Case number | CAC-UDRP-105668 |
---|---|
Time of filing | 2023-08-02 10:02:33 |
Domain names | ainovartis.com |
Case administrator
Organization | Iveta Špiclová (Czech Arbitration Court) (Case admin) |
---|
Complainant
Organization | Novartis AG |
---|
Complainant representative
Organization | BRANDIT GmbH |
---|
Respondent
Name | Paul Moreno |
---|
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 one of the biggest global pharmaceutical and healthcare groups. The Complainant provides solutions to address the evolving needs of patients worldwide by developing and delivering innovative medical treatments and drugs. The Complainant, Novartis AG, with headquarter in Switzerland was 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 in the United States of America (hereinafter “the United States”) where the Respondent seems to be located.
The Complainant holds an ample portfolio of the well-known trademark NOVARTIS registered at a worldwide level, including in the United States, being:
- International Trademark NOVARTIS, Reg. No. 663765, granted on July 1,1996, and in force until July 01, 2026, in connection with classes 01, 02, 03, 04, 05, 07, 08, 09, 10 14, 16, 17, 20, 22, 28, 29, 30, 31, 32, 40 and 42;
- US Trademark NOVARTIS, Reg. No. 2336960 filed on July 9, 1996, granted on April 4, 2000, and in force until April 4, 2030, in connection with class 05;
- US Trademark NOVARTIS, Reg. No. 2997235, filed on February 10, 2004, granted on September 20, 2005, and in force until September 22, 2025, in connection with class 05.
The Complainant is one of the biggest global pharmaceutical and healthcare groups. The Complainant provides solutions to address the evolving needs of patients worldwide by developing and delivering innovative medical treatments and drugs. The Complainant, Novartis AG, based in Basel, Switzerland was created in 1996 through a merger of two other companies Ciba-Geigy and Sandoz, is the holding company of the Novartis Group. In 2022, in accordance with its Annual Report, Novartis achieved net sales from continuing operations of USD 50.5 billion, and total net income amounted to USD 7.0 billion and employed approximately 102 000 full-time equivalent employees as of December 31, 2022.
The Complainant’s products are manufactured and sold in many regions worldwide. The Complainant has an active presence in the United States where the Respondent seems to be located. The Complainant has subsidiaries and associated companies based in the United States and has been playing an active role on the local market and in the United States society for many years.
The Complainant is the owner of the registered well-known trademark NOVARTIS in numerous jurisdictions all over the world. The Complainant’s trademark registrations significantly predate the registration of the disputed domain name, which was registered on June 1, 2023.
The Complainant also owns its domain name´s portfolio, composed of either its trademark NOVARTIS alone, including: <novartis.com> registered on April 2, 1996; <novartis.us> registered on April 19, 2002 or in combination with other terms, e.g. <novartispharma.com> registered on October 27, 1999. The Complainant uses these domain names to resolve to its official websites 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, as Facebook, LinkedIn, X (formerly Twitter), YouTube, and Instagram.
The disputed domain name <ainovartis.com> was registered on June 1, 2023. At the time that the Complainant found out about the registration of the disputed domain name, the disputed domain name resolved to a Registrar parking page showcasing sponsored links related to the Complainant and its business. On June 13, 2023, the Complainant sent a Cease-and-Desist Letter to the Respondent, which it was replied by the Respondent on the same date.
By the time of this Decision, the disputed domain name <ainovartis.com> was redirected to one of the Complainant´s active domain names, being <novartis.com>, which displays Complainant’s official website.
Complainant Contentions:
In summary the Complainant contends/asserts:
- That the disputed domain name <com> incorporates, in its second level portion, the NOVARTIS trademark in its entirety, preceded by the term “ai”, an acronym for the English terms “artificial intelligence”; that the NOVARTIS trademark is clearly recognizable within the disputed domain name, citing Section 1.8 of the WIPO Overview 3.0.
- That the Respondent has no rights or legitimate interests in respect of the disputed domain name, due to 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 a domain name; that the Respondent is not commonly known by the disputed domain name; that the use of the Privacy Shield used by the Respondent looked to hide its true identify, avoiding to be known by the disputed domain name.
- That at the time that the Complainant found out about the registration of the disputed domain name the disputed domain name resolved to a Registrar parking page showcasing sponsored links related to the Complainant and its business, such as, but not limited to: “Pharmaceutical”, “Pharmaceutical Sales” and “Pharma”, use that cannot be considered as a bona fide offering of goods or services nor as legitimate noncommercial or fair use, citing Renault SAS v. Domain Administrator, See PrivacyGuardian.org / Simon Pan, WIPO Case No. D2019-320.
