{ "case_number": "CAC-UDRP-107267", "time_of_filling": "2025-01-29 09:09:33", "domain_names": [ "novartispakistan.com" ], "case_administrator": "Olga Dvořáková (Case admin)", "complainant": [ "Novartis AG" ], "complainant_representative": "Abion GmbH", "respondent": [ "Mehar Ahmed Khan (JobMak)" ], "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. In 2023, the Complainant 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 December 31, 2023.<\/span><\/p>\n

The disputed domain name  <novartispakistan.com> was registered on January 3, 2025.<\/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 <novartispakistan.com><\/span>.<\/span><\/p>\n

 <\/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 <novartispakistan> incorporates entirely the Complainant’s well-known, distinctive trademark NOVARTIS followed by the relevant geographical term “pakistan”.  The Complainant reiterates that it has an active business presence in Pakistan. Moreover, the Complainant uses multiple social media platforms under the name “Novartis Pakistan”.<\/span><\/p>\n

The NOVARTIS trademark is clearly recognizable in the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) 3.0 para. 1.8 states: “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><\/span><\/p>\n

In a similar case involving the Complainant, the Panel concluded that the “disputed domain name, <novartismexico.com>, consists of the distinctive element “NOVARTIS” followed by the geographical term “Mexico” and the Top-Level domain “.com”. The term “Mexico” is descriptive and non-distinctive in relation to the domain name <novartismexico.com> […] Since the Complainant’s trademark “NOVARTIS” is fully comprised within the disputed domain names that the additional elements have lower degree of distinctiveness, the Panel considers that the domain names are confusingly similar to Complainant’s previously registered trademarks.” (See Novartis AG v. Sofia Vergara, Avior Administracion, CAC-UDRP-106560).<\/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.

• The Respondent does not have any rights or legitimate interest in the disputed domain name
<\/span><\/p>\n

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 with the Complainant in any form.<\/p>\n

 The Complainant has not found that the Respondent is commonly known by the disputed domain name or that it has legitimate interest in the disputed domain name or the major part of it. When searching for “novartispakistan” or “novartis pakistan” in the Google search engine, the returned results directly relate to the Novartis group, the subsidiary ‘Novartis Pharmaceuticals Pakistan’, the Complainant, as well as its website, its social media's accounts or related topics. When entering the disputed domain name terms along with the name of the Respondent “Mehar Ahmed Khan” and organization name “JobMak”, there are no returned results showing that the Respondent is known by the disputed domain name.<\/p>\n

 <\/span><\/p>\n

\n
\n
\n
\n

Furthermore, <\/span>when searching for any trademarks incorporating the disputed domain name “novartispakistan” or “novartis pakistan” on online trademark search platforms, no registered trademarks are to be found. When searching for any trademarks in the name of the Respondent “Mehar Ahmed Khan” and organization name “JobMak”, there are also no results related to the disputed domain name terms to be found.<\/p>\n<\/div>\n<\/div>\n<\/div>\n<\/div>\n

 <\/p>\n

According to the Complainant, the Respondent could have easily performed a similar search before registering the disputed domain name and would have quickly learned 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.<\/p>\n

 <\/p>\n

At the time the Complainant found out about the disputed domain name on January 7, 2025, it resolved to a parking page with “pay per click” (“PPC”) links. The PPC page associated with the disputed domain name displayed relevant sponsored links that clearly refer to the Complainant and its business activities, such as “Antibodies Production” and “Pharmaceutical Company”. Upon clicking these links, Internet users were invited to visit other websites related to “Pharmaceutical Processes” and “Pharma Contract Manufacturers”, among others.<\/p>\n

PPC pages generate revenues when Internet users click on the links displayed therein. The Respondent likely obtained a financial benefit when Internet users clicked on the aforementioned links. Such use of the disputed domain name aims at attracting Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s NOVARTIS<\/em> trademark as to the sources, sponsorship, affiliation, or endorsement of the aforementioned PPC page. <\/p>\n

