Decision for dispute CAC-UDRP-106897

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

In these proceedings, the Complainant relies on the following trademarks:

- NOVARTIS (word), US Trademark Registration No. 2336960, registered as of April 4, 2000 and duly renewed, in the name of Novartis AG (the Complainant), where Respondent is located;

- NOVARTIS (word), US Trademark Registration No. 4986124, registered as of June 28, 2016, in the name of Novartis AG (the Complainant), where Respondent is located;

- NOVARTIS (word), International Trademark Registration No. 1544148, registered as of June 29, 2020, in the name of NOVARTIS AG (the Complainant), designating among others the UK and the US, where Respondent is located;

- NOVARTIS (word), UK Trademark Registration No. UK00801349878, registered as of November 17, 2017, in the name of Novartis AG (the Complainant).

It is worth noting that, the Complainant owns a plethora of “NOVARTIS” (word) trademarks, covering the majority of the countries of the world, which have not been cited in these proceedings.

The Complainant is a well-known large global healthcare / pharma company, created back in 1996 in Switzerland, with some 125000 employees nowadays, active in as many as 155 countries around the world, including the United States of America, where Respondent is based.

The Complainant owns a large-sized portfolio of trademarks worldwide including the wording (and its company name) "NOVARTIS", among which a Swiss (home) registration dating back to February 1996. It also owns a multitude of related domain names, like <novartis.com> since April 2, 1996, <novartis.us> since April 19, 2002 and <novartispharma.com> since October 27, 1999.

The disputed domain name <ac-novartis.com> was registered on August 29, 2024 by the Respondent.

COMPLAINANT

The Complainant contends that the disputed domain name is confusingly similar to its NOVARTIS trademark, as it is a combination of this wholly incorporated trademark and of a generic term. This last element is sufficient to support the finding that the disputed domain name is confusingly similar to the Complainant's trademark. Indeed, the mere addition of the simple letters “AC-” before the Complainant’s trademark does not change the overall impression of a most likely connection with the trademark NOVARTIS of the Complainant. As to the gTLD “.com”, the Complainant suggests that it should be disregarded, as per the usual practice.

The Complainant maintains that the Respondent lacks rights or legitimate interests in the disputed domain name because the Respondent is not known by the disputed domain name, the Complainant is not affiliated with the Respondent nor has it ever authorised the Respondent to register its trademark as a domain name, and the Complainant has no business with the Respondent.

According to the Complainant, given the seniority, distinctiveness and worldwide reputation of the NOVARTIS trademark, the Respondent registered the disputed domain name with full knowledge of the Complainant's trademark in an intentionally designed way, with the aim to create a likelihood of confusion with the Complainant’s trademarks and domain names, and this is evidence of the fact that the disputed domain name was registered in bad faith. The addition of the letters “AC-” does not change this view.

With respect to use in bad faith, the Complainant points out that the Respondent has passively held the disputed domain name in an inactive website, a fact that -in combination with the incorporation of a famous trademark in a domain name- proves use in bad faith. Further, the Complainant essentially claims that the Respondent has opportunistically configured MX servers that were used in a phishing scheme and has not responded to its cease-and-desist letter, despite a reminder sent.

For all these reasons, the Complainant concludes that the Respondent registered and used the disputed domain name in bad faith.

RESPONDENT

No administratively compliant Response has been filed.

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 disputed domain name consists of the Complainant's whole trademark (NOVARTIS), the addition of the simple letters “AC-” in front of which not being sufficient to escape the finding that the disputed domain name is confusingly similar to the trademark of the Complainant.

As far as the gTLD ".com" is concerned, it is generally recognized that top level domains do not have any bearing in the assessment of identity or confusing similarity, according to paragraph 4(a)(i) of the Policy.

Hence, the Panel is satisfied that the first requirement under the Policy is met.

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).

Since proving a negative fact is almost impossible, panelists in UDRP proceedings have generally agreed that it is sufficient for the Complainant to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name to shift the burden of proof to the Respondent.

In the case at issue, the Complainant argued that it had never authorised the Respondent to register the NOVARTIS trademark in a domain name, and that it had never licensed its trademark to the Respondent.

Furthermore, the Respondent has not demonstrated any use of the disputed domain name in connection with a bona fide offering of goods and services or a legitimate non-commercial or fair use of the disputed domain name.

Finally, there is no other evidence in the case file that could demonstrate that the Respondent has been commonly known by the disputed domain name.

In view of the foregoing, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. In order to rebut the Complainant's arguments, the Respondent had the possibility to make his own defense. However, the Respondent has chosen not to file a Response.

Therefore, the Panel is satisfied that also the second requirement under the Policy is met.

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).

As far as registration in bad faith is concerned, given the worldwide reputation of the Complainant's trademark and the fact that the disputed domain name fully incorporates this trademark, it is rather clear that, at the time of the registration of the disputed domain name, the Respondent was well aware of the Complainant's trademark. The registration as domain name of a third party's well-known trademark with full knowledge of the fact that the rights over this trademark belong to a third party amounts to registration in bad faith.

With respect to use in bad faith, the disputed domain name resolves to an inactive website. For this Panel, such behaviour combined to the well-known character of the Complainant’s trademark clearly amounts to use in bad faith. At the same time, the Respondent has configured MX servers, which have apparently been actively used in bad faith, through the sending of fraudulent e-mails to third parties. Therefore, it is impossible for this Panel to conceive any plausible active use of the disputed domain name by the Complainant that would be legitimate.

Therefore, the Panel finds it clear that the disputed domain name was used in bad faith.

For all circumstances mentioned above, the Panel is satisfied that also the third requirement under the Policy is satisfied.

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.

The disputed domain name wholly incorporates the Complainant's trademark next to simple letters. The disputed domain name is therefore confusingly similar to the Complainant's trademark.

The Respondent was not authorised to include the Complainant's trademark in the disputed domain name, and the Complainant never licensed its trademark to the Respondent. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate non-commercial or fair use.

The Respondent registered the disputed domain name with full knowledge of the Complainant's well-known trademark. His use of the disputed domain name is in bad faith, as there is no conceivable use of the disputed domain name that could amount to a legitimate use.