Decision for dispute CAC-UDRP-108090

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 well-known trademark NOVARTIS, registered as both a word mark and a device mark across multiple classes worldwide. The Complainant owns, inter alia, the following registrations for the mark NOVARTIS:

• USPTO Reg. No. 4986124, registered on June 28, 2016.
• International Reg. No. 1544148, registered on June 29, 2020.
• EU trademark Reg. No. 000304857, registered on June 25, 1999.

The Novartis Group is one of the world’s largest pharmaceutical and healthcare groups, providing solutions that address the evolving needs of patients worldwide by developing and delivering innovative medical treatments and drugs. Novartis AG (the “Complainant”), formed in 1996 through the merger of Ciba-Geigy and Sandoz, serves as the holding company of the Novartis Group. The Complainant’s products are manufactured and sold across numerous regions worldwide. In 2024, Novartis achieved net sales of USD 50.3 billion, generated 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 was registered on July 22, 2025, and remains inactive.

COMPLAINANT:

(i) The Complainant has rights in the NOVARTIS mark as identified in the section “Identification of Rights” above. The disputed domain name is confusingly similar to the Complainant’s NOVARTIS mark because it incorporates the Complainant’s well-known and distinctive trademark NOVARTIS, followed by the term “webinar,” separated by a hyphen.

(ii) The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no prior relationship with the Complainant, and the Complainant has never granted the Respondent any rights to use the NOVARTIS trademark in any manner, including in the disputed domain name. The Respondent is not commonly known by the disputed domain name, and the disputed domain name does not resolve to any active webpage, which does not constitute any legitimate noncommercial or fair use. The Complainant sent a cease-and-desist letter and subsequent reminders, but received no response. 

(iii) The Respondent registered and is using the disputed domain name in bad faith. The NOVARTIS trademark is well known globally, including in the Republic of Korea, and given the Complainant’s reputation as a major pharmaceutical company, it is evident that the Respondent had knowledge of the Complainant and its NOVARTIS mark at the time of registration. The disputed domain name does not resolve to any active webpage, and such passive holding constitutes bad faith.

RESPONDENT:

Respondent did not submit a response in this proceeding.

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).

Language of the Proceedings

The Panel notes that the Registration Agreement is written in Korean, thereby making Korean the default language of the proceedings. However, the Complainant has requested that the proceeding be conducted in English. Under UDRP Rule 11(a), the Panel has the discretion to determine the appropriate language of the proceeding, taking into account the specific circumstances of the case. See Section 4.5, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, see also Lovehoney Group Limited v. Yan Zhang, CAC 103917 (CAC August 17, 2021) (finding it appropriate to conduct the proceeding in English under Rule 11 despite the Registration Agreement designating Japanese as the required language).

The Complainant presents the following arguments in support of its request:

(i) the disputed domain name is written in Latin characters and incorporates the English term “webinar,” and the Respondent has registered multiple other domain names also written in Latin characters and incorporating English terms,
(ii) the Complainant has no knowledge of the Korean language, and requiring translation would impose an undue burden and risk unnecessary delay, and
(iii) the Complainant’s representative is not familiar with the Korean language, meaning that translating the Complaint and subsequent communications into Korean would entail significant additional costs and delay.

Pursuant to UDRP Rule 11(a), the Panel finds the Complainant’s arguments persuasive. In the absence of a Response or any objection to the Complainant’s request, and after considering all the circumstances of this case, the Panel determines that the proceeding shall be conducted in English.

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 15(a) of the Rules for the UDRP ('the Policy') instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

(3) the domain name has been registered and is being used in bad faith.

In view of the Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (FORUM July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). 

Rights

The Complainant contends that it is the owner of the registered trademark NOVARTIS as identified in the section “Identification of Rights” above. The Panel notes that a trademark registration with a national or an international trademark authority is sufficient to establish rights in a mark. Accordingly, the Panel finds that the Complainant has established its rights in the NOVARTIS mark.

The Complainant further contends that the disputed domain name <novartis-webinar.com> is confusingly similar to its mark “NOVARTIS” on the grounds that it incorporates the Complainant’s well-known and distinctive trademark NOVARTIS, followed by the term “webinar,” separated by a hyphen. The Panel concurs and finds the disputed domain name is confusingly similar to the Complainant’s NOVARTIS mark under Policy paragraph 4(a)(i).  

No rights or legitimate interests

The Complainant must first make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under Policy paragraph 4(a)(ii), after which the burden shifts to the Respondent to demonstrate that it does possess such rights or legitimate interests. See Section 2.1, WIPO Jurisprudential Overview 3.0 ("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 Complainant contends that the Respondent is not commonly known by the disputed domain name. When a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy paragraph 4(c)(ii). The Panel notes that the WHOIS information for the disputed domain name lists the registrants as “Blue M Tech co,. ltd.” Nothing in the record suggests that the Respondent was authorized to use the NOVARTIS mark. Therefore, the Panel finds that the Respondent is not commonly known by the disputed domain name per Policy paragraph 4(c)(ii). 

Next, the Complainant contends that the Respondent is not commonly known by the disputed domain name, and the disputed domain name does not resolve to any active webpage, which does not constitute any legitimate noncommercial or fair use. The Complainant provides a screenshot showing the disputed domain name resolves to an error page which states, “This site can’t be reached.” The Panel finds the Respondent’s failure to actively use the disputed domain name as evidence that the Respondent lacks rights or legitimate interests in the disputed domain name under Policy paragraph 4(c)(ii). 

The Panel finds that the Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against the Respondent. As the Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. 

Bad faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:

(i) circumstances indicating that the respondent has registered or 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 the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on the respondent’s website or location.

The Complainant contends that the Complainant’s trademark predates the registration of the disputed domain name, and that the Respondent very likely knew of the Complainant and its trademark because NOVARTIS is a distinctive and well-known mark worldwide. While constructive knowledge is insufficient to establish bad faith under Policy paragraph 4(a)(iii), actual knowledge of another party’s trademark rights at the time of registration is sufficient, and may be inferred from the notoriety of the mark and the Respondent’s use of the disputed domain name. The Panel agrees and infers, given the global notoriety of the Complainant’s mark and its recognition in the Republic of Korea where the Respondent is domiciled, that the Respondent had actual knowledge of the Complainant’s rights in the NOVARTIS mark at the time of registering the disputed domain name. Accordingly, the Panel finds that the disputed domain name was registered in bad faith.

Next, the Complainant contends that the disputed domain name resolves to an inactive page, which constitutes bad faith registration and use. The Panel agrees that passive holding does not preclude a finding of bad faith under paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad-faith registration of it, satisfies paragraph 4(a)(iii), the panel must give close attention to all circumstances of the respondent’s behavior, and that relief may be granted if those circumstances show that the respondent’s passive holding amounts to acting in bad faith).

The Panel notes the following circumstances:
(i) the reputation and distinctiveness of the Complainant’s mark,
(ii) the Respondent’s failure to submit a response or provide any evidence of good-faith use,
(iii) the implausibility of any good-faith purpose, and
(iv) the presence of active MX records indicating a risk of fraudulent email activity, which may mislead Internet users into believing they are communicating with the Complainant.

Taking into account all of these circumstances, the Panel concludes that the Respondent’s passive holding of the disputed domain name constitutes bad faith registration and use under paragraph 4(b)(iii) and (iv) of the Policy.