Decision for dispute CAC-UDRP-107444

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 submitted evidence that it is the owner of the following trademarks:

• The international wordmark “NOVARTIS”, registration number 663765, registered on July 1, 1996, in classes 1, 2, 3, 4, 5, 7, 8, 9, 10, 14, 16, 17, 20, 22, 28, 29, 30, 31, 32, 40 and 42;

• The international wordmark “NOVARTIS”, registration number 1349878, registered on November 29, 2016, in classes 9, 10, 41, 42, 44 and 45;

• The US wordmark “NOVARTIS”, registration number 4986124, registered on June 28, 2016, in classes 5, 6, 18, 44, 46, 51 and 52;

• The US combined trademark “NOVARTIS”, registration number 6990442, registered on February 28, 2023, in class 5; and

• The EU word trademark “NOVARTIS”, registration number 304857, registered on June 25, 1999, in classes 1, 5, 9, 10, 29, 30, 31, and 32.

Hereinafter the “Trademarks”.

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The Complainant is one of the biggest pharmaceutical and healthcare groups in the world. The Complainant’s products are manufactured and sold in many countries worldwide, including the United States. The Complainant also states it has an active presence in several countries worldwide, including the United States.

The Complainant provided evidence that it is the registered owner of the Trademarks and several domain names that include the term “NOVARTIS” such as <novartis.com> since April 2, 1996, and <novartispharma.com> since October 27, 1999.

The Complainant also provided evidence that it has a strong presence online via its social media platforms (Facebook, Twitter, Instagram).

The disputed domain names <novartispharmcorp.com> and <novartisphamcorp.com> were registered on March 6, 2025, and March 17, 2025, respectively.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain names should be transferred to it.

No administratively compliant Response has been filed.

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

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 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.

Consolidation request: Two respondents were consolidated into a single proceeding, because it appears that these respondents are in fact the same person/organisation or at least that the two disputed domain names are controlled by the same person/organisation.  The Panel refers, inter alia, to the following factors:

• there are clear similarities in the naming pattern or structure of the two disputed domain names: a combined use of the words “Novartis” (i.e., the Complainant’s registered Trademark), “pharm” or “pham”(referring to the term “pharmaceutical”, i.e. the business sector of the Complainant), and “corp” (referring to the term “corporation”);
• the disputed domain names were registered at close dates:
  • <novartispharmcorp.com>: registered on March 6, 2025;
  • <novartisphamcorp.com>: registered on March 17, 2025;
• there are similarities in the contact details of the registrants of the disputed domain names:
  • use of proton or protonmail email addresses;
  • use of non-corporate personal names (“Saheed James” and “Sotashi Jean”);
  • use of addresses and telephone numbers that seem invalid or fabricated:
    • <novartispharmcorp.com> uses an address in Oklahoma that appears to be invalid, and a telephone number with the 407 area code that seems to be located in Florida;
    • <novartisphamcorp.com> uses an address in New Jersey that does not appear to be a normal deliverable mailing address, and a telephone number with the 404 area code that seems to be located in Georgia.
  • use of the same registrar for the disputed domain names: bot disputed domain names have PDR Ltd. d/b/a PublicDomainRegistry.com as a registrar;
  • both disputed domain names list the same four name servers: “ns1.1domainregistry.com”, “ns2.1domainregistry.com”, “ns3.1domainregistry.com”, and “ns4.1domainregistry.com”;
  • both disputed domain names are parked domain names.

The Respondent has not contested or provided any rebuttal or information regarding the consolidation request made by the Complainant. For the combination of the elements set out above, the Panel is of the opinion that, on the balance of probabilities, the disputed domain names are subject to common control and that the consolidation is fair and equitable to the parties and benefits the procedural efficiency of the case. Therefore, the Panel decides to grant the requested consolidation.

Confusing similarity

The disputed domain names <novartispharmcorp.com> and <novartisphamcorp.com> consist of the Complainant's Trademark “NOVARTIS” with the addition of the word elements “PHARM” or “PHAM” and” CORP”.

The Panel notes that the disputed domain names incorporate the Complainant’s “NOVARTIS” Trademark entirely.

Section 1.7 of WIPO Overview 3.0 states that, "in cases where a domain name contains the whole of a trademark, or where at least one dominant feature of the relevant trademark is recognisable in the domain name, the domain name shall normally be considered confusingly similar to that trademark for the purposes of UDRP status".

