Decision for dispute CAC-UDRP-107590

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

The registered trademark and service mark rights relied upon by the Complainant include:

International Trade Mark registration NOVARTIS, registration number 1349878, registered on November 29, 2016 for goods in international classes 5,9, 10, 41, 42, 44 and 45;

United States registered trademark, NOVARTIS, registration number 4986124, registered on the Principal Register on June 28, 2016, for goods and services in international classes, 9, 10, 41, 42 and 44;

EUTM NOVARTIS, registration number 304857, registered on June 25, 1999 for goods in classes 1, 5, 9, 10, 29, 30, 31, 32.

The Complainant is part of a global group of companies providing pharmaceutical and healthcare products and developing and delivering innovative medical treatments and drugs.

With headquarters in Switzerland, the Complainant was created in 1996 through a merger of Ciba-Geigy and Sandoz. The Complainant submits that in 2024, the Complainant’s group achieved net sales of USD 50.3 billion, with a total net income of USD 11.9 billion, and employed approximately 76,000 full-time equivalent employees.

In addition to its registered trademark and service mark rights the Complainant has an established Internet presence as it owns and operates several domain names, including <novartis.com> (created on April 2, 1996), <novartis.us> (created on April 19, 2002), and <novartispharma.com> (created on October 27, 1999). Also, relevantly the Complainant also owns the domain name <novartis.site> (created on June 29, 2017). Furthermore, the Complainant has provided evidence that it has an active social media profile.

The disputed domain name was registered on April 9, 2025 and is being passively held resolving to the Registrar’s parking page with links including to the Complainant and competitors of the Complainant.

 There is no information available about the Respondent, except for that provided in the Complaint, the Registrar’s WhoIs for the disputed domain name, and the Registrar’s response to the request by the Czech Arbitration Court for details of the registration of the disputed domain name for the purpose of this proceeding.

The Complainant

The Complainant claims rights in the NOVARTIS trademark, based on its ownership of the trademark and service mark registrations described above and extensive use of the mark in its business of providing healthcare solutions.

The Complainant adds that it has a global presence, with annual revenues exceeding USD 50.3 billion, a total net income of USD 11.9 billion, and operations in more than 100 countries with approximately 76,000 employees. Furthermore, it is argued that the Complainant’s products are manufactured and sold in many countries worldwide, including the United States, where it has an active presence through associated companies.

 It is firstly alleged that the disputed domain name is identical or confusingly similar to the NOVARTIS mark in which the Complainant has rights.

 The disputed domain name consists of the Complainant’s trademark NOVARTIS in its entirety in combination with the additional letter “s” and the generic Top-Level Domain (“gTLD”) extension <.site>.

It is submitted that in Novartis AG. v. Shful wise, CAC-UDRP-107230, a similar case involving the Complainant, regarding the domain name <niovartis.com>, the panel held that: “The Panel agrees with the Complainant that the disputed domain name <niovartis.com> is confusingly similar to the Complainant's trademark NOVARTIS. Considering the renown of the Complainant and its trademark NOVARTIS, it becomes evident that merely inserting the letter “i” in the middle of the trademark does not set aside the confusing similarity between the disputed domain name and the Complainant's trademark (section 1.9 of WIPO Overview 3.0 states: “A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.”)

It is further contended that the presence of the generic top-level domain (“gTLD”) extension <.site> in the first level portion of the disputed domain name is a standard registration requirement and may be disregarded when assessing whether the disputed domain name is confusingly similar to the trademark in which the Complainant has rights.

The Complainant secondly alleges that the Respondent has no rights or legitimate interests in the disputed domain name because:

the Respondent is not commonly known by the disputed domain name;

the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services;

a screen capture exhibited in an annex to the Complaint shows that at the time of filing this Complaint, the disputed domain name resolved to a parking page with sponsored “pay per click” relating to the Complainant and its pharmaceutical and healthcare business activities, such as “Healthcare for Companies,” “Roche Basel,” and "Novartis Jobs for Freshers", and by clicking these links directed users to other websites related to “health insurance,” among others.

 Furthermore, the Complainant contends that the Respondent has been granted an opportunity to present some compelling arguments that it has rights or legitimate interests in the disputed domain name but has failed to do so.

It is argued that such behavior, coupled with the absence of any use of the disputed domain name in connection with a bona fide offering of goods and services, further demonstrates the Respondents’ absence of rights or legitimate interests in respect of the disputed domain name and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

 The Complainant thirdly alleges that the disputed domain name was registered and is being used in bad faith, arguing that this is a typical example of typosquatting, being a situation where the Complainant’s trademark has been intentionally misspelled to capitalize on potential typing or reading errors by Internet users. The Complainant adds that the structure of the disputed domain name, being misspelling the well-known NOVARTIS trademark, adding only an additional letter “s,” shows the Respondent’s intention to create an association with the Complainant’s trademark.

The Complainant contends that the exhibited screen capture of the website to which the disputed domain name resolves, demonstrates that the disputed domain name is being used to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark.

Specifically, it is alleged that such pay-per-click pages generate revenue when users click on the links, and the Respondent likely benefits financially from this setup. This exploitation of the Complainant’s goodwill and the confusion created by the misspelling of the trademark is a common example of bad faith use.

Additionally, it is submitted that when the Complainant discovered the registration of the disputed domain name, it sent a Cease-and-Desist Letter to the Registrant on April 16, 2025, through the privacy email listed on the publicly available WhoIs records. Further reminders were sent on April 28, 2025, and May 5, 2025, but there was no response. The Respondent had a chance to provide evidence of actual or contemplated good-faith use of the disputed domain name but failed to do so, which infers bad faith. Copies of the cease-and-desist letters are exhibited in an annex to the Complaint.

In conclusion the Complainant submits that the Respondent’s use of a privacy shield to conceal its identity in the WhoIs records is further evidence of bad faith.

The 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.

The Complainant has provided uncontested evidence that it has rights in the NOVARTIS mark, established by its ownership of its trademark and service mark registrations described above, and has demonstrated that it has a protectable global reputation in the NOVARTIS mark by its extensive use in the pharmaceutical business achieving achieved net sales of USD 50.3 billion, with a total net income of USD $11.9 billion, and employed approximately 76,000 full-time equivalent employees as of December 31, 2024

The disputed domain name <novartiss.site> consists of the Complainant’s mark in its entirety, in combination with an additional letter “s” and generic Top-Level Domain (“gTLD”) extension <.site>.

The Complainant’s mark is the initial, dominant and only distinctive element in the disputed domain name and the additional letter “s” is likely to go unnoticed by many Internet users.

The gTLD extension would be considered by Internet users as a necessary technical requirement for an Internet domain name and therefore does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s mark. This Panel finds, therefore, that the disputed domain name is identical to the NOVARTIS mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy paragraph 4(a)(i).

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name as set out in the Complainant’s detailed submissions above. The exhibited screen capture shows that the disputed domain name resolves to the Registered parking page with pay-per-click links from which on the balance of probabilities the Respondent is gaining income.

It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.

The Respondent has failed to discharge that burden and therefore this Panel must find that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has therefore succeeded in the second element of the test in Policy paragraph 4(a)(ii).

NOVARTIS is both a distinctive and well-known trademark.

The Complainant’s registered trademark rights in the mark date back to 1999, whereas the disputed domain name was recently registered on April 9, 2025.

The global presence and extensive use of the NOVARTIS mark, including online, by the Complainant leads to the conclusion that it is improbable that the registrant of the disputed domain name was not aware of the Complainant, its mark, and reputation when the disputed domain name was chosen and registered.

Because of the fame and the distinctive character of the NOVARTIS mark, this Panel must agree with the Complainant that this is a typical example of typosquatting, being a situation where the Complainant’s trademark has been intentionally misspelled to capitalize on potential typing or reading errors by Internet users.

This Panel finds  that on the balance of probabilities the registrant was aware of Complainant and its NOVARTIS mark when the disputed domain name was chosen and registered. This Panel further finds that on the balance of probabilities the disputed domain name was registered in bad faith with the intention of taking predatory advantage of the Complainant’s goodwill and reputation in the NOVARTIS mark.

The screen capture exhibited in the annex to the Complaint shows that the disputed domain name is being passively held by the Respondent and has been allowed to resolve to the Registrar’s parking page with relevant pay-per-click links from which the Respondent is on the balance of probabilities receiving income.

The passive holding of the disputed domain name in such circumstances constitutes use in bad faith for the purposes of the Policy.

Furthermore, the Respondent’s failure to respond to the cease-and-desist letters sent by the Complainant, and the use of a privacy shield to conceal the Respondent’s identity are both indicia of registration and use of the disputed domain name in bad faith.

As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy paragraph 4(a)(iii).