{ "case_number": "CAC-UDRP-105977", "time_of_filling": "2023-11-15 09:08:12", "domain_names": [ "novartisx.com", "xnovartis.com" ], "case_administrator": " Iveta Špiclová (Czech Arbitration Court) (Case admin)", "complainant": [ "Novartis AG" ], "complainant_representative": "BRANDIT GmbH", "respondent": [ "Giselle Perez (Epsilon Comunicacion SL)" ], "respondent_representative": "EPSILON EPSILON COMUNICACION (EPSILON COMUNICACION)", "factual_background": "

The Complainant is one of the biggest global pharmaceutical and healthcare groups. It was created in 1996 through a merger of the companies Ciba-Geigy and Sandoz. In 2022, Novartis achieved net sales from continuing operations of USD 50.5 billion, and total net income amounted to USD 7.0 billion. At the same year, the group employed approximately 102 000 full-time equivalent employees.<\/span><\/p>\n

The Complainant’s official website is located at the domain name <novartis.com>, registered in 1996.<\/span><\/p>\n

The Respondent is a Spanish company which provides IT, journalistic and marketing services.<\/span><\/p>\n

The disputed domain name <xnovartis.com> was registered on 31 July 2023, and the disputed domain name <novartisx.com> was registered on 17 August 2023.  They do not resolve to active websites but have mail exchange (“MX”) records enabled.<\/span><\/p>", "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 names.<\/p>", "no_response_filed": "

COMPLAINANT:<\/p>\n

The Complainant states that the disputed domain names are confusingly similar to its NOVARTIS trademark, because they incorporate the trademark in its entirety, followed by the letter “X”. The NOVARTIS trademark is recognizable within the disputed domain names, and the addition of the letter “X” to it does not prevent the confusing similarity to the trademark.<\/span><\/p>\n

The Complainant maintains that the Respondent has no right or legitimate interests in respect of the disputed domain names, because it is not commonly known by the disputed domain names and is not affiliated with the Complainant, and the Complainant has not authorized the Respondent to use the NOVARTIS trademark. The Complainant adds that the disputed domain names falsely suggest affiliation with it, and notes that the Respondent has not used them. <\/span><\/p>\n

The Complainant contends that the disputed domain names were registered and are being used in bad faith. It points out that the disputed domain names were registered many years after the registration of the NOVARTIS trademark, and their structure shows that the Respondent registered them having the Complainant and its NOVARTIS trademark in mind, with an intention to create an association and a likelihood of confusion with the Complainant’s NOVARTIS trademark in Internet users, who may believe that the disputed domain names are connected to the Complainant. The Complainant adds that the Respondent has not demonstrated any activity in respect of the disputed domain names and that it is not possible to conceive of any plausible actual or contemplated active use of them by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law. <\/span><\/p>\n

The Complainant submits that although the disputed domain names have been passively held, their non-use would not prevent a finding of bad faith, since the disputed domain names entirely comprise the Complaint’s well-known NOVARTIS trademark and it is implausible that the Respondent did not know it when the disputed domain names were registered. The Complainant adds that there is no evidence of any actual or contemplated good-faith use of the disputed domain names, that the Respondent has already engaged in the bad faith registration of other domain names -<acelormittalx.com> and <xacelormittal.com>, incorporating a third-party trademark again with the addition of the letter “x”. The Complainant notes that UDRP Decisions were rendered regarding those domain names, ordering their transfer to the respective complainant.<\/span><\/p>\n

The Complainant notes that the disputed domain names have been set up with MX records, so, given the confusing similarity between them and the Complainant’s official domain name <novartis.com>, there is a risk for Internet users to be misdirected by phishing emails sent by e-mail addresses connected to the disputed domain names. According to the Complainant, it is inconceivable that the Respondent may be able to make any good faith use of the disputed domain names as part of e-mail addresses.<\/p>\n

Finally, the Complainant states that it sent cease-and-desist letters to the Respondent who did not respond.<\/span><\/p>\n

RESPONDENT:<\/p>\n

The Respondent submits that within the framework of its activities, the idea of protecting domain names with the letter “X” in them arose in order to prevent their fraudulent use. The Respondent created the “X Platform THE LAST UNIVERSE” for this purpose. According to the Respondent, the disputed domain names should be protected, because the letter “X” has historically been associated with products with pejorative content, such as pornography. With the arrival of the social network X (formerly Twitter), the Respondent goes on, a massive purchase of domain names with the names of prestigious companies and the letter “X” has been set in motion for illicit use in the so-called “DeepWeb”. which is detrimental to the companies affected. The Respondent explains that, considering the above, it decided to acquire domain names containing the letter “X”, before or after well-known companies, to reserve them for policies of good governance, sustainability, integral protection of workers, criminal compliance, etc., thereby achieving a double objective: the positive reinforcement of the company’s image and avoiding the pernicious use of the domain name, which would affect its reputation. The Respondent adds that, as regards Spanish companies, the Respondent’s X platform is designed to join business efforts to promote the brand “Spain” with the common objective of establishing good governance policies. Considering the above, the Respondent claims, the registration of the disputed domain names is lawful because it is covered by a service provided by the Respondent which can be exploited in accordance with the laws of the free market and which is in the Complainant’s interest.<\/span><\/p>\n

According to the Respondent, there is no likelihood of confusion between the disputed domain names and the Complainant’s NOVARTIS trademark, because the services or goods designated are different. The Respondent refers to the case law of the Spanish Supreme Court in this regard. Thus, the Respondent submits, while the Complainant is a pharmaceutical company, the Respondent provides IT, journalistic and marketing services, and its Platform X has been set up as a safe harbour for companies wishing to use it to manage their transparency and good governance policies, which has nothing to do with the pharmaceutical business in which the Complainant is engaged.<\/span><\/p>\n

The Respondent claims that it has legitimate rights for the registration and use of the disputed domain names because it has developed the Platform X as a space for good business practices linking the name of the companies concerned with the letter “X”. This platform avoids the damage that a company would suffer if its name were to be associated with unlawful activities, which are usually denoted by the letter “X”. Therefore, the Respondent maintains, it is entitled to exploit the disputed domain names commercially by offering them to the undertakings concerned, in the same way as they are entitled to contract its services.<\/span><\/p>\n

The Respondent denies that the disputed domain names have been registered and are being used in bad faith. In this regard, it points out that:<\/span><\/p>\n

- there is no likelihood of confusion in the market because the Parties are engaged in different activities;<\/span><\/p>\n

- this differentiation in the activities carried out by the Parties excludes the existence of competition between them; and <\/span><\/p>\n

- the disputed domain names are not maintained for passive purposes but have been integrated into the Respondent’s Platform X, which has been created to protect those companies that have decided to assert their good governance policies.<\/span><\/p>\n

Finally, the Respondent submits that a decision ordering the transfer of the disputed domain names to the Complainant would be illegal, since Article 41 of the Spanish Trademark Law does not provide for such a measure.<\/span><\/p>", "rights": "

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are 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).  <\/span><\/p>", "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 names (within the meaning of paragraph 4(a)(ii) of the Policy).  <\/span><\/p>", "bad_faith": "

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).<\/p>", "procedural_factors": "

Procedural issue No.1 - Language of the proceeding<\/p>\n

The Panel issued Procedural Order No.1 in respect of the language of the proceeding. This Procedural Order No.1 is reproduced below.<\/p>\n

The language of the Registration Agreement for the disputed domain names is Spanish. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.<\/p>\n

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).<\/p>\n

The Complainant requests that the language of the present administrative proceeding be English based on the following reasons:<\/p>\n

- The English language is commonly used internationally, so it would be fair to the Parties if it is the language of the present proceeding;<\/p>\n

- The Complainant is a Swiss-based company;<\/p>\n

- If the Complainant has to provide a translated version of the Complaint and subsequent communications in Spanish in the present proceedings, such translation would entail significant additional costs for the Complainant and delay in the proceedings.<\/p>\n

The Complainant also refers to another UDRP case that involved the same Respondent, Arcelormittal v. Giselle Perez, Epsilon Comunicacion SL, WIPO Case No. D2023-3571, where the Panel ordered the language of the proceeding to be English, although the language of the Registration Agreement for the respective domain name had been Spanish. On this basis, the Complainant submits that it is safe to assume that the Respondent understands and is able to communicate in the English language.<\/p>\n

The Respondent maintains that the language of the proceeding should be Spanish. It states that it is company located in Spain and it does not know English, so using this language would cause a significant disadvantage to it. The Respondent also notes that the Complainant can communicate in Spanish, since it has a registered office in Spain.<\/p>\n

As submitted by the Complainant, the Respondent has already participated as respondent in another proceeding under the Policy, where the Panel ordered the language of the proceeding to be English. The public database of WIPO includes yet another UDRP proceeding where the same happened, i.e., Arcelormittal v. Giselle Perez, Epsilon Comunicacion SL, WIPO Case No. D2023-3300. It is notable that these cases involved two domain names with the same composition pattern as the disputed domain names here - <x[trademark].com> and <[trademark]x.com>, which, as in the present case, do not suggest any focusing on the Spanish market or on Spanish-language Internet users. In these cases, the Respondent was invited in both English and Spanish to comment on the language of the proceedings but the Respondent remained inactive through the proceedings.<\/p>\n

The Panel in this case tends to agree with the arguments of the Complainant, but in order to safeguard the procedural rights of the Respondent, the Panel came to conclusion that the Respondent should be provided with an opportunity to participate in the proceeding in Spanish.<\/p>\n

Therefore, having considered the matters above, the Panel:<\/p>\n

    \n
  1. \n

    Instructed the Complainant to submit a translation of the Complaint into Spanish not later than on 16 January 2024;<\/p>\n<\/li>\n

