{ "case_number": "CAC-UDRP-103364", "time_of_filling": "2020-10-27 09:52:50", "domain_names": [ "novartischem.com " ], "case_administrator": "Denisa Bilík (CAC) (Case admin)", "complainant": [ "Novartis AG" ], "complainant_representative": "BRANDIT GmbH", "respondent": [ "EU Network" ], "respondent_representative": null, "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\nThe Complainant asserts that the Novartis Group is one of the largest 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. Novartis AG (the “Complainant”), created in 1996 through a merger of two other companies Ciba-Geigy and Sandoz, is the holding company of the Novartis Group.\r\n\r\nThe Complainant’s products are manufactured and sold in many regions worldwide. The Complainant has especially a strong presence in the United States of America (the “USA”) where the Respondent is located. The Complainant has numerous subsidiaries and associated companies based in the USA. Moreover, in 2019, 34% of Novartis Group’s total net sales were constituted in the USA. \r\n\r\nThe Complainant is the owner of the well-known trade mark NOVARTIS registered as both a word and device mark in several classes worldwide, including in the USA. The vast majority of the Complainant’s trade mark registrations significantly predate the registration of the disputed domain name.\r\n\r\nMoreover, previous UDRP Panels have stated that the NOVARTIS trademark is well-known (inter alia Novartis AG v. Domain Admin, Privacy Protection Service INC d\/b\/a PrivacyProtect.org, \/ Sergei Lir, WIPO Case No. D2016-1688).\r\n\r\nThe Complainant owns numerous domain names composed of either its trade mark NOVARTIS alone, including (created on 19 April 2002) and (created on 2 April 1996) or in combination with other terms, e.g. (created on 27 October 1999). The Complainant uses these domain names to promote the NOVARTIS trade mark with related products and services.\r\n\r\nThe Complainant enjoys a strong presence online also via its official social media platforms. \r\n\r\nThe Complainant’s contentions can be summarised as follows:\r\n\r\nI. The disputed domain name is confusingly similar to a trade mark in which the Complainant has rights\r\n\r\nThe Complainant contends that the disputed domain name (registered on 20 September 2020) incorporates the Complainant’s well-known trade mark NOVARTIS in combination with the term “chem” which can refer to “chemistry”, a word closely related to the Complainant and its business activities. \r\n\r\nSupported by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (\"WIPO Jurisprudential Overview 3.0\"), paragraph 1.11, the Complainant further contends that the generic Top-Level Domain (gTLD) suffix (“.com”) is typically disregarded in the assessment under paragraph 4(a) of the Policy when comparing disputed domain names and trade marks. Therefore, the dispute domain name should be considered as confusingly similar to the trade mark NOVARTIS. \r\n\r\nII. The Respondent has no rights or legitimate interests in respect of the disputed domain name\r\n\r\nThe Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant does not carry out any activity for, or has any business or relationship with, the Respondent. The Complainant has not authorised the Respondent to make any use of the Complainant’s NOVARTIS trade mark.\r\n\r\nThe Complainant also asserts that the Respondent is not commonly known by the disputed domain name, nor has the Respondent an interest over it. The Complainant contends that when “Novartischem” is searched for in the Google search engine, the returned results all pointed to the Complainant and its business activities. \r\n\r\nThe Complainant states that, on 1 October 2020, the disputed domain name resolved to an active website which displayed the NOVARTIS logo in a prominent position – in the upper-left corner, in combination with the term “chem”. The Complainant further states that, by the time it had sent a cease-and-desist letter to the Respondent (on 2 October 2020), the disputed domain name resolved to the same active website but that the logo had been removed, although the website continued to display “Novartis” as a user ID. The Complainant notes that, in the upper-right corner of the website to which the domain name presently resolves there is an icon headed “Make Appointment”. Although the pop-up box is not showing any active link, the presence of the pop-up box demonstrates that the Respondent had very likely intended to use the website to impersonate the Complainant and to offer “appointments” to Internet users. \r\n\r\nThe Complainant further argues that the website to which the disputed domain name resolves is very likely to confuse Internet users and lead them to be believe that the disputed domain name is somehow related to the Complainant. \r\n\r\nIn the Complainant’s view, the Respondent deliberately chose to incorporate the well-known, distinctive trade mark NOVARTIS in the disputed domain name, very likely with the intention to attract Internet traffic by benefiting from the Complainant’s worldwide renown.\r\n\r\nThe Complainant concludes that the Respondent has no right or legitimate interest in respect of the disputed domain name and has not been using the disputed domain name for any bona fide offering of goods or services.