{ "case_number": "CAC-UDRP-106182", "time_of_filling": "2024-01-31 10:30:08", "domain_names": [ "novartis-corporation.com" ], "case_administrator": "Olga Dvořáková (Case admin)", "complainant": [ "Novartis AG" ], "complainant_representative": "BRANDIT GmbH", "respondent": [ "PERSONA FISICA CON ACTIVIDAD EMPRESARIAL Alvaro Rodriguez Espinosa (PERSONA FISICA CON ACTIVIDAD EMPRESARIAL )" ], "respondent_representative": null, "factual_background": "

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.<\/span> In 2022, the Complainant achieved net sales from continuing operations of USD 50.5 billion, and total net income amounted to USD 7.0 billion and employed approximately 102 000 full-time equivalent employees as of December 31, 2022.<\/p>\n

The disputed domain name <novartis-corporation.com> was registered on December 1, 2023.<\/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 name <novartis-corporation.com><\/span>.<\/span><\/p>", "no_response_filed": "

COMPLAINANT:

• The disputed domain name is identical or confusingly similar to the protected mark

According to the Complainant, the disputed domain name <novartis-corporation.com> incorporates entirely the Complainant’s well-known, distinctive trademark NOVARTIS with the term “corporation”, which is closely related to the Complainant and its business activities. It’s important to underline that these terms directly refer to the Complainant and its business activities.<\/span><\/p>\n

The NOVARTIS trademark is clearly recognizable within the disputed domain name. Previous UDRP panels have constantly held that the mere addition of a descriptive or generic term would not prevent a finding of confusing similarity to a trademark (see Minerva S.A. c. Domain Administrator, Fast Serv Inc. d.b.a. QHoster.com, WIPO Case No. D2019-2767)<\/span>).<\/p>\n

WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (\"WIPO Jurisprudential Overview 3.0\"), paragraph 1.8. states:<\/p>\n

“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.\"<\/em><\/p>\n

In addition, t<\/span>he presence of the generic Top-Level Domain (“gTLD”) extension “.com” in the first level portion of the disputed domain name is a standard registration requirement and may be disregarded when assessing whether the disputed domain name is confusingly similar to the trademark in which the Complainant has rights (see Rollerblade, Inc. v. Chris McCrady<\/em>, WIPO Case No. D2000-0429; Can Pro Pet Products LTD. v. Matthew Dweck<\/em>, WIPO Case No. D2020-0615; Sanofi v. Aamir Hitawala<\/em>, WIPO Case No. D2021-1781).<\/p>\n

Therefore, the Complainant argues that the disputed domain name is confusingly similar to the Complainant's NOVARTIS trademark within the meaning of Paragraph 4(a)(i) of the Policy.

• Respondent does not have any rights or legitimate interest in the disputed domain name

The 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.

The 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 \"novartiscorporation.com\" or \"novartis-corporation.com\" in the Google search engine, the returned results point to the Complainant and its business activities. Similarly, <\/span>when searching for the disputed domain name along with the name of the Respondent “Alvaro Rodriguez Espinosa”, there are no returned results showing that the Respondent is known by the disputed domain name.<\/p>\n

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Furthermore, when searching for any trademarks incorporating the disputed domain name terms “novartis-corporation” on online trademark search platforms, no registered trademarks are to be found. Similarly, no registered trademarks were found in the name of the Respondent.<\/span><\/p>\n<\/div>\n<\/div>\n<\/div>\n<\/div>\n

According 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 trademark for its business activities. However, the Respondent still chose to register the disputed domain name as such.
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Moreover, the Complainant is known in Mexico due to extensive use and recognition of the NOVARTIS trademark in connection with its business activities. The Respondent, in choosing to register the disputed domain name, has not only failed to establish any legitimate rights or interests in the term \"novartis-corporation\" but has also demonstrated a lack of due diligence in researching and respecting the Complainant's pre-existing trademark rights.
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The Complainant's established presence in Mexico, coupled with the absence of any legitimate association between the Respondent and the NOVARTIS trademark, raises concerns about the Respondent's motives behind registering the disputed domain name. The apparent attempt to create confusion by incorporating the well-known trademark into the disputed domain name suggests bad faith on the part of the Respondent.<\/span><\/p>\n<\/div>\n<\/div>\n<\/div>\n<\/div>\n

<\/span>The Complainant also points out that at the time the Complainant found out about the disputed domain name, it was observed to be Pay Per Click page displaying sponsored links directly related to the Complainant's business e.g. “Pharmaceutical Company”, “Pharma Company”, “Pharmaceutical”. Similarly, around the time of filing this Complaint, the disputed domain name continued to display such sponsored links.<\/p>\n

