Decision for dispute CAC-UDRP-105287

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 owns numerous trademarks NOVARTIS registered in numerous jurisdictions

(hereafter “the NOVARTIS trademark”), which were registered many years before the registration of

the disputed domain name on May 30, 2022, such as but not limited to:

- The Swiss trademark NOVARTIS No. 2P-427370, registered on July 1, 1996, in classes 1, 2, 3, 4, 5, 7, 8, 9, 10, 14, 16, 17, 20, 22, 28, 29, 30, 31, 32, 40 and 42;

- The International trademark NOVARTIS No. 663765, registered on July 1, 1996, in classes 1, 2, 3, 4, 5, 7, 8, 9, 10, 14, 16, 17, 20, 22, 28, 29, 30, 31, 32, 40 and 42;

- The International trademark NOVARTIS No. 1349878, registered on November 29, 2016, in classes 9, 10, 41, 42, 44 and 45;

- The Canada trademark NOVARTIS No. TMA523129, registered on February 15, 2000, in classes 1, 3, 5, 9, 29, 30, 31, 32; and - The Canada trademark.

The Novartis Group is one of the largest thus 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"), with headquarter in Switzerland, 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 countries worldwide including in Canada (the location of the Respondent), where it has an active presence through its subsidiaries and associated companies. The Complainant owns numerous domain names composed of its trademark NOVARTIS alone, including <novartis.com> (registered in 1996), <novartis.ca> (registered in 2000) or in combination with other terms, such as <novartispharma.com> (registered in 1999). The Complainant uses these domain names to resolve to its official website through which it informs Internet users and potential consumers about its NOVARTIS mark and its related products and services. The Complainant also enjoys a strong presence online via its official social media platforms.

COMPLAINANT:

The Complainant alleges that the domain name <novvartis.com> (hereinafter referred to as “Disputed Domain Name“) incorporates in its second level-portion a misspelled version of the Complainant's well-known trademark NOVARTIS to which an additional letter "v" has been inserted after the letter "o". The Disputed Domain Name was registered on May 30, 2022, thus postdating the NOVARTIS trademark by many years. The Complainant contends that the registration and use of the Disputed Domain Name violates its rights and the terms of the Uniform Domain Name Dispute Resolution Policy. It further contends that the addition of the extra "v" typosquats on its trademark NOVARTIS and that the misspelling is purposeful, namely, to capitalize on Internet users' possible typing or reading errors when looking for information, or to communicate with, the Complainant online. The Complainant further alleges that it did not give the Respondent permission to register the Disputed Domain Name and it was not authorized to do so. The cumulative evidence supports the conclusion that the Respondent had actual knowledge of the Complainant. This is underscored by the use of the Disputed Domain Name in that it resolves to an active website containing hyperlinks to websites suggestive of healthcare and pharmaceutical products for which the Complainant has a world-wide reputation.

RESPONDENT:

The Respondent has not appeared formally or informally to controvert the evidence submitted by the Complainant.

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.

Paragraph 15(a) of the Rules for the UDRP ('the Policy') instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Pursuant to Paragraph 4(a) of the Policy the Complainant is required to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the domain name; an

(iii) the domain name has been registered and is being used in bad faith.

In view of the Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations and adduced proof pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint and annexes as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (FORUM July 31, 2000) (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009 (WIPO February 29, 2000) ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.").

Identical or Confusingly Similar to a Mark in which Complainant has a Right:

To succeed under the first element, a complainant must pass a two-part test by first establishing that it has rights, and thereafter that the disputed domain name is either identical or confusingly similar to the mark. The first element of a UDRP complaint “serves essentially as a standing requirement.” Here, the Complainant has established that it has rights in the word mark NOVARTIS by providing the Panel with the evidence that it has numerous registrations in many jurisdictions for its mark. The consensus view which the Panel adopts is that a national or an international trademark registration is sufficient to establish rights in that mark. As such, the Panel finds that the Complainant has established that it has a right in the word mark NOVARTIS. 