 <\/p>\n

At the time of filing of the Complaint, the disputed domain name resolved to an inactive page.  Similarly, at the time of filing the Amended Complaint, the disputed domain name still resolves to an inactive page. The disputed domain name is not being used in connection with bona fide offering of goods or services, i.e., there is “no available evidence that the Respondent engages in, or has engaged in any activity or work, i.e., legitimate or fair use of the disputed domain name, that demonstrates a legitimate interest in the disputed domain name” (see Bollore v. Tywonia W Hill, WIPO Case No. DCO2017-0012).<\/p>\n

The disputed domain name is thus being passively held. There is no evidence showing that the Respondent has been using, or preparing to use, the disputed domain name in connection with a bona fide offering of goods and services or has made a legitimate noncommercial or fair use of the disputed domain name. In similar circumstances, it has been decided that when “the Respondent has failed to make use of the resolving website and has not demonstrated any attempt to make legitimate use of the disputed domain name and website (see Skandinaviska Enskilda Banken AB v. Nick Jones, WIPO Case No. D2021-0703; see also ArcelorMittal (Société Anonyme) v. Registration Private, Domains By Proxy, LLC \/ Joel Tinoco, Pixel Design Costa Rica, WIPO Case No. D2021-0909). <\/p>\n

Moreover, the structure of the disputed domain name – incorporating in its second level portion the Complainant’s well-known trademark NOVARTIS followed by the geographical term “pakistan” reflects the Respondent’s intention to create an association, and a subsequent likelihood of confusion, among Internet users’ mind. The disputed domain name in its structure directly refers to the Complainant and its trademarks.<\/p>\n

 <\/p>\n

It therefore appears that the Respondent deliberately chose to use the well-known trademark NOVARTIS in the disputed domain name to benefit from the Complainant’s worldwide renowned trademark and to confuse Internet users as to the source of the disputed domain name. Such use of the disputed domain name cannot therefore be considered as a bona fide offering of goods or services nor as legitimate noncommercial or fair use.<\/p>\n

It therefore appears that the Respondent deliberately chose to use the well-known trademark NOVARTIS<\/em> in the disputed domain name to benefit from the Complainant’s worldwide renown trademark and to confuse Internet users as to the source of the disputed domain ame. Such use of the disputed domain name cannot therefore be considered as a bona fide<\/em> offering of goods or services nor as legitimate noncommercial or fair use.<\/p>\n

In addition, when the Complainant found out about the registration of the disputed domain name, on January 7, 2025, they sent a Cease-and-Desist Letter to the Registrant. The Complainant further sent reminders on January 17, 2025, and January 22, 2025, but there was no response. <\/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<\/em> 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

As previously mentioned, the structure of the disputed domain name reflects the Respondent’s intention to create an association, and a subsequent likelihood of confusion, with the Complainant, its NOVARTIS trademark and the Novartis group in Internet users’ minds, as by reading the disputed domain name, Internet users may believe that it is directly connected to or authorized by the Complainant. 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

 <\/p>\n

 At the time the Complainant found out about the disputed domain name on January 7, 2025, it resolved to a parking page with PPC links. The PPC page associated with the disputed domain name displayed relevant sponsored links which clearly refer to the Complainant and its business activities, such as “Antibodies Production” and “Pharmaceutical Company”. Upon clicking these links, Internet users were invited to visit other websites related to “Pharmaceutical Processes” and “Pharma Contract Manufacturers”, among others.<\/p>\n

In addition, at the time of filing of the Complaint, the disputed domain name resolved to an inactive page. Consequently, the disputed domain name is thus being passively held. I<\/span>n the present case, several factual considerations are clear indicators of bad faith use under the passive holding doctrine.<\/p>\n