In additon, the Complainant sent a Cease-and-Desist letter on December 18, 2023 via abuse contact of the Registrar as well as initiated a contact request via the service provided by the Registrar, GoDaddy LLC. The Complainant also received two emails from the Respondent, with the offer to sell the disputed domain name for a sum which is clearly in excess of the Respondent’s out-of-pocket expenses for registering the disputed domain name<\/span>. The Complainant replied reiterating the content of Cease-and-Desist Letter and concluded that such behavior further shows that the Respondent lacks rights or legitimate interests in the disputed domain name.<\/p>\n

Therefore, the Complainant contends that the Respondent has no right nor legitimate interest in respect of the disputed domain name<\/span>, within the meaning of the Paragraphs 4(a)(ii) and (4)(c) of the Policy.<\/p>\n

• The disputed domain name has been registered and is being used in bad faith

According to the Complainant, the Respondent had knowledge of the Complainant and the NOVARTIS trademark at the time of the registration of the disputed domain name. The Complainant states that the registration of the Complainant’s well-known and distinctive trademarks significantly predates the registration of the disputed domain name. The Respondent has never been authorized by the Complainant to register and use the disputed domain name. <\/span><\/p>\n

The Complainant emphasizes that it enjoys a strong online presence as well as the fact that <\/span>the Complainant has wide recognition in Mexico, with a substantial presence in the region. The Complainant's trademark NOVARTIS holds significant recognition and reputation in the Mexican market due to its longstanding use and promotion. This information further underscores the Respondent's likely knowledge of the Complainant and its trademark when registering the disputed domain name.<\/p>\n

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Furthermore, the structure of the disputed domain name – incorporating the Complainant’s well-known trademark NOVARTIS followed by the relevant term “corporation” separated by hyphen - shows that the Respondent registered the dispute domain name having the Complainant and its NOVARTIS trademark in mind. It reflects the Respondent’s clear intention to create an association, and a subsequent likelihood of confusion, with the Complainant’s trademark in Internet users’ mind. Indeed, by reading the disputed domain name, Internet users may believe that it is directly connected to or authorized by the Complainant. <\/span>In this regard, previous UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith.<\/p>\n

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In addition, at the time the Complainant found out about the disputed domain name, it was observed to be a Pay Per Click Page displaying sponsored links directly related to the Complainant<\/span>. Similarly, around the time of filing of this complaint, the disputed domain name continued to display such links.<\/span><\/p>\n<\/div>\n<\/div>\n<\/div>\n<\/div>\n

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PPC pages generate revenues when Internet users click on the links displayed therein. The PPC page associated to the disputed domain name displayed relevant sponsored links which clearly referred to the Complainant and its business activities. According to the Complainant, the Respondent likely obtained a financial benefit when Internet users clicked on the aforementioned links. Such use of the disputed domain name is aimed at attracting Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s NOVARTIS trademark as to the source, sponsorship, affiliation, or endorsement of the aforementioned PPC page.<\/span><\/p>\n<\/div>\n<\/div>\n<\/div>\n<\/div>\n<\/div>\n<\/div>\n<\/div>\n<\/div>\n

Also, the Respondent offered to sell the disputed domain nam<\/span>e to the Complainant for a sum which is clearly in excess of the Respondent’s out-of-pocket expenses for registering the disputed domain name<\/span>. Such behaviour is a clear indication of bad faith use of the disputed domain name, according to the Complainant.<\/span><\/p>\n

Therefore, the Complainant contends that the Respondent has registered and used the disputed domain name in bad faith and its conduct falls within the meaning of Paragraph 4(a)(iii) of the Policy.<\/p>\n

RESPONDENT:<\/p>\n

In the Response to the Complaint, the Respondent claims that \"Novartis\" and \"novartis-corporation.com\" are neither identical nor confusingly similar, and that the disputed domain name was registered with a legitimate business purpose, targeting an industry where the Complainant has no presence or trademark claims.<\/p>\n

The Respondent provides evidence of two trademark applications for \"novartis-corporation.com\" mark in Classes 25 and 38 before the Mexican Trademark Office, filed on February 23, 2024 .<\/p>\n

The Respondent provides that <\/span>the term “corporation” is generic and widely used in both the business and online realms, diminishing its potential to create a unique and direct association with the Complainant.<\/p>\n

The Respondent also emphasizes that the disputed domain name was acquired legally from the Registrar, GoDaddy LLC and registered trademark applications for Class 25 (Clothing and Footwear) and Class 38( Telecommunication Services), both categories where the Complainant has no registered trademarks, ensuring no overlap or infringement in the Complainant's intellectual property rights.<\/span><\/p>\n

The Respondent contests the claim of intentionally attempting to attract Internet users for commercial gain by creating confusion. According to the Respondent, the disputed domain name's use within a distinct industry (Clothing and Footwear) is aimed at <\/span><\/span>developing a separate brand identity, not capitalizing on the Complainant's reputation.<\/p>\n

The Respondent’s response to the Cease-and-Desist Letter, mentioning a selling price for the disputed domain name was a direct reaction to an unsolicited approach and not indicative of an initial intent to sell the disputed domain name to the Complainant at an inflated price.<\/p>\n

The Respondent concludes that it's conduct has been consistent with the practices of fair competition and <\/span>respectful of intellectual property rights, distinguishing it from the accusations levied by the Complainant.<\/span><\/p>\n

COMPLAINANT:<\/span><\/p>\n

In the Reply to the Response, the Complainant reiterates arguments and position expressed in the Complaint and addresses new information followed by the Respondent's Response.<\/p>\n

Namely, the Complainant wishes to point out that the trademark applications for \"novartis-corporation.com\" mark in Classes 25 and 38 were filed online before Mexican Trademark Office on February 23, 2024 according to copies of trademark applications submitted by the Respondent (No. 20240074014 and No. 20240064187). Therefore, the applications were filed after the Respondent was notified of the subject UDRP complaint and following 2 previous communications from the Respondent with no mention of any intention to use such terms in relation to goods and services in Classes 25 and 38. <\/p>\n

From the Complainant's perspective and taking into accounts all the arguments as submitted in UDRP complaint, it is obvious that such trademark applications filings were pre-textual and were filed in order circumvent application of UDRP Policy by claiming legitimate rights in the disputed domain name. According to WIPO Overview 3.0, para 2.12.2. \"panels have generally declined to find respondent rights or legitimate interests in a domain name on the basis of a corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to circumvent the application of the UDRP or otherwise prevent the complainant’s exercise of its rights (even if only in a particular jurisdiction)\".<\/span><\/p>", "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).<\/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 name (within the meaning of paragraph 4(a)(ii) of the Policy).<\/p>", "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).<\/p>", "procedural_factors": "

Preliminary issues – the Complainant’s unsolicited supplemental filing<\/u><\/p>\n

On March 1, 2024, the Complainant made an unsolicited supplemental filing. This filing contains contentions regarding new information as disclosed in the Respondent's Response.<\/p>\n

Paragraph 10 of the Rules provides panels with the authority to determine the admissibility, relevance, materiality, and weight of the evidence, and also to conduct the proceedings with due expedition.<\/p>\n

Accordingly, unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel, pursuant to its general powers under paragraph 12 of the Rules. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6. However, prior WIPO decisions state that supplemental filings should only be permitted where there exist \"new, pertinent facts that did not arise until after the submission of the complaint\" (Gordon Summer, p\/k\/a Sting v. Michael Urvan, D2000-0596).<\/span><\/p>\n

Having reviewed the Complainant’s unsolicited supplemental filing in this case, the Panel considers that the filing contains significant material which could not have been included in the Complainant’s original Complaint, or material which is of such importance that it is liable to be critical to the outcome of the case. In the circumstances, the Panel determines that the Complainant’s unsolicited supplemental filing shall be admissible in this proceeding.<\/p>\n

For all the reasons above, 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.<\/span><\/p>", "decision": "Accepted", "panelists": [ "Barbora Donathová" ], "date_of_panel_decision": "2024-03-18 00:00:00", "informal_english_translation": "

Novartis AG (the 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 Mexico, where the Respondent is allegedly located. The vast majority of the Complainant's trademark registrations significantly predate the registration of the disputed domain name. <\/span><\/p>\n

The Complainant’s trademark registrations applying to the present proceedings include the following earlier rights:<\/p>\n

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  • Mexican trademark registration (IMPO) for NOVARTIS, Reg. No.: 2400833<\/span> , Reg. date: November 1, 2021<\/span>;<\/li>\n
  • United States (USPTO) Trademark registration for NOVARTIS, Reg. No.: 2336960, First Reg. date: April 4, 2000;<\/li>\n
  • EU trademark registration for NOVARTIS (EUIPO), Reg. No.: 013393641 Reg. date: March 17, 2015;<\/span><\/li>\n
  • International Registration for NOVARTIS, Reg. No.: 663765, Reg. date: July 1, 1996.<\/span><\/li>\n<\/ul>\n
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    The Complainant owns numerous domain names composed of either its trademark NOVARTIS alone, including <novartis.com> (created on 2 April 1996) and <novartis.us> (created on 19 April 2002) or in combination with other terms, e.g. <novartispharma.com> (created on 27 October 1999). The Complainant uses these domain names to promote the NOVARTIS mark with related products and services. The Complainant enjoys a strong presence online also via its official social media platforms.<\/div>\n<\/div>\n<\/div>\n<\/div>\n<\/div>", "decision_domains": { "novartis-corporation.com": "TRANSFERRED" }, "panelist": null, "panellists_text": null }