\r\n\r\nIII. The Respondent registered and is using the disputed domain name in bad faith\r\n\r\nRegistration in bad faith\r\n\r\nThe Complainant contends that most of its trade mark registrations predate the registration of the disputed domain name and that the Respondent has never been authorised by the Complainant to register the disputed domain name. Considering the renown of the Complainant and its trade mark NOVARTIS, and the overall composition of the disputed domain name, i.e. using the term “Novartis” in combination with the term “chem” which is closely related to the Complainant and its business activities, it follows that the use of the well-known trade mark NOVARTIS in the disputed domain name is a deliberate and calculated attempt to improperly benefit from the Complainant’s rights and reputation. \r\n\r\nConsidering the facts that:\r\n\r\n• The Respondent very likely knew about the Complainant and its trade mark;\r\n\r\n• The Complainant’s trade mark NOVARTIS is a distinctive, well-known trade mark worldwide and in the USA where the Respondent resides;\r\n\r\n• The Respondent has failed in presenting a credible evidence-backed rationale for registering the disputed domain name,\r\n\r\nthe disputed domain name shall be deemed as registered in bad faith, which is supported by WIPO Jurisprudential Overview 3.0, para. 3.1.1 and para. 3.1.4. \r\n\r\n\r\nUse in bad faith \r\n\r\nThe disputed domain name first resolved to an active website with the Complainant’s trade mark NOVARTIS displayed as logo and username in prominent positions, then removed, although the present website still maintains the user name as “Novartis”. By using the disputed domain name and the website associated to it, the Complainant argues that it is obvious that the Respondent is trying to suggest affiliation to the Complainant or even to impersonate the Complainant, which is blatant bad faith.\r\n\r\nIn addition, the website still appears unfinished and under construction which the Complainant argues falls into the category of passive holding. \r\n\r\nThe Complainant has tried to reach the Respondent by a cease-and-desist letter sent on 2 October 2020. As the Respondent was under privacy shield, the letter was sent to the privacy email, as provided in the WhoIs. However, by the time the Complainant prepared the Complaint, it still had not received a response from the Respondent. \r\n\r\nIn terms of paragraph 4(b)(iv) of the Policy, the above facts demonstrate the Respondent’s use of the disputed domain name in bad faith. See “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246.\r\n\r\n\r\nThe Respondent’s use of a privacy shield to conceal its identity is an additional element to the finding of bad faith as supported by Facebook Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT, WIPO Case No. D2007-1193.\r\n\r\nIn summary:\r\n\r\n• NOVARTIS is a well-known, distinctive trade mark worldwide;\r\n\r\n• the Complainant’s trade marks registration predates the registration of the disputed domain name;\r\n\r\n• the Respondent has no rights in the trade mark NOVARTIS, bears no relationship to the Complainant, and is not commonly known by the disputed domain name - accordingly, it has no legitimate interest in the disputed domain name;\r\n\r\n• It is highly unlikely that the Respondent was not aware of the Complainant’s prior rights in the trade mark NOVARTIS at the time of registering the disputed domain name, given the Complainant’s worldwide renown;\r\n\r\n• the Respondent had been using the disputed domain name to resolve to an active website using the Complainant’s trade mark as a logo and username; the Respondent later removed the logo and the website remained a site under construction;\r\n\r\n• the Respondent failed in responding to cease-and-desist letter sent by the Complainant; and\r\n\r\n• the Respondent has been using a privacy shield to conceal its identity.\r\n", "other_legal_proceedings": "The Panel is unaware of any other pending or decided legal proceedings in respect of the disputed domain name.", "no_response_filed": "No administratively compliant Response has been filed. ", "rights": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).", "no_rights_or_legitimate_interests": "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).", "bad_faith": "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).", "procedural_factors": "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.", "decision": "Accepted", "panelists": [ "Dr Gustavo Moser" ], "date_of_panel_decision": "2020-11-27 00:00:00", "informal_english_translation": "The Complainant relies upon the following registered trade marks:\r\n\r\n(i) US trade mark registration no. 5420583, dated 13 March 2018, for the word mark NOVARTIS, in classes 9,10, 41, 42, 44 and 45 of the Nice Classification; and\r\n\r\n(ii) US trade mark registration no. 2997235, dated 20 September 2005, for the word mark NOVARTIS, in class 5 of the Nice Classification.\r\n\r\nThe Complainant has provided a list of trade mark applications and registrations for NOVARTIS worldwide. The Complainant has also provided evidence of its ownership of domain names composed of the NOVARTIS trade mark, including, but not limited to, (registered on 2 April 1996), (registered on 19 April 2002), and (registered on 27 October 1999).\r\n", "decision_domains": { "NOVARTISCHEM.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }