The 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. Novartis AG (the “Complainant”), with headquarters in Switzerland, created in 1996, is the holding company of the Novartis Group. In 2023, Novartis achieved net sales of USD 45.4 billion, and total net income amounted to USD 14.9 billion and employed approximately 76 000 full-time equivalent employees as of 31 December 2023.<\/p>\n
The Complainant is the owner of the “NOVARTIS” registered well-known trademark in numerous jurisdictions all over the world, including in the United States, the United Kingdom and Belgium.<\/span><\/p>\n The Complainant owns numerous domain names composed of either its “NOVARTIS” trademark alone, including <novartis.com> (registered on 2 April 1996) and <novartis.us> (registered on 19 April 2002) or in combination with other terms, such as <novartispharma.com> (registered on 27 October 1999). The Complainant uses these domain names to resolve to its official websites through which it informs Internet users and potential consumers about its “NOVARTIS” mark and its related products and services. <\/span><\/p>\n The Complainant also enjoys a strong presence online via its official social media platforms.<\/span><\/p>\n In the present case, the Complainant filed a complaint regarding 4 disputed domain names (hereinafter “disputed domain names”) against multiple Respondents. The disputed domain names were registered between 22-24 May 2024. The Respondents are ‘Tom Latimer’ (residing in the US), ‘Simon Walsh’ (residing in the UK), ‘Smith Cole’ (residing in the Belgium).<\/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 A. The Complainant contends that the disputed domain names are confusingly similar to the Complainant’s trademarks.<\/p>\n The Complainant is the owner of the registered, well-known trademark “NOVARTIS” in numerous jurisdictions all over the world. <\/span><\/p>\n The disputed domain names incorporate:<\/p>\n <novartispharma-nv.com> - in its second level-portion the Complainant’s well-known trademark “NOVARTIS” in its entirety followed by the relevant term “pharma” and the term “nv” separated by a hyphen. The Complainant brings Panel’s attention to the fact that Novartis Pharma NV is the name of the Complainant’s subsidiary in Belgium (evidenced by Novartis Locations in Belgium). <\/span><\/p>\n <novartispharmac-nv.com> - in its second level-portion the Complainant’s “NOVARTIS” well-known trademark in its entirety with the addition of the letter “c” followed by the relevant term “pharma” and the term “nv” separated by a hyphen. <\/span><\/p>\n <novartispharmanv.com> - in its second level-portion the Complainant’s “NOVARTIS” well-known trademark in its entirety followed by the relevant term “pharma” and the term “nv”. <\/span><\/p>\n <novartis-belgie.com> - in its second level-portion the Complainant’s “NOVARTIS” well-known trademark in its entirety followed by the relevant term “belgie” (referring to Belgium) separated by a hyphen. <\/span><\/p>\n The Complainant contends that the addition of such descriptive terms would not prevent a finding of confusing similarity to the trademark. Moreover, the terms “pharma” and “belgie” directly refer to the Complainant and their business and as mentioned above such terms relate to the Complainant’s subsidiaries in Belgium. <\/span><\/p>\n The Complainant asserts that the “NOVARTIS” trademark is clearly recognizable within the disputed domain names.<\/span><\/p>\n <\/span><\/p>\n B. The Complainant states that the Respondents have no rights or legitimate interests in respect of the disputed domain names.<\/p>\n The Complainant and the Respondents have never had any previous relationships, nor has the Complainant ever granted the Respondents any rights to use the “NOVARTIS” trademark, including in the disputed domain names. <\/span><\/p>\n The Complainant has not found that the Respondents are known by the disputed domain names. Indeed, when searching for the disputed domain name terms “novartispharma-nv”, “novartispharmac-nv”, “novartispharmanv” and “novartis-belgie” in the Google search engine, all top returned results point to the Complainant (evidenced by Google Search Results<\/em>). When entering the disputed domain names’ terms along with the name of the Respondents, there are no returned results showing that the Respondents are known by the disputed domain names (proved by Amended Google Search Results).<\/span><\/p>\n The Complainant adds that at the time of filing this Complaint, none of the disputed domain names resolved to any active pages (evidenced by Screenshots of the websites under the disputed domain names).<\/span><\/p>\n The Complainant claims that the disputed domain names are not being used in connection with the bona fide offering of goods or services. The disputed domain names have indeed been passively held. There is no evidence showing that the Respondents have been using, or preparing to use, the disputed domain names in connection with a bona fide offering of goods and services or have made a legitimate noncommercial or fair use of the disputed domain names.<\/p>\n Moreover, there was no response from the Respondents to the Complainant’s Cease-and-Desist letters sent on 4 June 2024 at the e-mail address as available in WHOIS records, nor to the Reminders. <\/span><\/p>\n In addition, the disputed domain names <novartispharma-nv.com> and <novartispharmac-nv.com> via the e-mail function, have been used in order to conduct an e-mail phishing scheme. Namely, the Respondent created an e-mail address associated with the disputed domain name “procurement@novartispharma-nv.com” and infiltrated the e-mail correspondence with one of the Complainant’s supplier\/partner in Belgium.