-
That on June 13, 2023 sent a Cease-and-Desist Letter via the anonymized e-mail address available on the publicly available WhoIs records; that on the same date the following response was received from the e-mail address bydomain@proton.me, that the entire message was as follows:
“To Whom it May Concern:
I hope this email finds you well. I wanted to address your recent inquiry regarding the domain name ainovartis.com. Firstly, I want to assure you that we have no intentions of infringing on your trademark or causing any inconvenience to your business.
The domain ainovartis.com is merely parked and has no active use for commerce or any similar purposes. In an effort to demonstrate our good faith, we have taken the initiative to redirect the website to your primary domain, novartis.com. This redirect will prevent any potential confusion and ensure a seamless experience for your visitors.
Our main objective in optimizing this domain name is to enhance the visibility and traffic of your primary website. We believe that by redirecting ainovartis.com to novartis.com, you can potentially benefit from increased exposure and a larger online audience and for those seeking an ai experience in the future.
While we are not actively seeking to sell this domain, we remain open to future discussions and possibilities. If you perceive any value in this domain name or have any further thoughts on how we can collaborate to maximize its potential, we are more than willing to engage in further communication. Otherwise, the domain will continue to redirect visitors to your website with no benefit or financial gain for us.
Thank you once again for reaching out to us. We genuinely appreciate your understanding and look forward to any feedback or suggestions you may have regarding the domain name ainovartis.com”.
- That the redirection of the disputed domain name to its official website, being https://www.novartis.com/about/strategy/data-and-digital/artificial-intelligence; cannot be considered as a bone fide offering of goods and services, even if, as claimed by the Respondent, the redirection is “with no benefit or financial gain for us”; citing Barrett Steel Limited v. Web Hosting, WIPO Case No. D2021-0055.
- The Complainant contends that after the Respondent’s communication, the Complainant acknowledged receipt of his response, reiterating the content of the Cease-and-Desist Letter, as well as offering to resolve the matter amicably by compensating the Respondent for his documented out of pocket expenses related to disputed domain name in return for the transfer of the latter to the Complainant; that, on the same day, the Respondent provided a response in the following terms:
“Hello. Thank you for your email. We plan on retaining this domain as our trademark attorney advises us that we are not in violation of trademark/copyright laws or rules. We are not using the domain for any commerce that would cause confusion with your brand name. It is simply parked. Also, there are no ads displaying on the parked domain. However, we are open to any offers to purchase the domain and transfer it over. Please understand that this is not a solicitation of funds for our domain. We are simply stating that we may consider transferring the domain to you if a reasonable offer is presented. This transaction would have to be initiated by you. Otherwise, we will hold on to the domain and it will remain parked with no ads running.”
- That the Respondent never provided a credible, evidence-backed rationale or explanation as to why he chose to register and operate the disputed domain name, despite having the opportunity of doing it, which reinforces the finding that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
- That its trademarks significantly predate the registration of the disputed domain name and that the Respondent has never been authorized by the Complainant to register it; that due to the strong online presence that the Complainant enjoys, including in social media, the Respondent could have conducted a simple online search regarding the disputed domain name terms on popular search engines, and inevitably learnt about the Complainant, its trademark and business.
-
That the structure of the disputed domain name – incorporating in its second level portion the Complainant’s well-known trademark NOVARTIS preceded by the term “ai” - shows that the Respondent registered it having the Complainant and its NOVARTIS trademark in mind, reflecting the Respondent’s clear intention to create an association, and a subsequent likelihood of confusion, with the Complainant’s trademark in Internet users’ mind; that by reading the disputed domain name, Internet users may believe that it is directly connected to or authorized by the Complainant; that the presence of active MX records, increasing the level of risks, fraudulent purposes among the Internet users, by receiving emails from e-mail addresses associated with the disputed domain name (such as “[…]@ainovartis.com). with all of it, showing that the Respondent registered and is using the disputed domain name in bad faith.
-
The Complainant contends that despite its efforts of trying to settle the present dispute amicably, by even offering a payment in return of all the documented out-of-pocket costs to the Respondent for the transferring of the disputed domain name, the Respondent chose to hold it and implied a reasonable offer/payment for the transfer of the disputed domain name; that with it the Respondent hinted the possibility of selling the disputed domain name to the Complainant, seeking to profit in some fashion from, or otherwise exploit, the Complainant’s trademark and obtain an unjust profit – consisting in a sum that far exceeds the out of pocket costs incurred by the Respondent – given (i) the absence of any other circumstances indicating that the Respondent is operating the disputed domain name in good faith and (ii) his failure to present a credible evidence-backed rationale for registering the disputed domain name in the first place, also citing section 3.1.1 of the WIPO Overview 3.0. Lastly, the Complainant contends that due all the circumstances of the present case, it is inconceivable that the Respondent could make any good faith use of the disputed domain name.
Response
No administratively complaint response has been filed.
The formal date of commencement of the administrative proceeding in accordance with Paragraph 4(f) of the Rules was August 14, 2023. The Response due date was September 3, 2023.
The CAC sent a reminder to the Respondent on August 30, 2023.
On September 4, 2023, the Respondent submit a ‘Suspension request’ to CAC through the online platform, requesting to suspend the proceeding until September 11, 2023 due to settlement negotiations commenced by the Parties.
In the same communication through the CAC’s online platform, the CAC invited the other Party to confirm/decline this suspension request within 3 business days, through the ‘Suspension Request Confirmation Form’, indicating also that after the lapse of the deadline, the proceeding will continue from the point of its suspension.
On September 4, 2023 the Respondent, represented by Meghan Pratschler (Meghan the Attorney, LLP) (hereinafter “Respondent’s Authorized Legal Representative”), submitted a message through the CAC’s platform, titled as ‘Request of Suspension’ indicating the following:
“We last received communication on August 30, that the response form would expire soon. Per UDRP rules, the Response must be filed within 20 days; the amended complaint was received on August 14; however, we were not able to access the form or the answers to any of the help questions on August 31, September 1st, 2nd, 3rd, or 4th (today). We are not sure what technical difficulties are being experienced, but they have made it impossible for us to respond in a timely manner.”
On September 6, 2023, the CAC’s Case Administrator sent the following ‘Clarification’ message through its online platform:
‘Dear Respondent,
Due to the fact that the case is now at the stage, where the "Suspension Request Confirmation" form has to be filed, it is not technically possible to file "Response" form now. If you agree with the settlement, please confirm it via the "Suspension Request Confirmation" form. You can find it in the left-hand menu "Dispute" (small gray pop-up window).
The deadline for confirming the Suspension will expire tomorrow. After the expiration, the "Response" form will be available again.’
Since the Complainant and the Respondent did not submit the Suspension Request Form Confirmation, or the Administrative Response by the due date, on September 8, 2023, the CAC sent the Notification of Respondent’s Default.
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is 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).
Language of Proceedings:
According to Paragraph 11(a) of the UDRP Rules, which states: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” This Panel notes that the Complainant requested English as the Language of the Proceedings, and that on August 1, 2023, the concerned Registrar confirmed English as the Language of the Registration Agreement. In addition, there is sufficient evidence before this Panel, that the Respondent is perfectly able to communicate on English, therefore, English is the corresponding Language of this Proceeding and of its Decision.
Respondent’s Suspension Request:
In accordance to point 11. Art. 17 (a) of the CAC’s UDRP Supplemental Rules,
“If the Parties negotiate a settlement, each of them may submit a written notice to the Provider to request a suspension of the proceeding for a limited period of time that is no longer than 14 days. The suspension commences only after the other Party confirms it within 3 business days. (…) Resumption of the proceeding shall take place automatically upon receipt of a request thereto from either the Respondent or the Complainant or upon the expiration of such limited and specified time period”.
Therefore, CAC’s UDRP Suspension Requests require to be duly Confirmed by both Parties to grant the Suspension of the proceeding.
The Panel notes that the Respondent was duly notified through the CAC’s online platform, that was successfully able to submit the Suspension Request through the CAC’s platform, and that even the Respondent’s Authorized Legal Representative was able to submit a communication through the platform as well, without any kind of technical issues. The Panel also notes that, despite the CAC’s Clarification, which it was provided on time, in detail, and even including the possibility to the Respondent of submitting the Response, the Respondent and/or the Respondent’s Authorized Legal Representative, did not provide such Confirmation or the Response in accordance to paragraph 5 of the Rules.
The Complainant did not provide the Confirmation either. Consequently, in accordance to point 11. Art. 17 (a) of the CAC’s UDRP Supplemental Rules, the CAC proceeded accordingly, and Notified the Respondent’s Default. Therefore, this 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.
In accordance with Paragraph 4(a) of the Policy, the onus is on the Complainant to prove:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will consider each of these requirements in turn.
This Panel notes that no administratively complaint response has been filed by the Respondent or by its Authorized Legal Representative. Therefore, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed contentions in accordance to paragraphs 5(f), 14, and 15(a) of the Rules.
- Identical or Confusingly Similar
The Complainant has provided vast and sufficient evidence of having Trademark Rights over the word NOVARTIS, since July 1, 1996.
The disputed domain name <ainovartis.com> incorporates, in its second level portion, the NOVARTIS Trademark in its entirety, preceded by two vowels as “ai”, which presumably and/or, due its current acquired relevance, plus the fact of being linked to the Complainant’s business activity, can be interpreted as the acronym for the English term “artificial intelligence”. The Complainant’s well-known Trademark NOVARTIS is recognizable within the disputed domain, the addition of such vowels or the ‘ai’ term, doesn’t prevent a finding of confusing similarity (see Novartis AG v. Luis Angel (Correo Ilimitado), CAC-UDRP-105437; Novartis AG v. Francios Laurence, CAC-UDRP Case No. 105556 and Section 1.8 of the WIPO Overview 3.0).
In relation to the gTLD “.com”, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark, as it is a technical requirement of registration (see Section 1.11.1 of the WIPO Overview 3.0 and Novartis AG v. gowan fiqmc, CAC-UDRP Case No. 105459).
Therefore, the disputed domain name <ainovartis.com> is confusingly similar to Complainant’s NOVARTIS well-known Trademark.
- Rights or Legitimate Interests
According to the submitted evidence, the nature of Respondent’s communications and that no administratively compliant response was filed by the Respondent or through its Authorized Legal Representative, rebutting the Complainant’s contentions, this Panel determines that the Complainant has established its prima facie case in relation to the Second Element of the Policy, due to:
(1) the Respondent registered the disputed domain name on June 1, 2023, very well after the Complainant’s acquired its Trademark Rights over NOVARTIS on 1996, e.g.: International Trademark NOVARTIS, Reg. No. 663765, granted on July 1,1996, and in force until July 1, 2026;
(2) the Respondent purposely selected a well-known Trademark as NOVARTIS which it is protected at a worldwide level, including in the United States, registered as a domain name without the Complainant’s authorization, intentionally added it the term “ai”, which is related to the Complainant’s business, suggesting a false affiliation, confusing the Internet Users who seeks or expects to find the Complainant on the Internet (see Section 2.5.1 of the WIPO Overview 3.0 and Instagram, LLC v. Ingramer, Wiseway SIA 40203255185, WIPO Case No. D2021-4364);
(3) the Respondent is not a licensee, or associated or affiliated to/by the Complainant in any form;
(4) nothing in the records suggest or prove that the Respondent has become commonly known by the term “ainovartis.com”; in contrary, and according to the evidence submitted by the Complainant, by conducting a simple Google search, including in any IP database, of the word “Novartis”, the Respondent could easily have noticed the Complainant’s existence and value of the Trademark NOVARTIS;
(5) there is no evidence that could possibly suggests to this Panel, that the Respondent has been using, or preparing to use, the disputed domain name in connection with a bona fide offering of goods and services or has made a legitimate noncommercial or fair use of the disputed domain name, despite the Respondent assertions as that the disputed domain name was “merely parked” and its subsequent arbitrary “redirection”.
According with the evidence, the Complainant sent the Cease-and-Desist Letter on June 13, 2023 the disputed domain name website resolves to a PPC with commercial links related to Complainant’s business activity, such as, but not limited to: “Pharmaceutical”, “Pharmaceutical Sales” and “Pharma”, showing that the disputed domain name was not “merely parked”; after such date, the disputed domain name was redirected [by the Respondent] to one of Complainant’s domain names, being in this case <novartis.com>. Uses and actions that were confirmed by the Respondent on its replied/communication to the Complainant on June 13, 2023 as follows:
“The domain ainovartis.com is merely parked and has no active use for commerce or any similar purposes. In an effort to demonstrate our good faith, we have taken the initiative to redirect the website to your primary domain, novartis.com. This redirect will prevent any potential confusion and ensure a seamless experience for your visitors. (…)
We believe that by redirecting <ainovartis.com> to <novartis.com>, you can potentially benefit from increased exposure and a larger online audience and for those seeking an ai experience in the future.” (underline added).
The Domain Name Jurisprudence has confirmed in previous cases that PCC websites with commercial links who looks to trade-off a complainant’s (or its competitor’s) trademark, and non-authorized redirections are indicators of absence of rights or legitimate interests and bad faith, respectively (see Renault SAS v. Domain Administrator, See PrivacyGuardian.org / Simon Pan, WIPO Case No. D2019-3208; Barrett Steel Limited v. Web Hosting, WIPO Case No. D2021-0055; CSC Holdings, Inc. v. cablevision-lightpath.com Inc., WIPO Case No. D2004-1057; Novartis AG v. yang zhi chao, CAC-UDRP-105661).