The second part of the test calls for comparing the Complainant’s mark with the Disputed Domain Name entails “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark." WIPO Overview 3.0 at section 1.7.  The Panel observes that the single difference in this case is the addition of a “v” (two “v”s which has the look of a “w”). Typographical changes are immaterial. Where the relevant trademark is recognizable within the disputed domain name it is sufficient to establish confusing similarity. The addition of the gTLD ".com" does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant in determining the confusing similarity between NOVARTIS and <novvartis.com>. 

Accordingly, Complainant has satisfied Paragraph 4(a)(i) of the Policy.

Determining Whether Respondent Lacks rights or legitimate interests in the Disputed Domain Name:

To establish the second of the three elements, the Complainant must first demonstrate that Respondent lacks rights and legitimate interests in the Disputed Domain Name. Recognizing that the proof for establishing this element is under the Respondent's control, the Complainant may satisfy this burden by offering a prima facie case based on such evidence as there is thus shifting the burden to the Respondent to produce evidence to overcome the presumption that it lacks rights or legitimate interests in the Disputed Domain Name. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum November 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy paragraph 4(a)(ii).

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. It states that it did not authorize the Respondent to register the Disputed Domain Name, the Respondent is not using the Disputed Domain Name for any bona fide use, nor can it claim to be known by the name "NOVARTIS" as it has been identified in the Whois directory as Victor Cheke who resides in Canada.

Further, the Complainant has adduced evidence based on the use of the Disputed Domain Name that Respondent is not using it for any non-commercial or fair use. See Croatia Airlines d. d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a) (ii) of the Policy).

The Panel finds that the Complainant's contentions and proof satisfy the presumptive burden that Respondent lacks rights or legitimate interests in the Disputed Domain Name. A respondent has the opportunity to controvert the prima facie case by adducing evidence demonstrating that it has rights or legitimate interests. The Policy sets forth the following nonexclusive list of factors:

(i) "[B]efore any notice to you 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."

(ii) "[Y]ou (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."

(iii) "[Y]ou 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."

Evidence of any one of these defences will satisfy the rebuttal burden, but the absence of any evidence supports a complainant's contention that the respondent lacks rights or legitimate interests in the disputed domain name. The failure of a party to submit evidence on facts in its possession and under its control may permit the Panel to draw an adverse inference regarding those facts. See Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-­0004. Here, the Disputed Domain Name is virtually identical to the Complainant's mark. The sole difference is the addition of a “v” (doubling the “v” in Complainant’s trademark. This strategy does not support a right or legitimate interest in a disputed domain name and the Panel so finds in this matter. See Emerson Electric Co. v. golden humble /golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a respondent is authorized to use [the] complainant's mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)").

Noteworthy also in this case is that the Disputed Domain Name resolves to an active website containing hyperlinks to other websites for products and services suggestive of those associated with the Complainant. Where the “only apparent purpose would be to trade on mistakes by users seeking Complainant’s web site” the registration is abusive, Oxygen Media, LLC v. Primary Source, WIPO Claim No. D2000-0362 (holding: “The substitution of the digit zero for the letter “o” appears calculated to trade on Complainant’s name by exploiting likely mistakes by users when entering the url address.”)

As the Respondent has not controverted the evidence that it lacks right or legitimate interests in the Disputed Domain Name, and for the reasons herein stated, the Panel finds that the Complainant has satisfied Paragraph 4(a)(ii) of the Policy.

Registration and Use in Bad faith:

It is the Complainant's burden under Paragraph 4(a)(iii) of the Policy to prove that the Respondent both registered and is using the Disputed Domain Name in bad faith. It is not sufficient for a complainant to rest its case on the finding under Paragraph 4(a)(ii) of the Policy, although the fact that the Respondent lacks rights or legitimate interests in the Disputed Domain Name will be a factor in assessing its motivation for registering a domain name that is virtually identical to the Complainant's mark.

