{ "case_number": "CAC-UDRP-104348", "time_of_filling": "2022-02-10 09:26:16", "domain_names": [ "Shopnovartis.com" ], "case_administrator": "Denisa Bilík (CAC) (Case admin)", "complainant": [ "Novartis AG" ], "complainant_representative": "BRANDIT GmbH", "respondent": [ "MNA Strategies & Services" ], "respondent_representative": null, "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\nPARTIES' CONTENTIONS:\r\n\r\nCOMPLAINANT:\r\n\r\n• The disputed domain name is identical or confusingly similar to the protected mark\r\n\r\nAccording to the Complainant, the disputed domain name incorporates entirely the Complainant’s well-known, distinctive trademark NOVARTIS with the term “shop”, which is closely related to the Complainant and its business activities. The addition of the gTLD “.com” does not add any distinctiveness to the disputed domain name. See as an example the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (\"WIPO Jurisprudential Overview 3.0\"), paragraph 1.11. as well as the International Business Machines Corporation v. Sledge, Inc. \/ Frank Sledge WIPO Case No. D2014-0581 where the Panel stated the following: \r\n\r\n“In addition, it is generally accepted that the addition of the top-level suffix in the domain name (e.g., “.com”) is to be disregarded under the confusing similarity test.\" \r\n\r\nThe Complainant argues that the same reasoning should apply in the current case and the disputed domain name should be considered as confusingly similar to the trademark NOVARTIS. \r\n\r\n• Respondent does not have any rights or legitimate interest in the disputed domain name\r\n\r\nThe Complainant states that it has never granted the Respondent any right to use the NOVARTIS trademark within the disputed domain name, nor is the Respondent affiliated to the Complainant in any form.\r\n\r\nThe Complainant has not found that the Respondent is commonly known by the disputed domain name or that it has legitimate interest over the disputed domain name or the major part of it. When searched for \"shopnovartis\" in the Google search engine, the returned results point to the Complainant and its business activities.\r\n\r\nAccording to 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 in many other countries worldwide. However, the Respondent still chose to register the disputed domain name as such.\r\n\r\nFrom the Complainant’s perspective, the Respondent deliberately chose to use the term “shop” combined with its well-known, distinctive trademark NOVARTIS clearly with the intention to collect commercial gain by benefiting from the Complainant's worldwide renown. The Respondent, therefore, has not been using the disputed domain name for any bona fide offering of goods or services.\r\n\r\nBy the time the Complainant prepared this complaint on 8 February 2022, the disputed domain name resolved to a pay-per-click page. The Respondent has not been using the disputed domain name for any bona fide offering of goods or services.\r\n\r\nTherefore, the Complainant contends that the Respondent has no right nor legitimate interest in respect of the disputed domain name.\r\n\r\n• The disputed domain name has been registered and is being used in bad faith\r\n\r\nAccording to the Complainant, the Respondent has registered the disputed domain name and is using it in bad faith. The Complainant states that the registration of the Complainant’s well-known and distinctive trademarks predates the registration of the disputed domain name. The Respondent has never been authorized by the Complainant to register the disputed domain name. \r\n\r\nThe Complainant argues that it is inconceivable that the combination of the well-known, distinctive trademark NOVARTIS and the term “shop” in the disputed domain name is not a deliberate and calculated attempt to improperly benefit from the Complainant’s rights. \r\n\r\nThe Respondent has been using the disputed domain name to resolve to a pay-per-click page. This conduct constitutes bad faith as it has been confirmed by previous panels.\r\n\r\nConsidering the fact that i) the Respondent very likely knew about the Complainant and its trademark; ii) the Complainant’s trademark NOVARTIS is a well-known, distinctive trademark worldwide; and iii) the Respondent has failed in presenting a credible evidence-backed rationale for registering the disputed domain name, the disputed domain name shall be according to the Complainant deemed as registered in bad faith, which is supported by WIPO Overview 3.0, para. 3.1.1. and para. 3.1.4.\r\n\r\nFinally, the Complainant submits that it has tried to reach the Respondent by a cease-and-desist letter sent on 10 January 2022 and without receiving a reply from the Respondent, which also infers bad faith use of the disputed domain name.", "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": "RESPONDENT:\r\n\r\nNO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.\r\n\r\nThe Respondent sent a reply to an automatic email generated by the online platform via address noreply@adr.eu stating: “Go fuck yourself. How about that as a response?! Pass that response on to the complainants.”\r\nThe CAC has not acknowledged such email as an administratively compliant response.", "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. Barbora Donathová, LL.M." ], "date_of_panel_decision": "2022-03-15 00:00:00", "informal_english_translation": "Novartis AG (the Complainant) is a global pharmaceutical and healthcare company based in Switzerland that provides solutions to address the evolving needs of patients worldwide by developing and delivering innovative medical treatments and drugs. Novartis AG was created in 1996 through a merger of two other companies Ciba-Geigy and Sandoz. The Complainant has a strong presence in the USA where the Respondent is located.\r\n\r\nThe Complainant is the owner of registered trademarks for \"NOVARTIS\" as a word and figure mark in several classes in numerous countries all over the world, including the USA. The vast majority of the Complainant's trademark registrations significantly predate the registration of the disputed domain name. \r\n\r\nThe Complainant owns numerous domain names composed of either its trademark 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 mark with related products and services.\r\n\r\nThe Complainant enjoys a strong presence online also via its official social media platforms and official website dedicated to the USA: https:\/\/www.novartis.us\/.\r\n\r\nThe disputed domain name was registered on 23 December 2021.", "decision_domains": { "SHOPNOVARTIS.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }