Decision for dispute CAC-UDRP-104155

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the Disputed Domain Name.

The Complainant is the owner of the well-known trademark NOVARTIS as a word and figure mark in several classes in numerous of countries all over the world including in India. These trademark registrations predate the registration of the Disputed Domain Name. For India Complainant is the registered holder of the trademark NOVARTIS, Application No: 700020, dated 28 February 1996, User date 28 July 1997.

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:
ABOUT COMPLAINANT AND THE BRAND NOVARTIS

The Novartis Group is one of the largest pharmaceutical and healthcare groups in the world. 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. The Complainant has a strong presence in India where the Respondent is located. The below links connect customers to the official local sales and service locator and to the official websites of the Complainant:

- Global Website for NOVARTIS: https://www.novartis.com

- Local Website for NOVARTIS in India: https://www.novartis.in

Previous UDRP Panels have recognized 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) (page 1-17, Annex 3). The Complainant uses these domain names to promote the NOVARTIS mark with related products and services.

The Complainant states that it enjoys a strong presence online also via its official social media platforms as it confirms in its Annex.

LEGAL GROUNDS:

A. THE DOMAIN NAME IS IDENTICAL OR CONFUSINGLY SIMILAR

The domain name <Novartis-solutions.com> (hereinafter referred to as the “Disputed Domain Name”), which was registered “at least” on 11 September 2021 according to the Registrar Verification, incorporates the Complainant’s well-known, distinctive trademark NOVARTIS in its entirety, in combination with a term “solutions”, separated by the symbol “-“. The added word is closely related to the Complainant’s 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 Overview 3.0"), section 1.11. as well as the International Business Machines Corporation v. Sledge, Inc. / Frank Sledge WIPO Case No. D2014-0581: “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.”

Complainant argues that 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 states that it has never had any previous relationship with Respondent, nor has the Complainant ever granted the Respondent any rights to use the NOVARTIS trademark in any form, 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 legitimate interest over the Disputed Domain Name. When searched for the term “Novartis-solutions” in the Google search engine, the returned results all 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 learned that the trademarks are owned by the Complainant and that the Complainant has been using its trademarks in India, where the Respondent resides, and many other countries worldwide. However, the Respondent still chose to register the Disputed Domain Name although it must have had actual knowledge of Complainant.

In addition, according to the Registrar Verification, the Respondent is named “Softech”, which is not related to the Complainant nor to the term NOVARTIS in any way.

By the time the Complainant prepared the Complaint on 16 November 2021, the Disputed Domain Name resolved to an ever-loading page. It therefore follows that the Respondent has not been using the Disputed Domain Name for any bona fide offering of 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 ever-loading page, they 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 by the term "solutions." Complainant contends that this will lead to trademark tarnishment.

From the Complainant’s perspective, the Respondent deliberately chose to use the well-known, distinctive trademark NOVARTIS as the dominant 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 should 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

Complainant particularly highlights the fact that most of its 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 Complainant’s well-known, distinctive trademark NOVARTIS in its entirety, in combination with a term “solutions”, which is closely related to the Complainant’s business activities, it follows that incorporating 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 facts that:

• The Respondent very likely knew about the Complainant and its trademark when it registered the Disputed Domain Name;
• The Complainant’s trademark NOVARTIS is a distinctive, well-known trademark worldwide and in India 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 resolved to an ever-loading page, 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 communication on 21 October 2021 via the online contact form as provided by the registrar. 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 panelists 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’.”

Complainant also points out that the fact that the Respondent has been using a privacy shield service to conceal its identity is additional evidence of bad faith.

SUMMARY

• NOVARTIS is a well-known, distinctive trademark worldwide.
• Complainant’s trademarks registration predates the registration of the Disputed Domain Name.
• 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 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.
• Respondent has not been using the Disputed Domain Name to resolve to active website.
• Respondent failed in responding to the communication sent by the Complainant.
• 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.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

PARTIES' CONTENTIONS:

COMPLAINANT:

Given Complainant's prominence in the pharmaceutical market it is well-known, and in its niche it is famous. Since NOVARTIS is a corporate name that is both distinctive as a mark and has achieved great distinctiveness in the marketplace, it is inconceivable that Respondent was unaware of it, thus leading to the conclusion that it registered the domain name for its brand value. The domain name has no independent value except for its association with Complainant.

The Complainant states that the Disputed Domain Name <novartis-solutions.com> combines its trademark together with the word "solutions" which may suggest to consumers that Novartis has set up an authentic website as the domain name would indicate.

The Complainant contends that it has not granted authority or permission to register or use the Disputed Domain Name nor is Respondent commonly known by that name but as "Softech". Nothing about the domain name or failure to resolve to an active website constitutes making use, or demonstrable preparations for use, of the Disputed Domain Name in connection with a bona fide offering of goods or services, or of making a legitimate non-commercial or fair use of the Disputed Domain Name. Thus, Respondent lacks rights or legitimate interest in the Disputed Domain Name because it is pretending to be Complainant.

