Decision for dispute CAC-UDRP-108089

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 several trademark registrations for the word “NOVARTIS,” including, inter alia, the following:

• International Trademark NOVARTIS No. 663765, registered on July 1, 1996;
• International Trademark NOVARTIS No. 1349878, registered on November 29, 2016, designating, inter alia, Syria;
• International Trademark NOVARTIS No. 1544148, registered on June 29, 2020, designating, inter alia, the USA and the EU;
• International Trademark NOVARTIS No. 666218, registered on October 31, 1996;
• European Union Trademark NOVARTIS No. 013393641, registered on March 17, 2015;
• European Union Trademark NOVARTIS No. 304857, registered on June 25, 1999;
• United States Trademark NOVARTIS No. 4986124, registered on June 28, 2016; and
• United States Trademark NOVARTIS No. 6990442, registered on February 28, 2023

(collectively, the “NOVARTIS Trademarks”).

The Panel has confirmed the validity of the NOVARTIS Trademarks by consulting the appropriate online trademark registries and databases.

The Complainant, Novartis AG, established in Switzerland in 1996, is the holding company of the Novartis Group, one of the world's largest pharmaceutical companies.

The Complainant also inter alia supported improved access to medicines and medical care for Syrian refugees in Lebanon.

The Complainant owns domain names consisting of its trademark NOVARTIS alone, including <novartis.com> (registered in 1996), or in combination with other terms, such as <novartispharma.com> (registered in 1999).

The disputed domain name <novartissyria.com> was registered on 17 May 2025.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name 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 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.

Rights

The Complainant has successfully demonstrated that it is the rightful owner of several NOVARTIS Trademarks. The Panel acknowledges the disputed domain name <novartissyria> is confusingly similar to the Complainant’s NOVARTIS Trademarks. The domain name wholly incorporates the Complainant’s NOVARTIS trademark, which is clearly recognizable within the disputed domain name. The mere addition of the geographical term “syria” does not avoid a finding of confusing similarity. According to section 1.8 of the WIPO Overview 3.0, the addition of descriptive, geographical, or other terms to a complainant’s mark in a domain name does not avoid a finding of confusing similarity where the trademark remains recognizable.

Furthermore, the inclusion of the generic Top-Level Domain (“.com”) is a technical requirement of registration and is disregarded when assessing whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark (see Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).

No Rights or Legitimate Interests

A complainant is required to establish a prima facie case that the respondent lacks rights or legitimate interests. Once such a case is made, the burden of proof shifts to the respondent to demonstrate their rights or legitimate interests in the disputed domain name. Failure to do so results in the complainant satisfying paragraph 4(a)(ii) of the Policy (as per Article 2.1 of WIPO Jurisprudential Overview 3.0 and WIPO Case No. D2003-0455, Croatia Airlines d.d. v. Modern Empire Internet Ltd.).

Based on the contentions of the Complainant, the panel finds that the Complainant has successfully established a prima facie case that the Respondent lacks rights or legitimate interests. As the Respondent has failed to provide relevant evidence demonstrating any such rights or legitimate interests, the Complainant is deemed to have satisfied the second element.

Bad Faith

Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark (see Article 3.1. of WIPO Jurisprudential Overview 3.0). 

Registration in bad faith

In assessing whether the disputed domain name was registered in bad faith, the Panel has taken into account the following factors:

(a) Reputation of the NOVARTIS trademark. The Complainant asserts that its NOVARTIS trademark is widely known. In support of this contention, the Complainant relies, inter alia, on WIPO Case No. D2020-3203, Novartis AG v. Amartya Sinha, Global Webs Link and Novartis RO, in which the Panel recognized the well-established reputation of the NOVARTIS mark. Pursuant to section 4.1 of the WIPO Overview 3.0, prior UDRP findings confirming the reputation of a complainant’s mark may be taken into account in subsequent cases involving the same mark. Considering this prior recognition together with the evidence submitted in the present proceeding, the Panel is satisfied that the Complainant has demonstrated that the NOVARTIS Trademarks are well known.

(b) Timing of the registrations. The Complainant’s NOVARTIS trademarks have been registered for many years, with some registrations dating back to 1996. By contrast, the disputed domain name was registered only in May 2025, long after the Complainant’s marks became registered.

(c) Inclusion of the geographical term “Syria”. The disputed domain name combines the NOVARTIS mark with the term “Syria”. The Complainant has shown that it has been active in humanitarian and related support efforts concerning Syria. In these circumstances, the inclusion of “Syria” is likely to create an association with the Complainant and its activities.

Based on the foregoing, the Panel concludes that the Respondent must have been aware of the Complainant and its trademark when it registered the disputed domain name.

Therefore, the Panel finds that the Respondent registered the disputed domain name in bad faith.

Use in bad faith

The disputed domain name includes the Complainant's trademark in its entirety, giving the impression of a connection to the goods/services marketed by the Complainant and creating a likelihood of confusion with the NOVARTIS Trademarks.

At the time of filing the complaint there was no active website associated with the disputed domain name. In this regard, the Panel considered whether, in the circumstances of this particular case, the Respondent's passive holding of the disputed domain name could be considered a use of the disputed domain name in bad faith. According to the WIPO Jurisprudence Overview 3.0, non-use of a domain name would not preclude a finding of bad faith under the passive holding doctrine. Factors considered relevant in applying the passive holding doctrine include (i) the degree of distinctiveness or reputation of the complainant's mark; (ii) the respondent's failure to file a response or to provide evidence of actual or intended good faith use; (iii) the respondent's concealment of its identity or use of false contact information (in violation of its registration agreement); and (iv) the implausibility of any good faith use to which the domain name might be put (see also Telstra Corporation Limited vs. Nuclear Marshmallows, WIPO Case No. D2000-0003, <telstra.org>).

In the circumstances of this case, the Panel finds that the Complainant has adequately demonstrated the acquired distinctiveness and reputation of its NOVARTIS trademark. The Panel further notes that the Respondent has not submitted any response, nor has it provided any evidence of actual or intended good-faith use—either in reply to the Complainant’s pre-complaint communication sent via the Registrar, or in response to the Complaint itself.

The Panel notes that the WHOIS data associated with the disputed domain name appears to contain unreliable, and quite possibly fictitious, contact details. These include the use of the name “momo momo,” an address that does not correspond to any verifiable location (“dfr,” “alabrig,” “0005454,” United Arab Emirates). Taken together, these irregularities suggest that the Respondent may have provided false or misleading contact information, potentially in breach of its registration obligations.

Finally, the Panel notes that MX records have been configured for the disputed domain name. As established in WIPO Case No. D2022-0479, CKM Holdings Inc. v. Grant Chonko, Genesis Biosciences, MX records enable a domain name to send and receive e-mail, and are unnecessary where no such use is intended. Their activation therefore goes beyond mere registration and indicates that the Respondent has associated the disputed domain name with e-mail services, creating a risk that it may be used for misrepresentation, phishing, or spamming.

Therefore, the Panel is satisfied that the totality of the circumstances of this case supports a finding that the Respondent's failure to use the domain name for a functional website, coupled with the setting of MX records, supports the Panel's finding that the disputed domain name is being used in bad faith.