Furthermore, Section 2.9 of the WIPO Overview 3.0, states that:
“Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.”
Therefore, this Panel concludes, that the Respondent has no rights or legitimate interests in respect of the disputed domain name <ainovartis.com>.
- Registered and Used in Bad Faith
3.1 Registration in Bad Faith:
The Complainant acquired its Trademark Rights over the word NOVARTIS in 1996, meaning [very] well before the Respondent registered the disputed domain name on June 1, 2023.
Given the evidence and circumstances of the present case, in particular that NOVARTIS is a well-known, which enjoys worldwide recognition, the Complainant’s business activity, plus the nature of the Respondent’s communications and conduct, where no Response was filed, the Respondent looked to trade-off from Complainant’s Trademark, through the PPC website, decided to redirect without Complainant’s authorization, and to retain the disputed domain name in exchange of a monetary compensation different from the documented out-of-pocket costs directly related to the disputed domain name, this Panel, agrees with the Complainant, and determines that the Respondent was fully aware of Complainant’s Trademark value at the moment of the registration of the disputed domain name and did it in bad faith (see Renault SAS v. Domain Administrator, See PrivacyGuardian.org / Simon Pan, WIPO Case No. D2019-3208; Barrett Steel Limited v. Web Hosting, WIPO Case No. D2021-0055, and Section 3.2.2 of the WIPO Overview).
Therefore, this Panel concludes that the disputed domain name was registered in bad faith.
3.2 Bad Faith Use:
As described along this Decision, and according with the evidence submitted, until July 13, 2023, the disputed domain resolved to a PPC website with active commercial links related to the Complainant, activity that seeks to get revenues based on the Complainant’s NOVARTIS well-known Trademark, which it has been found by previous UDRP Panelist, as a conduct as referred to in paragraph 4(b)(iv) of the Policy (see Section 3.5 of the WIPO Overview; Accenture Global Services Limited v. Tulip Trading Company, WIPO Case No. D2015-1520; Renault SAS v. Domain Administrator, See PrivacyGuardian.org / Simon Pan, WIPO Case No. D2019-3208; Novartis AG v. yang zhi chao, CAC-UDRP-105661 and Novartis AG. v. Carolina Rodrigues (Fundacion Comercio Electronico), CAC-UDRP-105302).
Section 3.1.4 of the WIPO Overview 3.0, states:
“[…] panels have found that a respondent redirecting a domain name to the complainant’s website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant.” (emphasis added).
Also in the present case, the Respondent after to receive the Complainant’s Cease and Desist Letter, decided without the Complainant’s authorization, to redirect the disputed domain name to one of Complainant’s relevant domain names, being <novartis.com>, and furthermore to retain the control over the disputed domain name in exchange of a compensation different from the documented out-of-pocket costs; conducts that have been found by multiple UDRP Panelist, as indicators of bad faith registration and use, as referred to in paragraph 4(b)(i) and 4(b)(iv) of the Policy (see Barrett Steel Limited v. Web Hosting, WIPO Case No. D2021-0055; Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625; Conforama France v. Benjamin Kouassi, WIPO Case No. D2021-1166 and Telefonaktiebolaget LM Ericsson v. Registration Private, Domains By Proxy, LLC / Aha Tek, WIPO Case No. 2021-2813).
In Conforama France v. Benjamin Kouassi, WIPO Case No. 2021-1166, the Panel states:
“A respondent redirecting a domain name to the complainant’s website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant. See Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625 ("[T]he redirection from the disputed domain name to Complainant's official website reinforces the likelihood of confusion. Internet users are likely to consider the disputed domain name as in some way endorsed by or connected with Complainant, particularly taking into consideration the reputation of the Mark…UDRP panels have pointed out in previous redirection UDRP cases, that as long as the complainant does not itself control the disputed domain name, it could be redirected to an unauthorized site at any time.”). (underlined added).
This Panel agrees with the Complainant allegations in relation to the presence of active MX records in the disputed domain name, which increases the level of risks, fraudulent purposes among the Internet users, by receiving e-mails from e-mail addresses associated with the disputed domain name (such as “[…]@ainovartis.com, emphasizing Respondent’s bad faith use (see Novartis AG v. ExtraHostPro Webhosting Ikeja, CAC-UDRP-105667 and Novartis AG v. Kim Feltham, CAC-UDRP-105438).
Therefore, this Panel concludes that, the disputed domain name is being used in faith as well.
- ainovartis.com: Transferred
PANELLISTS
Name | María Alejandra López García |
---|