Decision for dispute CAC-UDRP-107311

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 proved to be the owner of the following trademark registrations:

International Trademark reg. no. 1349878, designating India and Singapore for NOVARTIS, of November 29, 2016;

International trademark reg. no. 1544148, designating Singapore for NOVARTIS®, of June 29, 2020;

US trademark reg. no. 4986124 for NOVARTIS®of June 28, 2016;

US trademark reg. no. 6990442 for NOVARTIS® of February 28, 2023;

EU trademark reg. no. 304857 for NOVARTIS® of June 25, 1999;

Singapore Trademark reg. no. 40201711477Y for NOVARTIS of November 29, 2016;

Singapore Trademark reg. no. T9607248G for NOVARTIS® of February 15, 1996.

I. Complainant

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.

1. The disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

The Panel agrees that the disputed domain name is confusingly similar to the NOVARTIS trademark.

As a matter of fact, the disputed domain name entirely incorporates the NOVARTIS trademark and this is sufficient to meet the threshold of the First Element of the UDRP Policy. In the Panel's view, the addition of the elements <singapore>, <pte> and <ltd> increases the risk of association with the NOVARTIS trademark since these elements could be perceived as a reference to a local subsidiary of the Novartis company.

 The Complainant agrees that the ".com" extension has no impact on the confusing similarity assessment due to its technical function.

As a consequence, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, for the purposes of the First Element of the Policy.

2. The Respondent lacks rights or legitimate interests in the disputed domain name.

Pursuant to paragraph 4(a)(ii) of the Policy, a complainant is required to make out a prima facie case that a respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

In this case, the Panel finds that the Complainant’s submitted evidence and allegations are sufficient to establish that the Respondent’s lack of rights and legitimate interests in the disputed domain name.

According to the information provided by the Complainant and not contested, the Respondent is not commonly known by the disputed domain name nor he is authorized to use the Complainant’s trademark “NOVARTIS”. Moreover the Whois record does not provide any right or legitimate interest in the registration of <novartissingaporepteltd.com> by the Respondent. 

The disputed domain name resolves to a webpage that contains PPC links. According to a consistent case law, PPC links do 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. Instead PPC could be considered as legitimate in case the domain name consists of an actual dictionary word or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word.

In this case it is clear that NOVARTIS is a made-up word with no dictionary meaning and such links are in the Panel's view used to exploit the reputation of the NOVARTIS trademark in order to gain more revenues.

For these reasons, the Panel takes the view that the Respondent lacks rights or legitimate interests in the disputed domain name for the purposes of the Policy.

3. The disputed domain name was registered and is used in bad faith.

The Panel finds the following circumstances as material in order to establish the Respondent's bad faith in the registration of the disputed domain name:

(i) the disputed domain name was registered well after the Complainant acquired rights on the trademark NOVARTIS;

(ii) the Complainant's trademark is widely known as confirmed by previous Panels. The reputation of the trademark NOVARTIS, including in Singapore, makes it very improbable that the Respondent was not aware of the Complainant's exclusive rights on such trademark at the time of the registration of the disputed domain name;

(iii) the structure of the disputed domain name (trademark + geographic term "SINGAPORE" + generic terms "PTE" and "LTD") is an index of the Respondent's intention to create an association, and consequently a likelihood of confusion, with the Complainant's trademark.

As concerns the use in bad faith requirement, the Panel points out that <novartissingaporepteltd.com> is used to host PPC links. In the Panel's view, with such links, the Respondent is trying to capitalize on the reputation and goodwill acquired by the NOVARTIS trademark. Such use amounts to use in bad faith for the purpose of the Policy.

 Furthermore, the Respondent did not file any response nor in the UDRP proceedings nor before (in response to the c&d) providing information on a possible good faith use of the disputed domain name.

For these reasons, the Panel takes the view that the disputed domain name is registered and used in bad faith.