<\/p>\n To give the impression the fraudulent e-mail is genuine, the name of one of the Novartis group’s employees working in the Procurement department has been used. Such a name was inserted in the body of the fraudulent e-mail as a signature over the company name Novartis Pharma NV (Complainant’s subsidiary in Belgium). The fraudulent e-mail also includes, in the same signature, the postal address of Novartis Pharma NV in Belgium. By quoting one of the Novartis group’s employee names as well as company name and address, the Respondent has aimed at deceiving the recipient and diverting the supply of the equipment to a false address in Belgium, providing false contact details. Such manoeuvre of sending emails originating from the e-mail address incorporating the domain name has aimed at impersonating the Novartis group and its employees to deceive recipients and divert products which may cause severe monetary losses for the Complainant and their suppliers (evidenced by the furnished Phishing E-mail Correspondence). Furthermore, in such an e-mail chain the Respondent(s) also quoted e-mail addresses associated with the disputed domain name <novartispharmac-nv.com>. Namely, the Respondents tagged e-mail addresses it.service@novartispharmac-nv.com and lab.manager@novartispharmac-nv.com (proved by the provided Phishing E-mail Correspondence) to create a false impression that these are employees of Novartis Pharma NV responsible for the installation of equipment as follows from the structure of the e-mails. The Complainant’s partner\/supplier did not immediately notice such illicit activities.<\/p>\n At the time of filing of amended complaint, the Complainant already took an action to suspend the <novartispharma-nv.com> disputed domain name and received confirmation on suspension (evidenced by the submitted domain name Suspension E-mail).<\/p>\n <\/p>\n C. The Complainant contends that the disputed domain names have been registered and are being used in bad faith.<\/p>\n The Complainant claims that the Complainant’s trademark registrations significantly predate the registration of the disputed domain names (proved by WHOIS Records), and the Respondents have never been authorized by the Complainant to register the disputed domain names. <\/span><\/p>\n The Complainant also enjoys a strong online presence. The Complainant is very active on social media to promote its mark, products and services. Previous UDRP panels have stated that the “NOVARTIS” trademark is well-known (see Novartis AG v. Amartya Sinha, Global Webs Link, Novartis RO, WIPO Case No. D2020-3203). According to the Complainant, it is therefore inconceivable that the Respondents were unaware of the existence of the Complainant when they registered the disputed domain names. <\/span><\/p>\n The Complainant adds that the structure of the disputed domain names – incorporating the Complainant’s well-known trademark “NOVARTIS” followed by the “pharma”, “nv” or “belgie” terms – shows that the Respondents registered the disputed domain names 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’ minds. <\/span><\/p>\n Moreover, as previously described, two of the disputed domain names were used to perpetrate a phishing scheme trying to divert products of the Complainant’s supplier to a false address. These facts clearly demonstrate that the Respondents did not act randomly but knew the Complainant and its trademark when it undertook such a fraudulent manoeuvre. <\/span><\/p>\n The Complainant concludes that considering that the “NOVARTIS” trademark is well-known and that the Complainant is a globally renowned pharmaceutical company, it appears that the Respondents knew the Complainant and the “NOVARTIS” trademark at the time they registered the disputed domain names. <\/span><\/p>\n In addition, as previously described, the disputed domain names do not resolve to any active pages (evidenced by Screenshots of the websites under the disputed domain names) and are therefore passively held. <\/span><\/p>\n In addition, Tom Latimer, revealed by Registrar Verification as the registrant of <novartispharma-nv.com> and <novartis-belgie.com> appears to have registered other domain names that incorporate third-party’s brands. Namely, when conducting a Reverse WHOIS search by the email of the Respondent there are 9 results (proved by Reverse WHOIS Record), among them <gsk-ch.com> referring to GSK pharmaceutical company and others. This indicates a pattern of abusive conduct on the part of the Respondent. <\/span><\/p>\n In light of all the above-mentioned circumstances, the Complainant finds it inconceivable that the Respondents could make any good faith use of the disputed domain names.<\/p>\n <\/p>\n RESPONDENT:<\/p>\n No administratively compliant Response has been filed.<\/p>\n The CAC was contacted by a third person who received a written notice addressed to Respondent ‘Smith Cole’. The person contacting the CAC claims that no one named ‘Smith Cole’ seats at the address and there is no connection with the disputed domain name “<novar spharmanv.com>”.<\/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 UDRP).<\/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 UDRP).<\/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 UDRP).<\/p>",
"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.<\/p>",
"decision": "Accepted",
"panelists": [
"Radim Charvát"
],
"date_of_panel_decision": "2024-08-22 00:00:00",
"informal_english_translation": " The Complainant is the owner, among others, of the following trademark registrations:<\/span><\/p>\n The Complainant is the owner, among others, of the following trademark registrations:<\/p>\n<\/li>\n US trademark registration No. 5420583 “NOVARTIS” registered on 13 March 2018;<\/p>\n<\/li>\n US trademark registration No. 4986124 “NOVARTIS” registered on 28 June 2018;<\/p>\n US trademark registration No. 2997235 “NOVARTIS” registered on 20 September 2005;<\/p>\n<\/li>\n International trademark registration No. 1544148 “NOVARTIS” registered on 29 June 2020;<\/p>\n<\/li>\n International trademark registration No. 1349878 “NOVARTIS” registered on 29 November 2016;<\/p>\n<\/li>\n UK trademark registration No. UK00801349878 “NOVARTIS” registered on 29 November 2018. The Complainant proved its ownership of the listed trademark registrations by the submitted extracts from the Registers.<\/span><\/p>",
"decision_domains": {
"novartispharma-nv.com": "TRANSFERRED",
"novartis-belgie.com": "TRANSFERRED",
"novartispharmac-nv.com": "TRANSFERRED",
"novartispharmanv.com": "TRANSFERRED"
},
"panelist": null,
"panellists_text": null
}\n
<\/p>\n<\/li>\n<\/ul>\n