The Complainant underscores further that it is inconceivable that Respondent registered the Disputed Domain Name without actual knowledge of Complainant's legal rights. Given the distinctiveness of the Complainant's trademark and its reputation, it is reasonable to infer that the Respondent has registered and passively holding the Disputed Domain Name with full knowledge of the Complainant's trademark. The sole inference from the evidence presented is that Respondent registered and is using the Disputed Domain Name in bad faith.

The Complainant has, to the satisfaction of the Panel, shown the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the Disputed Domain Name (within the meaning of paragraph 4(a)(ii) of the Policy).

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).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Pursuant to the Policy, paragraph 4(a), a complainant must prove each of the following to justify the transfer of a domain name:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the respondent has registered and is using the domain name in bad faith.
In this case, the Czech Arbitration Court has employed the required measures to achieve actual notice of the Complaint to the Respondent, and the Respondent was given a fair opportunity to present its case and defend its registration of <novartis-solutions.com> the subject domain name.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: "[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name ..."

Notwithstanding Respondent's failure to submit a response Complainant is not relieved from the burden of establishing its claim. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 3.0, § 4.3: "Noting the burden of proof on the complainant, a respondent's default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent's default is not necessarily an admission that the complainant's claims are true." However, if a complainant's adduced evidence supports any element of the Policy, a respondent has an opportunity to contest the contention that its registration of the challenged domain name was unlawful.

A. Identical or confusingly similar, §4(a)(i).
This first limb of the Policy requires Complainant to prove that it has a trademark right and that the Disputed Domain Name is identical or confusingly similar to that mark. The Panel finds that Complainant has demonstrated that it has a registered trademark right to the term NOVARTIS. Having established that element of the Policy the next question is whether the Disputed Domain Name is identical or confusingly similar to Complainant's mark.

A side-by-side comparison of the domain name and the NOVARTIS trademark indicates that <novartis-solutions.com> is confusingly similar to the mark in that it incorporates Complainant's trademark. The addition of "solutions" suggests an identification with Complainant's business and does not create a name distinctive from the Complainant. See Lacoste Alligator S.A. v. Priscilla, Ranesha, Angel, Jane, Victor, Olivier, Carl, Darren, Angela, Jonathan, Michell, Oiu, Matthew, Pamela, Selima, Angela, John, Sally, Susanna, D2010-0988 (WIPO August 11, 2010) (<cheaperlacoste.com>. “It is long established by past panel decisions that a domain name incorporating a trademark in its entirety with the addition of generic and non-distinctive prefixes and/or suffixes is confusingly similar to the trademark.”)

At the threshold it is necessary only to consider "whether a domain name is similar enough in light of the purpose of the Policy to justify moving on to the other elements of a claim for cancellation or transfer of a domain name." The Panel in Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, D2000-1415 (WIPO January 23, 2001) notes that "numerous prior panels have held [the purposes of the Policy are satisfied] when a domain name wholly incorporates a complainant's registered mark." These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. Flowers Foods, Inc. and Flowers Bakeries Brands, LLC v. [John Doe as Holder of Domain Name <flowersfoodsinc.us>], FA2110001970340 (Forum November 29, 2021).

As the top-level domain is a functional element it is not considered in the assessment. Magnum Piering, Inc. v The Mudjackers and Garwood S. Wilson, Sr., D2000-1525 (WIPO January 21, 2001). Panelists generally disregard the top-level suffixes as irrelevant in determining the issue under the first requirement of the Policy.

Having demonstrated that <novartis-solutions.com> is confusingly similar to Complainant's
NOVARTIS trademark in which it has rights the Panel finds Complainant has satisfied Para. 4(a)(i) of the Policy.

B. Rights and legitimate interests, Para. 4(a)(ii)
Under paragraph 4(a)(ii) of the Policy, a complainant has the burden of establishing that a respondent lacks rights or legitimate interests in respect of the Disputed Domain Name, but this burden is light. It is sufficient in the first instance for Complainant to allege a prima facie case, and if the evidence presented is conclusive or yields a positive inference that Respondent lacks rights or legitimate interests, the burden shifts to Respondent to rebut the allegations. This concept of shifting burdens is clearly explained in Croatia Airlines d.d. v. Modern Empire Internet Ltd., D2003-0455 (WIPO August 21, 2003) in which the Panel held that "[s]ince it is difficult to prove a negative ... especially where the Respondent, rather than complainant, would be best placed to have specific knowledge of such rights or interests—and since Paragraph 4(c) describes how a Respondent can demonstrate rights and legitimate interests, a Complainant's burden of proof on this element is light."

Once the complainant makes such a prima facie showing, "the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP," Malayan Banking Berhad v. Beauty, Success & Truth International, D2008-1393 (December 8, 2008). Finally, "in the absence of direct evidence, complainant and the panel must resort to reasonable inferences from whatever evidence is in the record," Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO October 26, 2000).

In this case, Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name, because the Respondent has no permission to use the NOVARTIS trademark. The evidence in the record is conclusive that Respondent Softech is not commonly known under the Disputed Domain Name and has no relationship with Complainant. See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Chad Moston / Elite Media Group, FA1804001781783 (Forum May 11, 2018) ("Here, the WHOIS information of record identifies Respondent as "Chad Moston / Media Group." The Panel therefore finds under Policy 4(c)(ii) that Respondent is not commonly known by the Disputed Domain Name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (FORUM August 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent's use of the same). Accordingly, Complainant has demonstrated prima facie that Respondent lacks rights or legitimate interests in the Disputed Domain Name.

Once the burden shifts, Respondent has the opportunity of demonstrating its right or legitimate interest in the Disputed Domain Name by showing the existence of any of the following nonexclusive circumstances:
(i) before any notice to you [respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [respondent] are 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 trademark or service mark at issue.

If a respondent proves any of these circumstances or indeed anything else that shows it has a right or legitimate interest in the Disputed Domain Name, the complainant will have failed to discharge its onus and the respondent must succeed. However, where respondent fails to respond, as it has here, the Panel must assess the record before it.

Here, the choice of the domain name corresponds to the trademark together with an additional word that makes reference to Complainant's business activities. The addition of a common word does not create a distinctive term separate from the mark, but in fact reinforces the identity of domain name and mark, as alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy, Flowers Foods, supra. Therefore, Respondent's default and its failure to rebut Complainant's evidence is particularly telling. Since there is no proof otherwise, the record supports the conclusion that Respondent lacks any right or legitimate interest as measured by the three circumstances of Paragraph 4(c) subparagraphs. See Deutsche Telekom AG v. Britt Cordon, D2004-0487 (WIPO September 13, 2004) (holding that "once a complainant establishes a prima facie case that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent. Given the evidence presented by Complainant, Respondent's default in appearance supports the conclusion that is lacks rights or legitimate interests in the disputed domain name." Similarly in Malayan Banking Berhad, supra. (holding that "[i]f the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.").

Accordingly, the Panel finds that Complainant has succeeded on this element, thus it satisfies paragraph 4(a)(ii) of the UDRP.

C. Registered and Used in Bad Faith, §4(a)(iii)
Having determined that Respondent lacks rights or legitimate interests, the Complainant must then prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith.
Paragraph 4(b) of the Policy sets out four nonexclusive circumstances, any one of which is evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's 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 site or location.

Of the four circumstances, the fourth most readily applies as the domain name is clearly intended to attract Internet users seeking to reach Complainant's website or purchase its products and services. The domain name in this case fails to resolve to an active website although it has the appearance of attempting to do that. In pretending to be Complainant, the Disputed Domain Name cannot conceivably be used for a legitimate purpose. Telstra, supra.; also National Football League v. Thomas Trainer, D2006-1440 (WIPO December 29, 2006) <nflnetwork.com>) (holding that "when a registrant, such as respondent here, obtains a domain name that is [identical and] to a famous mark, with no apparent rights or legitimate interests in the name, and then fails to respond to infringement claims and a UDRP Complaint, an inference of bad faith is warranted." This is added support that the purpose for registering <novartis-solutions> is to take advantage of Complainant's goodwill with the likelihood that it is intended to also take advantage of and deceive consumers.

Where the facts demonstrate an intent to capitalize on an owner's mark in the manner in which Complainant describes and which is supported by proof in the record, the registration is prima facie abusive. Royal Bank of Canada - Banque Royale Du Canada v. Registration Private, Domains By Proxy, LLC / Randy Cass, D2019-2803 (WIPO February 23, 2020) (<investease.com>. It is clear that where the facts of the case establish that the respondent's intent in registering or acquiring a domain name was to unfairly capitalize on the complainant's nascent.. . trademark, panels have been prepared to find the respondent acted in bad faith.). See WIPO Overview 3.0, section 3.8.2.

The Panel finds that the present case is one in which the presumption of bad faith is satisfied. The presumption is further strengthened by the strong inference of Respondent's actual knowledge of Complainant's and its NOVARTIS trademark and of its intention to take advantage of its attractive value on the Internet solely for the reason of its goodwill flowing from its widely known or famous brand. The consensus expressed in WIPO Overview 3.0, section 3.1.4. is that "the mere registration of a domain name that is identical or confusingly similar. .. to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith." Particularly probative in this case is that Complainant holds the domain name <novartis.com> and the only difference with the Disputed Domain Name is the addition of another word and a hyphen. Absent a cogent explanation from Respondent justifying its choice of domain name, which is absent from the record, this supports the conclusion that it registered <novartis-solutions.com> with the purpose of taking advantage of Complainant's goodwill and reputation.

The Panel finds that the Complainant has shown that the Respondent registered and is using the Disputed Domain Name in bad faith both in general and in particular because the Respondent's conduct puts the case squarely within paragraph 4(b)(iv) as well as within the larger notion of abusive conduct. The Panel finds that Complainant has adduced more than sufficient evidence to prove Respondent's bad faith based on the foregoing considerations.

Accordingly, the Respondent has registered and used the Disputed Domain Name in bad faith and that its conduct firmly supports the conclusion that the registration of <novartis-solutions.com> was abusive. Having thus demonstrated that Respondent registered and is using the Disputed Domain Name in bad faith, Complainant has also satisfied paragraph 4(a)(iii) of the Policy.