Decision for dispute CAC-UDRP-107565

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 is the owner of the trademark “NOVARTIS”:

• International trademark designating numerous countries in 21 classes:

  Registration No. 663765, Registration Date: July 1, 1996

• International Trademark designating numerous countries, including India, in 6 classes:

  Registration No. 1349878, Registration Date: November 29, 2016

• US trademark in 6 classes:

  Registration No. 4986124, Registration Date: June 28, 2016

• US trademark in 1 class:

  Registration No. 6990442, Registration Date: February 28, 2023

• EU trademark in 8 classes:

  Registration No. 000304857, Registration Date: June 25, 1999

The filing and registration dates of the trademarks predate the registration date of the disputed domain name of April 9, 2025.

A. Complainant's Factual Allegations

The Complainant with headquarters in Switzerland 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. In 2024, it achieved net sales of USD 50.3 billion, and total net income amounted to USD 11.9 billion and employed approximately 76 000 full-time equivalent employees. Its products are manufactured and sold in many countries worldwide, including in the United States and in India, where it has an active presence.

It is the owner of the registered well-known trademark “NOVARTIS” in numerous jurisdictions all over the world. It owns domain names composed of either its trademark “NOVARTIS” alone, including <novartis.com> or in combination with other terms, such as <novartispharma.com> and <novartisgroup.com>.

B. Respondent's Factual Allegations

The Respondent has defaulted in this UDRP administrative proceedings and has consequently made no factual allegations. The Respondent is Raj soni, based at the address of c1 Atlantis, near Shell Petrol Pump, Prahlad Nagar, Ahmedabad, Gujarat, and ZIP/POST CODE 380015 India. The disputed domain name was registered on April 9, 2025 by the Respondent, as confirmed by the Registrar. At the time of filing of the Complaint, the disputed domain name resolved to an error page.

A. COMPLAINANT

The Complainant's contentions can be summarized as follows:

I. The disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights

The Complainant contends that it is the owner of the registered trademark “NOVARTIS” in numerous jurisdictions all over the world and the disputed domain name is confusingly similar to its registered trademark. It contains the Complainant’s well-known trademark “NOVARTIS” in its entirety, followed by the “grp”, an abbreviation of the term “group”, which directly refers to the Complainant and its business. The Complainant is also the owner of the domain name <novartisgroup.com>. In similar cases <novartismanagement.com> and <novartisgroups.com>, the panelists held that the disputed domain names are confusingly similar to its “NOVARTIS” trademark. The Complainant also cited WIPO Jurisprudential Overview 3.0 to support its contention.

II. The Respondent has no rights or legitimate interests in respect of the disputed domain name 

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the grounds: i) the Complainant has never granted the Respondent with any rights to use “NOVARTIS” trademark in any form, including in the disputed domain name; ii) the Respondent is not known by the disputed domain name; iii) there is no evidence showing that the Respondent has been using, or preparing to use, the disputed domain name in connection with a bona fide offering of goods and services or has made a legitimate non-commercial or fair use of the disputed domain name; iv) the Respondent has been granted an opportunity by C&D letter to present arguments that it has rights or legitimate interests in the disputed domain name, but it has failed to do so.

III. The Respondent registered and is using the disputed domain name in bad faith

The Complainant submits that the Respondent registered the disputed domain name in bad faith on the grounds: i) its trademark registrations significantly predate the registration of the disputed domain name. By conducting a simple online search, the Respondent would have inevitably learnt about the Complainant, its trademark and business; ii) as “NOVARTIS” trademark is well known, it is therefore inconceivable that the Respondent was unaware of the existence of the Complainant when it registered the disputed domain name; iii) the disputed domain name, incorporating the Complainant’s “NOVARTIS” trademark with “grp”, reflects its intention to create an association and likelihood of confusion.

The Complainant submits that the disputed domain name is being used in bad faith on the grounds: i) the mere registration of the disputed domain name that is confusingly similar to the well-known trademark “NOVARTIS” by an unaffiliated entity can by itself create a presumption of bad faith; ii) it resolved to an error page, which is passive holding. Passive holding does not prevent a finding of bad faith, taking into account the following circumstances:

• the trademark “NOVARTIS” is distinctive and well-known;
• the Respondent failed to submit a response or to provide any evidence of actual or contemplated good-faith use upon receipt of the C&D letter;
• the Respondent is trying to conceal its identity regarding the ownership of the disputed domain name;
• there is no evidence of any actual or contemplated good faith use of the disputed domain name.

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

B. 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 language of the registration agreement is English. The Complainant has requested that the language of proceedings be English. The Respondent did not respond on the issue of the language of the proceedings and did not reject the Complainant’s request.

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.

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

Based on the above regulations under the Policy, what the Panel needs to do is to find out whether each and all of the above-mentioned elements are established. If all three elements are established, the Panel will make a decision in favor of the Complainant. If the three elements are not established, the claims by the Complainant shall be rejected.

The Respondent did not submit the Response containing any argument against what the Complainant claimed and to show his intention to retain the disputed domain name as required by the Policy and the Rules. If the Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint. In view of the situation, the Panel cannot but make the decision based primarily upon the contentions and the accompanying exhibits by the Complainant, except otherwise there is an exhibit proving to the contrary.

I. Identity or Confusing Similarity

Pursuant to Paragraph 4(a) (i) of the Policy, a Complainant must prove that the domain name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights.

 (1) Complainant has rights in a trademark or service mark

 The Complainant has provided evidence of ownership of valid trademark registrations for the trademark “NOVARTIS”, which was registered in 1996, 1999, 2016 and 2023 in numerous countries and classes. The trademarks are still valid and their registration dates significantly predate the registration date of the disputed domain name, i.e. April 9, 2025. The Complainant therefore has rights in the trademark “NOVARTIS”.

 (2) The domain names should be identical or confusingly similar to the trademark or service mark

The disputed domain name contains the Complainant's trade mark “NOVARTIS” in its entirety followed by the relevant term “grp”, separated by a hyphen. WIPO Overview 3.0 paragraph 1.8 states that “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on the assessment of the second and third elements.

Previous panels have found that the addition of other terms would not prevent a finding of confusing similarity under the first element. This Panel cites two other similar cases involving the Complainant, <novartismanagement.com> and <novartisgroups.com>.

In the case of <novartismanagement.com>, the Panel held that “The Panel agrees that the disputed domain name <novartismanagement.com> is confusingly similar to the Complainant's earlier well-known trademark NOVARTIS. The disputed domain name incorporates entirely the Complainant’s earlier NOVARTIS trademark and the addition of the generic term “management” which is referring to the Complainant’s management activities under the trademark NOVARTIS is not sufficient to escape the finding that the domain name is confusingly similar to the Complainant’s trademark and it does not change the overall impression of the designations as being connected to the trademark NOVARTIS” (See Novartis AG. v. Louanna Robelia, CAC-UDRP 107436).

 In the case of <novartisgroups.com>, the panel held that “The disputed domain name is confusingly similar to its NOVARTIS trademark because consists of the Complainant’s well-known, distinctive trademark in its entirety in combination with a generic term “groups”. The Complainant’s trademark is the initial, only distinctive and dominant element of the Disputed Domain Name. In the circumstances of this Complaint, the addition of the gTLD “.com” does not add any distinctiveness to the Disputed Domain Name” (See Novartis AG. v. huang jing jing, CAC-UDRP-102829).

In this case of <govartis-grp.com>, the “grp” is an abbreviation of the term “group”, which directly refers to the Complainant and its business, since the Novartis Group is one of the biggest global pharmaceutical and healthcare groups. The hyphen “-” in the disputed domain name is not distinctive to distinguish it from the Complainant’s trademark “NOVARTIS”.

As to the generic Top Level Domain “.com”, it is viewed as a standard registration requirement and as such can be disregarded for the purpose of assessing identity or confusing similarity. See WIPO Jurisprudential Overview 3.0, paragraph 1.11.1.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights according to paragraph 4(a) (i) of the Policy. Accordingly, the Complainant has proven that the first element required by paragraph 4(a) of the Policy is established.

II. Rights or Legitimate Interests of the Respondent

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name on the grounds: i) the Complainant has never granted the Respondent with any rights to use “NOVARTIS” trademark; ii) the Respondent is not known by the disputed domain name; iii) the Respondent has not been using, or preparing to use, the disputed domain name in connection with a bona fide offering of goods and services; iv) the Respondent has opportunity to argue for its rights or legitimate interests in the disputed domain name, but it has failed to do so.

Once the 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 disputed domain name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element. See WIPO Jurisprudential Overview 3.0 paragraph 2.1. Paragraph 4(c) of the Policy lists a number of circumstances which can be taken to demonstrate a respondent’s rights or legitimate interests in a domain name. However, the Respondent has failed to meet that burden. The Respondent did not submit any evidence to demonstrate any of the above circumstances. Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has proven that the second element required by paragraph 4(a) of the Policy is established.

III. Bad Faith

Paragraph 4(a) (iii) of the Policy provides that the disputed domain name has been registered and is being used in bad faith.

 A. The disputed domain name has been registered in bad faith

The Panel finds that the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name, considering the following circumstances:

• WIPO Jurisprudential Overview 3.0 mentions that noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. The Panel believes that before the registration of the disputed domain name, the Respondent had made searches for the wording “NOVARTIS” and knew it was the trademark of the Complainant.
• The Complainant claims that the “NOVARTIS” trademark was registered in many countries and the Complainant enjoys a strong online presence. The Complainant is also very active on social media to promote its mark, products and services. In the cases of <novartismanagement.com> and <novartisgroups.com>and <novartisro.com> (Novartis AG v. Amartya Sinha, Global Webs Link, Novartis RO, Case No. D2020-3203), UDRP panelists stated that “NOVARTIS” trademark is distinctive and well-known. The Complainant’s evidence is a search for the term “novartis-grp” on a popular search engine, GOOGLE, which returns results that are overwhelmingly associated with the Complainant and its services.
• The disputed domain name incorporating the Complainant’s “NOVARTIS” trademark with “grp” reflects its intention to create an association and likelihood of confusion.

In view of the above circumstances, the Panel holds that the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name. As the disputed domain name would cause confusion to internet users as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location, it should have avoided the registration, which is considered as good faith, rather it registered the disputed domain name. The Respondent deliberately sought to cause such confusion. Accordingly, the Panel finds that the disputed domain name has been registered in bad faith.

B. The disputed domain name is being used in bad faith

The disputed domain name resolved to an inactive page. WIPO Jurisprudential Overview 3.0 paragraph 3.3 mentions that from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.

See WIPO Case No. D2017-0246, <docmartens.xyz>, “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc. See WIPO Case No. D2000-0003, <telstra.org>, Telstra Corporation Limited v. Nuclear Marshmallows.

 In this case, the Panel is convinced that the overall circumstances of this case strongly suggest that the Respondent’s non-use of the disputed domain name is in bad faith. Such circumstances include all four circumstances mentioned in the Complainant's contention to support its argument that the disputed domain name is being used in bad faith.

Regarding the Complainant’s contention on bad faith, the Respondent should rebut it, but it did not make any response, which strengthened the Panel’s findings on its bad faith.

In view of all the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith according to paragraph 4(a) (iii) of the Policy. Therefore, the Complainant has proven that the third element required by paragraph 4(a) of the Policy is established.

Decision

For all the foregoing reasons, in accordance with paragraph 4(a) of the Policy and Rule 15 of the Rules, the Panel orders that the disputed domain name <novartis-grp.com> be transferred to the Complainant.