In this case, the Respondent employs a strategy of use known as typosquatting, which is defined as the "intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors," Nat'l Ass'n of Prof'l Baseball League, Inc. v. Zuccarini, WIPO Case No. D2002-1011. The addition of a hyphen and another letter is a purposeful attempt to disguise the Disputed Domain Name as sponsored by the Complainant and is likely to confuse Internet viewers. Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sep. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). 

The Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:

(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 the 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 its website or other online 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 respondent's website or location. 

The preamble to Paragraph 4(b) states: "For the purposes of Paragraph 4(a)(iii) [the finding of any of the circumstances] shall be evidence of the registration [...] of a domain name in bad faith." In the absence of a respondent to explain and justify its registration and use of a domain name corresponding to a famous or well-known mark, a Panel is compelled to examine the limited record for any exonerative evidence of good faith. Here, the Panel finds none.

The Complainant's proof in this case focuses the Panel's attention on the second and fourth factors. As there is no proof that would support the other factors, the Panel will not address them. Here, the Complainant contends and submits proof that the Respondent has a history of registering domain names corresponding to well-known and famous marks and that this pattern together with targeting the Complainant’s mark for the purpose of taking advantage of its goodwill and reputation to attract Internet users to its website supports abusive registration and use of the Disputed Domain Name.

Violation of Paragraph 4(b)(ii) of the Policy---“pattern of conduct”---has been construed to mean targeting trademarks of many owners as well as multiple trademarks of one owner. It applies to respondents currently infringing a single owner’s rights with multiple registrations at one time or having a history of multiple registrations involving a diversity of trademarks over a period of time. See WIPO Jurisprudential Overview 3.0, Section 3.1.2: “[a] pattern of abuse has also been found where the respondent registers, simultaneously or otherwise, multiple trademark-abusive domain names corresponding to the distinct marks of individual brand owners.” The Complainant has adduced evidence in the form of a printout from a reverse Whois search of the Respondent that shows a pattern involving a diversity of famous trademarks. See Smokey Mountain Knife Works v. Deon Carpenter, AF-0230 (a, b) (eResolution July 3, 2000) (“These registrations prevent those businesses from reflecting their trademark or service mark in a corresponding domain name. This Administrative Panel finds that this evidence demonstrates that the Respondent has engaged in a pattern of conduct of the type specified in paragraph 4(b)(ii) of the Uniform Policy.”)

The intended purpose of multiple infringing domain names is also a violation of Paragraph 4(b)(iv) of the Policy. The conduct here found "creat[es] a likelihood of confusion [...] as to the source, sponsorship, affiliation, or endorsement of [its] website". Such a strategy will initially mislead Internet users into believing that that the website is associated with the Complainant, but it has performed the task for which it was designed, namely, to attract Internet users to the hyperlinks on the website. See Justice for Children v. R neetso / Robert W. O'Steen, WIPO Case No. D2004-0175 (holding that "harm results from the confusion caused by the initial attraction to the site by means of borrowing complainant's mark. And that is exactly the harm the Policy was adopted to address.").

The Respondent has appropriated a well-known mark to serve an infringing purpose. See Royal Bank of Canada - Banque Royale Du Canada v. Registration Private, Domains By Proxy, LLC / Randy Cass, WIPO Case No. D2019-2803, the Panel noted: "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 [...] trademark, panels have been prepared to find the respondent acted in bad faith."

The evidence here is such that the only inference that can be drawn from the use of a virtually identical domain name that the Respondent is using as a vehicle for links that undoubtedly accrue to its benefit is that the purpose for the registration was to cash-in on Complainant's goodwill and reputation. See Singapore Airlines Ltd. v. European Travel Network, WIPO Case No. D2000-0641 (holding that "[t]he registration of domain names obviously relating to the Complainant is a major pointer to the Respondent's bad faith and desire to 'cash in' on the Complainant's reputation."). For these reasons, the Panel finds that the Respondent is using the Disputed Domain Name in bad faith.

As the Complainant has demonstrated that the Respondent registered and is using the Disputed Domain Name in bad faith, it has satisfied Paragraph 4(a)(iii) of the Policy.