{
    "case_number": "CAC-UDRP-104026",
    "time_of_filling": "2021-09-22 08:57:00",
    "domain_names": [
        "Novartis-Usa.com"
    ],
    "case_administrator": "  Iveta Špiclová   (Czech Arbitration Court) (Case admin)",
    "complainant": [
        "Novartis AG"
    ],
    "complainant_representative": "BRANDIT GmbH",
    "respondent": [
        "Merit Pharmaceutical"
    ],
    "respondent_representative": null,
    "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\nThe Novartis Group 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. The Complainant (Novartis AG) was created in 1996 through a merger of two other companies Ciba-Geigy and Sandoz and 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 disputed domain name <Novartis-Usa.com> was registered on 7 August 2021.\r\n\r\nThe Registrar confirmed that the Respondent is the current registrant of the disputed domain name and that the language of the registration agreement is English.\r\n\r\nThe Respondent has not filed a Response.",
    "other_legal_proceedings": "The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.",
    "no_response_filed": "NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.\r\n\r\nThe Complainant made the following contentions:\r\n \r\nA. THE DISPUTED DOMAIN NAME IS IDENTICAL OR CONFUSINGLY SIMILAR\r\n\r\nThe disputed domain name incorporates the Complainant’s well-known, distinctive trademark \"NOVARTIS\" in its entirety, in combination with a term “usa” (which commonly refers to the country United States of America) separated by the symbol “-“, which is closely related to the Complainant’s business activities. The addition of the gTLD “.com” does not add any distinctiveness to the disputed domain name.\r\n\r\nThe Complainant thus concludes that the disputed domain name should be considered as confusingly similar to its trademark.\r\n\r\n\r\nB. RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTEREST IN RESPECT OF THE DISPUTED DOMAIN NAME\r\n\r\nThe Complainant submits that it has never had any previous relationships with the Respondent, nor has the Complainant ever granted the Respondent any rights to use the \"NOVARTIS\" trademark in any form.\r\n\r\nThe Complainant also states that it has not found that the Respondent was commonly known by the disputed domain name or that it had legitimate interest over the disputed domain name. When searching for the term “Novartis-Usa” in the Google search engine, the returned results all pointed to the Complainant and its business activities.\r\n\r\nIn view of the Complainant, the Respondent could have easily performed a similar search before registering the disputed domain name and would have quickly learnt that the trademarks are owned by the Complainant and that the Complainant has been using its trademarks in the USA, where the Respondent resides, and many other countries worldwide, especially as the Respondent, “Merit Pharmaceutical”, operates its own business in the same field as the Complainant. However, the Respondent still chose to register the disputed domain name as such.\r\n\r\nIn addition, according to the Registrar Verification, the Respondent is named “Rebecca Jenkins \/ Merit Pharmaceutical”, which is not connected to the Complainant nor to the term “Novartis” in any form.\r\n\r\nBy the time the Complainant prepared the amended Complaint on 28 September 2021, the disputed domain name resolved to a page with the message “404 Not Found”.\r\n\r\nThe Respondent has not been using the disputed domain name for any bona fide offering of goods or services.\r\n\r\nWhen Internet users, who search for information about the Complainant and\/or about the brand “Novartis”, see the disputed domain name and the error page, would very likely be confused and be led to believe that the disputed domain name is somehow related to the Complainant and be disappointed as they would not find the information as expected – which will lead to trademark tarnishment for the Complainant.\r\n\r\nFrom the Complainant’s perspective, the Respondent deliberately chose to use the well-known, distinctive trademark \"NOVARTIS\" as the main part of the disputed domain name, very likely with the intention to benefit from the Complainant’s worldwide renown and to confuse Internet users as to the source or sponsorship and therefore cannot be considered as a bona fide offering of goods or services.\r\n\r\nFor the foregoing reasons, the Complainant concludes that the Respondent has no right nor legitimate interest in respect of the disputed domain name.\r\n\r\n\r\nC. THE DISPUTED DOMAIN NAME WAS REGISTERED AND IS BEING USED IN BAD FAITH\r\n\r\ni. THE DISPUTED DOMAIN NAME WAS REGISTERED IN BAD FAITH\r\n\r\nThe Complainant emphasises the fact that most of the Complainant’s trademark registrations predate the registration of the disputed domain name and that the Respondent has never been authorized by the Complainant to register the disputed domain name. Considering the renown of the Complainant and its trademark \"NOVARTIS\", and the overall composition of the disputed domain name, i.e. using the Complainant’s well-known, distinctive trademark \"NOVARTIS\" in its entirety, in combination with a geographic term “usa”, which is closely related to the Complainant’s business activities, it follows that incorporating the well-known trademark \"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\n\r\nIn addition, the Complainant submits that the disputed domain name should be deemed to be registered in bad faith for the following reasons:\r\n\r\n• the Respondent very likely knew about the Complainant and its trademark when it registered the disputed domain name;\r\n\r\n• the Complainant’s trademark \"NOVARTIS\" is a distinctive, well-known trademark worldwide and in the USA where the Respondent resides; and\r\n\r\n• the Respondent has failed in presenting a credible evidence-backed rationale for registering the disputed domain name.\r\n\r\n\r\nii. THE DISPUTED DOMAIN NAME IS BEING USED IN BAD FAITH\r\n\r\nRegarding the use of the disputed domain name, the Complainant points out that the disputed domain name resolves to an error page which constitutes passive holding and may be interpreted as use in bad faith. \r\n\r\nAdditionally, the Complainant tried to reach the Respondent by sending a cease & desist letter on 25 August 2021 by e-mail to the address provided in the WHOIS and also via the Registrar’s e-mail. However, until the time the Complainant prepared the amended Complaint, it has not received a response from the Respondent.\r\n\r\nIn addition, the Complainant contends that the fact the Respondent has been using a privacy shield service to conceal its identity adds up to the finding of bad faith.\r\n\r\nGiven all the above, the Complainant argues that the Respondent registered and has been using the disputed domain name in bad faith.\r\n",
    "rights": "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).",
    "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": [
        "Mgr. Vojtěch Chloupek"
    ],
    "date_of_panel_decision": "2021-10-24 00:00:00",
    "informal_english_translation": "The Complainant submitted evidence that it is the registered owner of the following:\r\n\r\n(i) the US trademark registration No. 5420583 for \"NOVARTIS\" (word), registered since 13 March 2018 for the classes 9, 10, 41, 42, 44 and 45; \r\n\r\n(ii) the US trademark registration No. 2997235 for \"NOVARTIS\", registered since 20 September 2005 for the class 5, which was first used in commerce on 30 September 1997; and\r\n\r\n(iii) numerous other trademark registrations and applications for \"NOVARTIS\" as both a word and a device mark in several classes around the world.\r\n\r\n\r\nThe Complainant claims that its trademark \"NOVARTIS\" is well-known and supports such claim by referring to decisions of previous UDRP Panels, namely the WIPO Case No. D2016-1688.\r\n\r\nThe Complainant also provided information, supported by evidence, that it is the registered holder of numerous domain names composed of either its trademark NOVARTIS alone, including <novartis.us> (created on 19 April 2002) and <novartis.com> (created on 2 April 1996), or in combination with other terms, such as <novartispharma.com> (created on 27 October 1999). The Complainant uses these domain names to promote the NOVARTIS mark with related products and services. In addition, the Complainant alleges to enjoy a strong presence online also via its official social media platforms, as outlined in provided evidence.",
    "decision_domains": {
        "NOVARTIS-USA.COM": "TRANSFERRED"
    },
    "panelist": null,
    "panellists_text": null
}