Decision for dispute CAC-UDRP-106720

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.

The Complainant is the owner, among others, of the following trademark registrations:

• The Complainant is the owner, among others, of the following trademark registrations:

• US trademark registration No. 5420583 “NOVARTIS” registered on 13 March 2018;

• US trademark registration No. 4986124 “NOVARTIS” registered on 28 June 2018;

  US trademark registration No. 2997235 “NOVARTIS” registered on 20 September 2005;

• International trademark registration No. 1544148 “NOVARTIS” registered on 29 June 2020;

• International trademark registration No. 1349878 “NOVARTIS” registered on 29 November 2016;

• UK trademark registration No. UK00801349878 “NOVARTIS” registered on 29 November 2018.
  
  

The Complainant proved its ownership of the listed trademark registrations by the submitted extracts from the Registers.

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”), with headquarters in Switzerland, created in 1996, is the holding company of the Novartis Group. In 2023, Novartis achieved net sales of USD 45.4 billion, and total net income amounted to USD 14.9 billion and employed approximately 76 000 full-time equivalent employees as of 31 December 2023.

The Complainant is the owner of the “NOVARTIS” registered well-known trademark in numerous jurisdictions all over the world, including in the United States, the United Kingdom and Belgium.

The Complainant owns numerous domain names composed of either its “NOVARTIS” trademark alone, including <novartis.com> (registered on 2 April 1996) and <novartis.us> (registered on 19 April 2002) or in combination with other terms, such as <novartispharma.com> (registered on 27 October 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.

In the present case, the Complainant filed a complaint regarding 4 disputed domain names (hereinafter “disputed domain names”) against multiple Respondents. The disputed domain names were registered between 22-24 May 2024. The Respondents are ‘Tom Latimer’ (residing in the US), ‘Simon Walsh’ (residing in the UK), ‘Smith Cole’ (residing in the Belgium).

COMPLAINANT:

A. The Complainant contends that the disputed domain names are confusingly similar to the Complainant’s trademarks.

The Complainant is the owner of the registered, well-known trademark “NOVARTIS” in numerous jurisdictions all over the world. 

The disputed domain names incorporate:

<novartispharma-nv.com> - in its second level-portion the Complainant’s well-known trademark “NOVARTIS” in its entirety followed by the relevant term “pharma” and the term “nv” separated by a hyphen. The Complainant brings Panel’s attention to the fact that Novartis Pharma NV is the name of the Complainant’s subsidiary in Belgium (evidenced by Novartis Locations in Belgium).

<novartispharmac-nv.com> - in its second level-portion the Complainant’s “NOVARTIS” well-known trademark in its entirety with the addition of the letter “c” followed by the relevant term “pharma” and the term “nv” separated by a hyphen.

<novartispharmanv.com> - in its second level-portion the Complainant’s “NOVARTIS” well-known trademark in its entirety followed by the relevant term “pharma” and the term “nv”.

<novartis-belgie.com> - in its second level-portion the Complainant’s “NOVARTIS” well-known trademark in its entirety followed by the relevant term “belgie” (referring to Belgium) separated by a hyphen. 

The Complainant contends that the addition of such descriptive terms would not prevent a finding of confusing similarity to the trademark. Moreover, the terms “pharma” and “belgie” directly refer to the Complainant and their business and as mentioned above such terms relate to the Complainant’s subsidiaries in Belgium. 

The Complainant asserts that the “NOVARTIS” trademark is clearly recognizable within the disputed domain names.

B. The Complainant states that the Respondents have no rights or legitimate interests in respect of the disputed domain names.

The Complainant and the Respondents have never had any previous relationships, nor has the Complainant ever granted the Respondents any rights to use the “NOVARTIS” trademark, including in the disputed domain names. 

The Complainant has not found that the Respondents are known by the disputed domain names. Indeed, when searching for the disputed domain name terms “novartispharma-nv”, “novartispharmac-nv”, “novartispharmanv” and “novartis-belgie” in the Google search engine, all top returned results point to the Complainant (evidenced by Google Search Results). When entering the disputed domain names’ terms along with the name of the Respondents, there are no returned results showing that the Respondents are known by the disputed domain names (proved by Amended Google Search Results).

The Complainant adds that at the time of filing this Complaint, none of the disputed domain names resolved to any active pages (evidenced by Screenshots of the websites under the disputed domain names).

The Complainant claims that the disputed domain names are not being used in connection with the bona fide offering of goods or services. The disputed domain names have indeed been passively held. There is no evidence showing that the Respondents have been using, or preparing to use, the disputed domain names in connection with a bona fide offering of goods and services or have made a legitimate noncommercial or fair use of the disputed domain names.

Moreover, there was no response from the Respondents to the Complainant’s Cease-and-Desist letters sent on 4 June 2024 at the e-mail address as available in WHOIS records, nor to the Reminders.

In addition, the disputed domain names <novartispharma-nv.com> and <novartispharmac-nv.com> via the e-mail function, have been used in order to conduct an e-mail phishing scheme. Namely, the Respondent created an e-mail address associated with the disputed domain name “procurement@novartispharma-nv.com” and infiltrated the e-mail correspondence with one of the Complainant’s supplier/partner in Belgium.

To give the impression the fraudulent e-mail is genuine, the name of one of the Novartis group’s employees working in the Procurement department has been used. Such a name was inserted in the body of the fraudulent e-mail as a signature over the company name Novartis Pharma NV (Complainant’s subsidiary in Belgium). The fraudulent e-mail also includes, in the same signature, the postal address of Novartis Pharma NV in Belgium. By quoting one of the Novartis group’s employee names as well as company name and address, the Respondent has aimed at deceiving the recipient and diverting the supply of the equipment to a false address in Belgium, providing false contact details. Such manoeuvre of sending emails originating from the e-mail address incorporating the domain name has aimed at impersonating the Novartis group and its employees to deceive recipients and divert products which may cause severe monetary losses for the Complainant and their suppliers (evidenced by the furnished Phishing E-mail Correspondence). Furthermore, in such an e-mail chain the Respondent(s) also quoted e-mail addresses associated with the disputed domain name <novartispharmac-nv.com>. Namely, the Respondents tagged e-mail addresses it.service@novartispharmac-nv.com and lab.manager@novartispharmac-nv.com (proved by the provided Phishing E-mail Correspondence) to create a false impression that these are employees of Novartis Pharma NV responsible for the installation of equipment as follows from the structure of the e-mails. The Complainant’s partner/supplier did not immediately notice such illicit activities.

At the time of filing of amended complaint, the Complainant already took an action to suspend the <novartispharma-nv.com> disputed domain name and received confirmation on suspension (evidenced by the submitted domain name Suspension E-mail).

C. The Complainant contends that the disputed domain names have been registered and are being used in bad faith.

The Complainant claims that the Complainant’s trademark registrations significantly predate the registration of the disputed domain names (proved by WHOIS Records), and the Respondents have never been authorized by the Complainant to register the disputed domain names. 

The Complainant also enjoys a strong online presence. The Complainant is very active on social media to promote its mark, products and services. Previous UDRP panels have stated that the “NOVARTIS” trademark is well-known (see Novartis AG v. Amartya Sinha, Global Webs Link, Novartis RO, WIPO Case No. D2020-3203). According to the Complainant, it is therefore inconceivable that the Respondents were unaware of the existence of the Complainant when they registered the disputed domain names.

The Complainant adds that the structure of the disputed domain names – incorporating the Complainant’s well-known trademark “NOVARTIS” followed by the “pharma”, “nv” or “belgie” terms – shows that the Respondents registered the disputed domain names having the Complainant and its “NOVARTIS” trademark in mind. It reflects the Respondent’s clear intention to create an association, and a subsequent likelihood of confusion, with the Complainant’s trademark in Internet users’ minds.

Moreover, as previously described, two of the disputed domain names were used to perpetrate a phishing scheme trying to divert products of the Complainant’s supplier to a false address. These facts clearly demonstrate that the Respondents did not act randomly but knew the Complainant and its trademark when it undertook such a fraudulent manoeuvre.

The Complainant concludes that considering that the “NOVARTIS” trademark is well-known and that the Complainant is a globally renowned pharmaceutical company, it appears that the Respondents knew the Complainant and the “NOVARTIS” trademark at the time they registered the disputed domain names.

In addition, as previously described, the disputed domain names do not resolve to any active pages (evidenced by Screenshots of the websites under the disputed domain names) and are therefore passively held.

In addition, Tom Latimer, revealed by Registrar Verification as the registrant of <novartispharma-nv.com> and <novartis-belgie.com> appears to have registered other domain names that incorporate third-party’s brands. Namely, when conducting a Reverse WHOIS search by the email of the Respondent there are 9 results (proved by Reverse WHOIS Record), among them <gsk-ch.com> referring to GSK pharmaceutical company and others. This indicates a pattern of abusive conduct on the part of the Respondent. 

In light of all the above-mentioned circumstances, the Complainant finds it inconceivable that the Respondents could make any good faith use of the disputed domain names.

RESPONDENT:

No administratively compliant Response has been filed.

The CAC was contacted by a third person who received a written notice addressed to Respondent ‘Smith Cole’. The person contacting the CAC claims that no one named ‘Smith Cole’ seats at the address and there is no connection with the disputed domain name “<novar spharmanv.com>”.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are 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 UDRP).

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 names (within the meaning of paragraph 4(a)(ii) of the UDRP).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the UDRP).

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.

I. Preliminary Procedural Issue: Request for Consolidation of the Complaint

There is a preliminary procedural issue in this case whether the Complainant is entitled to bring a consolidated complaint against multiple Respondents or whether it is necessary for the Complainant to bring individual complaints.

1. GENERAL PRINCIPLES FOR CONSOLIDATION

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (hereinafter referred to as “The WIPO Overview 3.0”) in Paragraph 4.11.2 states: “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.

Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including e-mail address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).“

2. APPLICATION OF THE PRINCIPLES TO THIS COMPLAINT

In the present case, the Complainant filed a complaint regarding 4 disputed domain names against multiple Respondents. For the purpose of further consideration, the following table shows each of the Respondents, the number of the disputed domain names owned by them, the name of the registrar, and the date of registration.

The Complainant believes that the disputed domain names are under common control of the same person or entity.

All the Respondents are aiming at the Complainant’s “NOVARTIS” trademark and associated relevant market. The disputed domain names of all the Respondents have similar name patterns (by addition of the terms “pharma”, “nv” and “belgie”) and were registered at the same time. All the disputed domain names refer to the Complainant’s subsidiary in Belgium – Novartis Pharma NV. The disputed domain names have been registered before the same Registrar. None of the disputed domain names resolves to an active page. The disputed domain names <novartispharma-nv.com> (Tom Latimer’s) and <novartispharmac-nv.com> (Simon Walsh’s) were used in the same e-mail phishing scheme (which was described above). No administrative Response was submitted by any of the Respondents.

Under such circumstances, it can be presumed that all of the disputed domain names are controlled by the same entity/individual. 

The Panel determines that this complaint consists of multiple Respondents that should, for the reasons discussed above, be permitted to be dealt with in a single complaint for the purpose of the present proceedings under the UDRP. Overall, this is clearly a case fitting within the “common control” category in which it would be equitable and fair to permit consolidation.

II. Decision on the Case

In the present case, the Respondents have not filed any Response and consequently have not contested any of the contentions made by the Complainant. Therefore, the Panel proceeds to decide only on the basis of the Complainant’s factual statements and the documentary evidence provided in support of them [Paragraph 5(f) of The Rules].

1. CONFUSING SIMILARITY

The Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark.

The WIPO Overview 3.0 in Paragraph 1.2.1 states: “Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”.

The WIPO Overview 3.0 in Paragraph 1.7 states: “[…] 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 for purposes of UDRP standing.”

The WIPO Overview 3.0 in Paragraph 1.8 states: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”

In the WIPO Case No. D2006-0451, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., the panel stated that: “It is also well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”.

In the present case, the Complainant has established that it owns numerous international and national trademark registrations consisting of the “NOVARTIS” verbal element, protected for the classes in connection with pharmaceutical products (evidenced by the extracts from the Registers).

The disputed domain names:

• <novartispharma-nv.com> contains the Complainant’s “NOVARTIS” trademark in its entirety followed by the “pharma” general term and the “nv” term (separated by a hyphen);
• <novartispharmac-nv.com> contains the Complainant’s “NOVARTIS” trademark in its entirety with the addition of the “c” letter followed by the “pharma” general term and the “nv” term (separated by a hyphen);
• <novartispharmanv.com> contains the Complainant’s “NOVARTIS” trademark in its entirety followed by the general term “pharma” and the “nv” term;

• <novartis-belgie.com> contains the Complainant’s “NOVARTIS” trademark in its entirety followed by the “belgie” general (geographical) term (referring to Belgium) (separated by a hyphen).
  
  

No further adjustments were made to distinguish the disputed domain name from the Complainant’s trademarks. The addition of the gTLD <.com> does not change the overall impression of the disputed domain name either.

Past panels have declared that when the trademark is recognizable within the disputed domain name, the addition of a general (and geographical) term would not prevent a finding of confusing similarity.

Therefore, the disputed domain names are considered to be confusingly similar to the relevant trademark.

As a result, the Panel finds that the Complainant has satisfied Paragraph 4(a)(i) of the UDRP.

2. THE RESPONDENT´S LACK OF RIGHTS OR LEGITIMATE INTERESTS IN THE DISPUTED DOMAIN NAMES

The Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain names.

According to Paragraph 4(a)(ii) of the UDRP, the Complainant shall make a case that the Respondent lacks rights and legitimate interests in the disputed domain name. If the Complainant fulfills this requirement, the burden of proof shifts to the Respondent and so the Respondent shall demonstrate rights or legitimate interests in the disputed domain name. If the Respondent fails to prove its rights or legitimate interests, it is assumed that the Complainant satisfied the element of Paragraph 4(a)(ii) of the UDRP (see CAC Case No. 102430, Lesaffre et Compagnie v. Tims Dozman). Moreover, past panels were of the view that it is difficult or sometimes impossible to prove negative facts, i.e., absence of rights or legitimate interest on the part of the Respondent. In this respect, past panels referred to the WIPO Case No. D2000-1769, Neusiedler Aktiengesellschaft v. Vinayak Kulkarni. Within the meaning of Paragraph 4(a)(ii) of the Policy, once the complainant has made something credible (prima facie evidence), the burden of proof shifts to the Respondent to show that he has rights or legitimate interests in the domain name at issue by providing concrete evidence.

In the CAC Case No. 102279, FileHippo s.r.o. v. whois agent, the panel stated that “[i]n the absence of a response, the Panel accepts the Complainant's allegations as true that the Respondent has no authorization to use the Complainant’s trademarks in the disputed domain name. Hence, as the Complainant has made out its prima facie case, and as the Respondent has not demonstrated any rights or legitimate interests as illustrated under Paragraph 4(c) of the Policy, nor has the Panel found any other basis for finding any rights or legitimate interests of the Respondent in the disputed domain name, the Panel concludes that the Complainant has satisfied the requirements of Paragraph 4(a)(ii) of the Policy.”

In the present case, the Complainant claims that the Respondents are not related in any way to the Complainant and that the Complainant has never granted any license nor authorization to the Respondents to use the Complainant’s trademarks or apply for registration of the disputed domain names.

The Complainant alleged and proved Its ownership of numerous international and national trademark registrations (see above). As has been already stated, the disputed domain names are confusingly similar to the Complainant’s trademark “NOVARTIS” whose are preceding the date of registration of the disputed domain names.

As evidenced by the furnished Google Search Results and Amended Google Search Results, the disputed domain names lead internet users to the Complainant’s domain names. Therefore, the disputed domain names nor the Respondents are commonly known and connected to the Complainant’s “NOVARTIS” trademark.

From the submitted Screenshots of the websites under the disputed domain names, it becomes clear that the Respondents are passively holding the disputed domain names since none of the disputed domain names is connected to an active website.

The Respondents must have been aware of the Complainant and Its trademark at the time of the disputed domain names’ registration.

The Respondents did not reply to the Complainant’s Cease-and-Desist letter nor to the Complaint and so failed to demonstrate their rights or legitimate interests in the disputed domain names (proved by the provided Cease-and-Desist Letter).

In addition, the Respondents infiltrated into the e-mail correspondence with the Complainant’s supplier in Belgium in connection with the <novartispharma-nv.com> and <novartispharmac-nv.com> disputed domain names. The scheme of the infiltration is described above and duly evidenced by the submitted Phishing E-mail Correspondence. This behavior proves the Respondents’ knowledge of the Complainant and Its business activities.

Under such circumstances, the Panel cannot find any legitimate, non-commercial or fair use rights or interests of the Respondents in the disputed domain names.

Such a finding is supported by the fact that by the time of filing the amended complaint, the <novartispharma-nv.com> disputed domain name was suspended by the Registrar (proved by Domain Name Suspension E-mail).

Therefore, the Panel finds that the Complainant has satisfied the requirement under Paragraph 4(a)(ii) of the UDRP.

3. THE REGISTRATION AND USE OF THE DISPUTED DOMAIN NAMES IN BAD FAITH

The Panel finds that the Respondents registered and used the disputed domain names in bad faith.

The WIPO Overview 3.0 in Paragraph 3.1.1 states: “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, […].

The WIPO Overview 3.0 in Paragraph 3.1.4 states: “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.”

In the WIPO Case No. D2006-1440, National Football League v. Thomas Trainer, the panel stated: “when a registrant, such as the Respondent here, obtains a domain name that is confusingly similar 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.”

In the present case, the Complainant has established that owns numerous international and national trademark registrations consisting of the “NOVARTIS” verbal element, protected for classes in connection with pharmaceutical products and with the priority right since 2005 (evidenced by the extracts from the Registers). Past panels have stated that the “NOVARTIS” trademark is well-known (see, e.g., the WIPO Case No. D2020-3203, Novartis AG v. Amartya Sinha, Global Webs Link, Novartis RO).

The disputed domain names contain the Complainant’s trademark in its entirety and adds general terms of “pharma” “nv” “belgie” or a letter “c”. No further adjustments were made to distinguish the disputed domain names from the Complainant’s trademark. Since Novartis Pharma NV is the Complainant’s subsidiary in Belgium, there can be recognized a clear intention to create a likelihood of confusion between the named company and the disputed domain names.

This Panel concludes that the disputed domain names are confusingly similar to the highly distinctive and well-known earlier trademark of the Complainant.

Moreover, the Complainant is recognized globally, having the large amount of business locations around the world, including the US, the UK and Belgium (evidenced by the submitted Information about the Complainant). The Complainant is also active on social media (proved by the provided Screenshot of the Complainant’s Instagram Profile).

A simple Google search for “NOVARTIS” leads Internet users mostly to the Complainant’s name and Its domain names associated.

Therefore, this Panel states that the Respondent must have been aware of the Complainant’s trademarks and Its reputation before the registration of the disputed domain names on 22-24 May 2024.

As was proved by the furnished Screenshots of the website under the disputed domain names, the disputed domain names do not lead to an active website. As such, the Complainant is passively holding the disputed domain names without any demonstrable business plan.

In addition, as already described above, two of the disputed domain names were used in an e-mail phishing scheme to divert products of the Complainant’s supplier to a false address. This is a clear proof that the Respondents knew the Complainant, Its trademark and business activities.

Thus, it might be concluded that the Respondents are not using the disputed domain names in good faith.

The Respondents did not reply to the Complaint and so failed to demonstrate their rights or legitimate interests in the disputed domain names. Moreover, the Respondents did not reply to the Cease-and-Desist letters sent to them by the Complainant (evidenced by the provided Cease-and-Desist Letter). Both support the finding of the Respondent’s bad faith.

Following the above-mentioned, the Panel finds that the Complainant has satisfied conditions pursuant to Paragraph 4(a)(iii) of the UDRP.