The Panel is of the opinion that the addition of the word elements “PHARM” or “PHAM” (the former an abbreviation of the term “pharmaceutical” and the latter a misspelling of it) does not prevent a finding of confusing similarity under the first element of paragraph 4(a) of the Policy, since these word elements are purely descriptive for the business activities of the Complainant. The same is true for the addition of the word element “CORP” (an abbreviation of the term “corporation”), all the more since the Complainant has a US subsidiary named “Novartis Pharmaceuticals Corporation”.

The addition of such descriptive terms does not prevent a finding of confusing similarity to the Complainant’s Trademark. On the contrary, these terms (“pharm”, “pham” and “corp”) directly refer to the Complainant’s Trademark, business and subsidiary.

This is supported by section 1.8 of WIPO Overview 3.0, which clearly states: "Where the relevant mark is recognisable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) would not preclude a finding of confusing similarity under the first element".

It is well-established that the gTLD ".com" may be disregarded when it comes to considering whether a domain name is confusingly similar to a trademark in which the Complainant has rights. Moreover, section 1.11.1 of WIPO Overview 3.0 states: “The applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”.

For these reasons, the Panel concludes that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights within the meaning of paragraph 4(a)(i) of the Policy.

Rights or legitimate interests

As regards paragraph 4(a)(ii) of the Policy, while the overall burden of proof rests with the Complainant, it is commonly accepted that this should not result in an often-impossible task of proving a negative. Therefore, numerous previous Panels have found that the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to come forward with such appropriate allegations or evidence, the Complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy. If the Respondent does come forward with some allegations or evidence of relevant rights or legitimate interests, the panel then must weigh all the evidence, with the burden of proof always remaining on the Complainant.

The Complainant argues that:

• The Respondent was not authorized to use the Complainant’s Trademarks in the disputed domain names or in any other way. The Complainant and the Respondent have never had any previous relationships.
• The Respondent is not commonly known by the disputed domain names. On the contrary, when conducting a search in the Google search engine on the terms “novartispharmcorp”, “novartis pharm corp”, “novartisphamcorp” or “novartis pham corp”, all the results refer to the Complainant and its subsidiary Novartis Pharmaceutical Corporation. Also, a search on these terms along with the names “Saheed James”, organization “Saheed organization”, “Sotashi Jean”, or organization “Pharmaceuticals Corp” do not return results showing that the Respondent is known by the disputed domain names.
• A search for any trademarks incorporating the terms “novartispharmcorp”, “novartis pharm corp”, “novartisphamcorp” or “novartis pham corp” do not result in any registered trademarks. When searching for any trademarks in the name of “Saheed James”, “Saheed organization”, “Sotashi Jean”, or “Pharmaceuticals Corp”, there are no results related to the disputed domain names.
• The disputed domain names resolve to inactive pages.
• The disputed domain names are not being used in connection with a bona fide offering of goods or services.
• The structure of the disputed domain names – incorporating the Complainant’s Trademark “NOVARTIS” entirely, followed by terms directly referring to the Complainant’s business (pharmaceuticals) and/or its subsidiary in the United States (Novartis Pharmaceuticals Corporation) reflects the Respondent’s intention to create an association, and a subsequent likelihood of confusion, in Internet users’ mind.
• The Complainant sent cease-and-desist letters to the registrants of the disputed domain names, through the email addresses listed on the public Whois records, as well as various reminders. The Respondent replied on March 26, 2025, regarding the disputed domain name <com>, using the email address ‘novartics@proton.me’, stating: “Note that we but this domain and the domain is available. What do you what me to do now. Best regards”. Despite the Complainant’s reply on March 27, 2025, there was no further response from the Respondent.
• Finally, active MX records are associated with both disputed domain names.

The Respondent did not file an administratively compliant (or any) response. The Respondent did not provide evidence that he has rights or legitimate interests in the disputed domain names.

The Panel finds that the Respondent does not appear to have any rights or legitimate interests in the disputed domain names from the following facts:

• There is no evidence that the Respondent is or has been commonly known by the disputed domain names or by the term “NOVARTIS” (alone or in combination with the terms “PHARM” or “PHAM” and” CORP”). The Respondent did not show to have any trademark rights or other rights regarding the term “NOVARTIS” (alone or in combination with the terms “PHARM” or “PHAM” and” CORP”).
• The Complainant’s Trademarks were registered and have been used well before the registration date of the disputed domain names.
• There is no evidence that shows that the Respondent is making a legitimate non-commercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers.
• The Respondent does not seem to have any consent or authorisation to use the Trademarks of the Complainant and does not seem to be related in any way to the Complainant.

In sum, on the balance of probabilities, and in the absence of any evidence to the contrary or any administratively compliant response being put forward by the Respondent, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.

The Panel concludes that the Respondent does not have rights or legitimate interests in the disputed domain names.

Bad faith

The Complainant argues that the disputed domain names were registered in bad faith based on the following grounds:

• Trademark precedence and reputation: The disputed domain names were registered many years after the Complainant’s well-known “NOVARTIS” Trademarks were established and protected internationally. The Complainant has a significant global presence online and through social media.
• No authorization: The Respondent was never licensed or authorized to register domain names incorporating the “NOVARTIS” Trademark.
• Inescapable awareness: Given the global fame of the “NOVARTIS” Trademark, a basic online search would have made the Complainant’s Trademark and business immediately visible. It is implausible the Respondent was unaware of it.
• Deliberate construction to mislead: The disputed domain names contain the “NOVARTIS” Trademark combined with terms like “pharm,” “pham,” and “corp,” clearly referencing the Complainant or its U.S. subsidiary. This structure is likely intended to confuse Internet users into believing the disputed domain names are affiliated with the Complainant.

The Complainant further asserts that the Respondent is also using the disputed domain names in bad faith, with the following supporting points:

• Intention to mislead for commercial gain: The structure of the disputed domain names creates a high risk of confusion with the Complainant’s Trademarks, misleading users into thinking there is a connection between the disputed domain names and the Complainant.
• Passive Holding Doctrine: Though the disputed domain names don’t lead to active websites, prior UDRP decisions confirm that even inactive (or “passively held”) domains can demonstrate bad faith, especially when:

• The trademark is highly distinctive: in this case, the Complainant’s Trademarks are well-known and are entirely comprised in the disputed domain names.
• The Respondent provides no Response or no evidence of good-faith use: in this case, the Complainant sent out cease-and-desist letters, but the Respondent failed to reply or justify any good faith use of the disputed domain names.
• The Respondent tries to conceal its identity or contact details appear false: in this case, the disputed domain names are under common control. The Complainant links these domains to another previously disputed domain (novartispharmaceuticalscorp.com), already found to be registered and used in bad faith (in domain name case CAC-UDRP-107335).
• There is no plausible good faith use of the domain name: in this case, active MX records show the disputed domain names could be used to send emails, potentially impersonating Novartis to commit fraud or phishing.

The Panel weighs these arguments and facts as follows:

• As mentioned already, the disputed domain names reproduce the Complainant's Trademarks "NOVARTIS" entirely, with the addition of the descriptive words “PHARM” or “PHAM” and “CORP”. As mentioned already above, these combined terms clearly refer to the Complainant, its business, and its subsidiary in the United States, and thereby cause (or risk to cause) confusion among the public.
• The Complainant’s Trademarks and domain names predate the registration of the disputed domain names by several years. The Panel points to the fact that the Complainant has trademark rights to the term “NOVARTIS” for pharmaceutical products and services in the home country of the Respondent (i.e. the United States) and in various other countries around the globe. The terms selected by the Respondent (“NOVARTIS”, in combination with “PHARM” or “PHAM” and “CORP”) seem only selected for their similarity to the Complainant’s registered “NOVARTIS” Trademark(s) and business.
• It is inconceivable that the Respondent would have come up with domain names consisting of the term “NOVARTIS” in combination with the term “PHARM” or “PHAM” and “CORP” without having prior knowledge of the Complainant, its Trademarks and its activities. On the balance of probabilities, it seems evident that the Respondent had actual knowledge of the existence of the Complainant and its activities, and of the Complainant's Trademarks and the scope of the Trademarks at the time of registration and use of the disputed domain names. The Panel is convinced that the Respondent had the Trademark(s) of the Complainant in mind when registering and using the disputed domain names.
• The Respondent apparently intends to create an association with the Complainant through the disputed domain names. This cannot be seen as a bona fide offering of goods.
• The Respondent did not contest any of the Complainant’s arguments and did not provide any explanation concerning its choice for registering and/or using domain names that include the Complainant’s registered Trademarks in combination with merely descriptive word elements.
• The Respondent did not react to the cease-and-desist letter of the Complainant.

For all the reasons set out above, the Panel concludes that the disputed domain names were registered and are being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.