  2. \n

    Invited the Respondent to submit a Response in either Spanish or English within 7 days of the submission by the Complainant of the Complaint translated into Spanish;<\/p>\n<\/li>\n

  3. \n

    Decided to issue the decision on the dispute in English within 7 days after (i) the submission by the Respondent of its Response under point 2 above, or (ii) the expiration of the time limit for the submission of the Response, whichever is earlier.<\/p>\n<\/li>\n<\/ol>\n

    <\/p>\n

    Procedural issue No.2 - Jurisdiction of the Czech Arbitration Court and of the Panel<\/p>\n

    The Respondent submits that the Czech Arbitration Court (the “CAC”) does not have jurisdiction over this dispute, because according to settled case law, its decisions do not produce the effect of res judicata and do not have the status of an arbitral award. The Respondent maintains that the present dispute has to be referred to Spanish courts. The Respondent further maintains that a decision ordering the transfer of the disputed domain name to the Complainant would be illegal, as such a measure is not provided for in Spanish law.<\/p>\n

    The registration agreement, pursuant to which the disputed domain names are registered, incorporates the Uniform Dispute Resolution Policy (the “UDRP”), adopted by ICANN in 1999. The Respondent has thus accepted the UDRP, which sets forth the terms and conditions in connection with a dispute between the registrant of a domain name and any party other than the Registrar over the registration and use of a domain name registered by its registrant.<\/p>\n

    Under the UDRP, each registrant of a domain name is required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:<\/p>\n

    (i) the respective domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and<\/p>\n

    (ii) the registrant has no rights or legitimate interests in respect of the domain name; and<\/p>\n

    (iii) the domain name has been registered and is being used in bad faith.<\/p>\n

    The Complaint is based on these three assertions in respect of the disputed domain names, which satisfies the Panel that the present dispute is properly within the scope of the UDRP. The CAC is included in the list of the dispute resolution service providers approved by ICANN, so it is competent to conduct the proceeding opened on the basis of the Complaint that has been submitted before it. The Panel has been properly appointed by the CAC to decide the dispute, and the relevant procedures have been complied with. Under the UDRP, the remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of a domain name or the transfer of the domain name registration to the complainant. If the Panel finds that the Complainant has established the three prerequisites stated above in this section, the Panel will grant the remedy requested by the Complainant, which is the present case is the transfer of the disputed domain names. The mandatory administrative proceeding requirements set forth in the UDRP shall not prevent the Respondent or the Complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before the present mandatory administrative proceeding is commenced or after such proceeding is concluded. Such court will of course follow the procedures and apply the laws that it deems applicable.<\/p>\n

    Taking all the above into account, the Panel finds that the present dispute shall be resolved under the UDRP, and that the CAC and the Panel have all the required jurisdiction to resolve it.<\/p>\n

    <\/p>\n

    Procedural issue No.3 - Request for consolidation of proceedings<\/p>\n

    The Respondent requests the consolidation of the proceeding in the present case with the proceeding in WIPO Case DES2023-0028 before the WIPO Arbitration and Mediation Center. That proceeding relates to the domain names <novartisx.es> and <xnovartis.es>, and a decision on it was issued on 19 January 2024. On this basis alone, the consolidation request has become moot. Nevertheless, even if the proceeding in WIPO Case DES2023-0028 was still pending, the consolidation request is without merit for the following reasons.<\/p>\n

    Disputes involving domain names in the “.es” ccTLD are governed by the Reglamento del procedimiento de resolución extrajudicial de conflictos para nombres de dominio bajo el código de país correspondiente a España (“.ES”), or the “Rules for the out-of-court settlement procedure for domain names under the country code for Spain (“.ES”)”. These Rules are different from the UDRP.<\/p>\n

    Under Paragraph 4(f) of the UDRP, the first Panel appointed to hear a pending dispute between the parties may consolidate before it any or all pending disputes between them in its sole discretion, provided that the disputes being consolidated are governed by the Policy.<\/p>\n

    Considering that different dispute resolution policies apply to the disputes whose consolidation is requested, there is no basis to allow the request for consolidation.<\/p>\n

    Having decided the above procedural issues, 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.<\/p>", "decision": "Accepted", "panelists": [ "Assen Alexiev" ], "date_of_panel_decision": "2024-01-31 00:00:00", "informal_english_translation": "

    The Complainant is the holder of the following registrations of the sign NOVARTIS (the “NOVARTIS trademark”)<\/span><\/p>\n

    - the European Union trademark NOVARTIS with registration No. 000304857, registered on 25 June 1999 for goods and services in International Classes 1, 5, 9, 10, 29, 30, 31 and 32; and<\/span><\/p>\n

    - the International trademark NOVARTIS with registration No. 1349878, registered on 29 November 2016 for goods and services in International Classes 19, 10, 41, 42, 44 and 45.<\/span><\/p>", "decision_domains": { "novartisx.com": "TRANSFERRED", "xnovartis.com": "TRANSFERRED" }, "panelist": null, "panellists_text": null }