{ "case_number": "CAC-UDRP-104338", "time_of_filling": "2022-02-07 10:14:43", "domain_names": [ "NovartisPharma.online " ], "case_administrator": "Denisa Bilík (CAC) (Case admin)", "complainant": [ "Novartis AG" ], "complainant_representative": "BRANDIT GmbH", "respondent": [ "YXP Li" ], "respondent_representative": null, "factual_background": "The 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 Novartis Group is one of the biggest global pharmaceutical and healthcare groups, created in 1996 through a merger of companies Ciba-Geigy and Sandoz. \r\n\r\nThe Complainant’s products are manufactured and sold in many regions worldwide including China, the Respondent’s location, and where the Complainant has a strong presence. \r\n\r\nThe Complainant is the owner of the well-known trade mark NOVARTIS, which has been registered as both a word and device mark in several classes worldwide, including in China. \r\n\r\nThe disputed domain name was registered on 28 November 2019, and it incorporates the Complainant’s well-known and distinctive trade mark NOVARTIS in its entirety. The additional term “pharma” is closely related to the Complainant and its business activities, and the generic Top-Level Domain (gTLD) <.online> does not add any distinctiveness to the disputed domain name. \r\n\r\nThe Complainant therefore claims that the disputed domain name is 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 states that the Respondent is not related in any way with the Complainant, nor has it carried out any activity for, or have any business with, the Respondent. \r\n\r\nIn addition, the Respondent is not known by the disputed domain name; the Respondent is not making a bona fide offering of goods or services by means of the disputed domain name, nor is the Respondent using the disputed domain name for legitimate non-commercial or fair use. \r\n\r\nThe Complainant informs that it has prevailed in a recent URS dispute against the Respondent, which resulted in the disputed domain name being suspended (“the URS dispute”). The Complainant alludes to the URS dispute to further evidence the Respondent’s lack of rights or legitimate interests in connection with the disputed domain name. \r\n\r\nIn view of the above, the Complainant concludes that the Respondent has no rights or legitimate interests in the dispute domain name. \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 claims 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. Given 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 “pharma” 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\nFurthermore, the Complainant articulates the following additional factual statements:\r\n\r\n• The Respondent was very likely aware of the Complainant and its trade mark NOVARTIS;\r\n\r\n• The Complainant’s trade mark NOVARTIS is a distinctive, well-known trade mark worldwide, and in China, where the Respondent resides;\r\n\r\n• The Respondent has failed to present credible evidence-backed rationale for registering the disputed domain name; and\r\n\r\n• The disputed domain name shall be deemed as registered in bad faith, which is supported by WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), paragraph 3.1.1 and paragraph 3.1.4. \r\n\r\nUse in bad faith \r\n\r\nThe Complainant states that the panel in the previous URS dispute has determined that the Respondent lacked rights or legitimate interests in respect of the disputed domain name, and found that the Respondent had registered and was using the disputed domain name in bad faith. \r\n\r\nThe Complainant further states that, before the suspension of the disputed domain name, as a result of the determination in the URS dispute, the disputed domain name did not resolve to any active website, which constitutes passive holding\/non-use.\r\n\r\nLastly, the Complainant alludes to paragraph 4(b)(iv) of the Policy to reinforce its bad faith claim. \r\n\r\nThe Complainant therefore concludes that the Respondent has registered and is using the disputed domain name in bad faith. \r\n\r\nIn summary, the Complainant advances the following under these UDRP proceedings grounds:\r\n\r\n• NOVARTIS is a well-known, distinctive trade mark worldwide;\r\n\r\n• The Complainant’s trade mark 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 interests 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 panel in the previous URS dispute had already asserted the Respondent’s lack of legitimate interest and bad faith, such that the disputed domain name was suspended; \r\n\r\n• The Respondent has been passively holding the disputed domain name; and\r\n\r\n• The Respondent has been using a privacy shield to conceal its identity.", "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 that the disputed domain name is identical or confusingly similar to a trade 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).\r\n", "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.\r\n", "decision": "Accepted", "panelists": [ "Dr Gustavo Moser" ], "date_of_panel_decision": "2022-03-08 00:00:00", "informal_english_translation": "The Complainant relies upon the following registered trade marks:\r\n\r\n• International trade mark registration no. 666218, dated 31 October 1996, for the word mark NOVARTIS, in classes 41 and 42 of the Nice Classification; and\r\n\r\n• International trade mark registration no. 663765, dated 1 July 1996, for the word mark NOVARTIS, in classes 01; 02; 03; 04; 05; 07; 08; 09; 10; 14; 16; 17; 20; 22; 28; 29; 30; 31; 32; 40; and 42 of the Nice Classification.\r\n\r\n(hereinafter, collectively or individually “the Complainant’s trade mark”; “the Complainant’s trade mark NOVARTIS”; or “the trade mark NOVARTIS”).\r\n\r\nThe Complainant has provided a list of trade mark applications and registrations for NOVARTIS worldwide, as well as evidence of its ownership of domain names composed of the trade mark NOVARTIS. Of particular note, (registered on 2 April 1996); (registered on 20 August 1999); and (registered on 27 October 1999).", "decision_domains": { "NOVARTISPHARMA.ONLINE": "TRANSFERRED" }, "panelist": null, "panellists_text": null }