Decision for dispute CAC-UDRP-107309

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 has provided evidence of ownership of the numerous trademarks, including:

• International trademark NOVARTIS registered on 1 July 1996 under No. 663765, duly renewed and designating goods and services in international classes 01, 02, 03, 04, 05, 07, 08, 09, 10, 14, 16, 17, 20, 22, 28, 29, 30, 31, 32, 40 and 42.
• International trademark NOVARTIS registered on 29 June 2020 under No. 1544148, designating goods and services in international classes 09, 35, 38 and 42.
• US trademark NOVARTIS registered on 28 June 2016 under No. 498612, and designating goods and services in international classes 05, 09, 10, 4142 and 44.

The Complainant 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”), created in 1996 through a merger of two other companies Ciba-Geigy and Sandoz, is the holding company of the Novartis Group.

The Complainant also owns an important domain names portfolio, including the domain name <novartis.com>.

The disputed domain name <uk-novartis.com> was registered on January 15, 2025 and resolves to a server page. MX records are configured on the disputed domain name.

COMPLAINANT

A. THE DISPUTED DOMAIN NAME IS IDENTICAL OR CONFUSINGLY SIMILAR
The Complainant states that the disputed domain name is confusingly similar to its trademark NOVARTIS. The only difference lies in the addition of the geographical term “uk” and a hyphen to trademark NOVARTIS in the domain name.

It does not change the overall impression of the designation as being connected to the Complainant’s trademark NOVARTIS. It does not prevent the likelihood of confusion between the disputed domain name and the Complainant, its trademark and the domain names associated.

Furthermore, the Complainant contends that the addition of the gTLD “.com” is a standard registration requirement and may be disregarded when assessing the likelihood of confusion between the disputed domain name and the Complainant, its trademark and its domain names associated.

B. RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTEREST IN RESPECT OF 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 in the disputed domain name, and the Complainant has never granted the Respondent with any rights to use the NOVARTIS trademark.

 The Complainant equally submits that the Respondent is not using the domain name in connection with a bona fide offering of goods or services. The disputed domain name resolves to a server page, and MX records are configured on the disputed domain name.

Thus, in accordance with the foregoing, the Complainant contends that the Respondent has no right or legitimate interest in respect of the disputed domain name.

C. THE DISPUTED DOMAIN NAME WAS REGISTERED AND IS BEING USED IN BAD FAITH
The Complainant contends that the disputed domain name is confusingly similar to its distinctive trademark NOVARTIS. The Complainant’s trademark NOVARTIS is widely known. Past panels have confirmed the notoriety of the trademark NOVARTIS.

Given the distinctiveness of the Complainant's trademark and reputation and the fact exposed above, it is reasonable to infer that the Respondent has registered the domain name with full knowledge of the Complainant's trademark. Moreover, the Complainant states that the use of the geographical term “uk” in the disputed domain name was most likely done to confuse internet users by creating a similarity between the disputed domain name and the Complainant.

 The fact that MX records are linked to the disputed domain name is a further element of the Respondent's bad faith. Finally, the Complainant submits that the Respondent engaged in a pattern of abusive registrations targeting the Complainant, as the Respondent previously appeared in other proceedings raised by the Complainant.

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 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.

Notwithstanding the fact that no Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:

1. that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2. that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. that the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

A complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the complainant to succeed.

The Complainant, Novartis AG, is a multinational pharmaceutical company developing and selling medical treatments and drugs worldwide. The Complainant has provided evidence of ownership of the mark "NOVARTIS".

As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name with the trademarks in which the complainant holds rights. According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “this test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”.

Also, according to section 1.7 of the WIPO Overview 3.0, “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 disputed domain name wholly incorporates the Complainant’s trademarks "NOVARTIS" in addition to the geographic term “uk”. This addition does not prevent a finding of confusing similarity with the Complainant’s trademark. The fact that a domain name wholly incorporates a Complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such mark.

 It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.com”, is typically ignored when assessing whether a domain name is identical or confusingly similar to a trademark.

 This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:

1. before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
2. the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
3. the respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a Complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element.”

The evidence on record does not show that the Respondent was commonly known, as an individual or an organization, by the disputed domain name.

 The Panel also finds, in the absence of a rebuttal from the Respondent, that the Respondent uses the Complainant's trademarks in the disputed domain name without authorization from the Complainant.

 Equally, the Panel accepts that the Respondent has not made a legitimate non-commercial or fair use of the disputed domain name.

 Therefore, the Panel concludes that the Respondent has no right or legitimate interests in the disputed domain name and therefore finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

C. Registration and Use in Bad faith

For the purpose of Paragraph 4(a) (iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:

1. circumstances indicating that the holder has registered or has 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 holders documented out-of-pocket costs directly related to the domain name; or
2. the holder 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 holder has engaged in a pattern of such conduct; or
3. the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
4. by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's 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 your website or location or of a product or service on the holder's website or location.

The NOVARTIS trademark enjoys a long-standing continuous reputation worldwide. Such reputation, coupled with the evidence on record, shows that the Respondent was certainly aware of the existence of the Complainant and of the rights of the Complainant on the trademark. The Panel finds that the Respondent, by registering and using the disputed domain name has intentionally attracted internet users by creating a likelihood of confusion with the Complainant's trademark.

 Additionally, the record shows that the Complainant's representative sent a cease-and-desist letter to the Respondent before the submission of the Complaint which apparently remained unanswered. The Panel finds that, from the receipt of the letter by the Respondent, the latter cannot be in a position to ignore the Complainant's rights.

 Finally, the Panel agrees that the current use of the disputed domain name does not prevent a finding of bad faith use, particularly with regards to MX records being linked to the disputed domain name, potentially being used in a phishing or fraud scheme.

 The Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith, and therefore finds that the requirements of paragraph 4(a)(iii) of the Policy is satisfied.