICAL OR CONFUSINGLY SIMILAR
The Disputed Domain Name <novartispharmacie.com>, which was registered on 18 October 2021 according to the WHOIS, incorporates the Complainant’s well-known, distinctive trademark NOVARTIS in combination with a term “pharmacie” 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: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), paragraph 1.11. as well as the International Business Machines Corporation v. Sledge, Inc. / Frank Sledge WIPO Case No. D2014-0581 where the Panel stated the following: “In addition, 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 and the Respondent have never had any previous relationships, nor has the Complainant ever granted the Respondent with any rights to use the NOVARTIS trademark in any forms, including the Disputed Domain Name.
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. When searched for “Novartispharmacie” 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 Benin and many other countries worldwide. However, the Respondent still chose to register the Disputed Domain Name as such.
In addition, according to the Registrar Verification, the Respondent is named “Ricko DOSSOU / Bourse”, which in not connected to the Complainant nor to the term “Novartis” in any way.
By the time the Complainant prepared this Complaint on 16 November 2021, the Disputed Domain Name did not resolve to any active website. The Respondent has not been using the Disputed Domain Name to offer any goods or services.
When Internet users, who search for information about the Complainant and/or about the brand “Novartis”, see the Disputed Domain Name and the inactive page, would very likely be confused and be led to believe that the Disputed Domain Name is somehow related to the Complainant and be disappointed as they would not find the information as expected – which will lead to trademark tarnishment for the Complainant.
From the Complainant’s perspective, the Respondent deliberately chose to use the well-known, distinctive trademark NOVARTIS as the main part of the Disputed 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.
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 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 combination with a term “int”, which often refers to “international” or “internal” and therefore closely related to the Complainant and its business activities, it follows that the use 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.
Considering the facts 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 Benin 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.”
ii. THE DOMAIN NAME IS BEING USED IN BAD FAITH
Firstly, as noted in the previous paragraphs, the Disputed Domain Name did not resolve to any active website, which constitutes passive holding. In the WIPO Case No. D2000-0003 Telstra Corporation Limited v. Nuclear Marshmellows the Panel established that the registration and passive holding of a domain name which has no other legitimate use and clearly refers to the Complainant's trademark may constitute registration and use in bad faith.
Additionally, the Complainant tried to reach the Respondent by sending a Cease-and-desist letter on 21 October 2021 by email to the e-mail address of the Registrant as provided in the WHOIS. However, until the time the Complainant prepared this amended Complaint, it has not received response from the Respondent.
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’.”
In addition, the fact that the Respondent has been using privacy shield service to conceal its identity adds up to the finding of bad faith.
SUMMARY
• NOVARTIS is a well-known, distinctive trademark worldwide.
• Complainant’s trademarks registration predates the registration of the Disputed Domain Name.
• The Respondent has no rights in the mark NOVARTIS, bears no relationship to the Complainant, and is not commonly known by the Disputed Domain Name - accordingly it has no legitimate interest in the Disputed Domain Name.
• It is highly unlikely that the Respondent was not aware of Complainant’s prior rights in the trademark NOVARTIS at the time of registering the Disputed Domain Name, given the Complainant’s worldwide renown.
• The Respondent has been passively holding the Disputed Domain Name;
• The Respondent failed in responding to cease-and-desist letter sent by the Complainant;
• The Respondent has been using privacy shield to conceal its identity.
Consequently, the Respondent should be considered to have registered the Disputed Domain Name confusingly similar to the Complainant’s well-known, distinctive trademark NOVARTIS. The Complainant has not found that the Respondent is of any legitimate right or interest in using the Disputed Domain Name, but rather registered and has been using the Disputed Domain Name in bad faith.
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