    \n
  • The disputed domain name comprises the Complaint’s well-known trademark NOVARTIS<\/em>, followed by the geographical term “pakistan”, a country where the Complainant has an active business presence.  <\/li>\n
  • The disputed domain name is currently passively held. There is therefore no evidence of any actual or contemplated good-faith use of the disputed domain name, as previous UDRP Panels held (see British Airways Plc. v. David Moor, WIPO Case No. D2006-1224).<\/li>\n
  • When the Complainant found out about the registration of the disputed domain name, on January 7, 2025, a Cease-and-Desist Letter was sent to the Registrant, through the privacy email listed on the publicly available WhoIs records. In the Cease-and-Desist Letter, the Complainant advised the Respondent that the unauthorized use of their trademark within the disputed domain name violates their trademark rights and requested a voluntary transfer of the disputed domain name. The Complainant further sent reminders on January 17, 2025, and January 22, 2025, but there was no response. The Respondent had a chance to provide evidence of actual or contemplated good-faith use of the disputed domain name but failed to do so, which infers bad faith (see NetBet Enterprises Ltd v. Global Domain Privacy Services Inc. \/ Tilok Nokar, WIPO Case No. D2020-0048).<\/li>\n
  • It is likely that the Respondent is trying to conceal its identity regarding the ownership of the disputed domain name – as their name and contact details are covered by a privacy shield in the corresponding publicly available WhoIs records – which is further evidence of bad faith (Instagram, LLC v. Registration Private, Domains By Proxy, LLC \/ Murat Sander, WIPO Case No. D2021-0526).<\/li>\n<\/ul>\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

    \n

    RESPONDENT:<\/p>\n

    In the Response to the Complaint dated February 6, 2025, and the Second Response of the same date, the Respondent asserts that the disputed domain name was registered for a legitimate purpose—namely, to promote new skills, technologies, and educational advancements in Pakistan.<\/p>\n

    The Respondent acknowledges that the Complainant's trademark NOVARTIS<\/em> is well-known; however, they argue that the addition of a geographical term such as \"Pakistan\" does not create confusing similarity under the UDRP.<\/p>\n

    The Respondent contends that the disputed domain name was registered with the intention of establishing a platform to provide information and services related to new skills, technologies, and education in Pakistan. They assert that \"Novartis Pakistan\"<\/em> is not exclusively associated with the Complainant, as it consists of a combination of a generic term (\"Novartis\") and a geographical identifier (\"Pakistan\"). Consequently, the Respondent claims to have legitimate rights and interests in the disputed domain name.<\/p>\n

    According to the Respondent, the Complainant has not provided any evidence demonstrating exclusive rights to the term Novartis<\/em> in combination with geographical identifiers such as \"Pakistan.\" The Respondent argues that \"Pakistan\" is a purely descriptive geographical term that cannot be monopolized by any single entity. As a result, the combination of \"Novartis\" and \"Pakistan\" in the disputed domain name <novartispakistan.com><\/em> is descriptive in nature and does not infringe upon the Complainant's trademark rights.<\/p>\n

    The Respondent further asserts that the disputed domain name was neither registered nor used in bad faith. At the time of registration, the Respondent claims they were unaware of the Complainant’s specific trademark rights in Pakistan and had no intention of targeting the Complainant or its business.<\/p>\n

    Additionally, the Respondent denies that the disputed domain name was ever used to display pay-per-click (PPC) ads. They argue that any such activity would have resulted from default settings imposed by Namecheap and was not the Respondent’s action. Furthermore, the Respondent maintains that the disputed domain name has never been activated or used for any business purpose, and the claim regarding PPC ads is incorrect. They reiterate that any PPC links allegedly associated with the domain name were automatically generated by Namecheap’s default settings and were not actively placed by the Respondent.<\/p>\n

    The Respondent further claims that if the disputed domain name were vital to the Complainant’s business, they should have secured it years ago. The fact that the Complainant waited an unreasonable amount of time to register the domain name weakens their case.<\/p>\n

    Moreover, according to the Respondent, the principle of passive holding<\/em> alone is insufficient to establish bad faith under the UDRP.<\/p>\n

    In conclusion, the Respondent asserts that the disputed domain name is not confusingly similar to the Complainant’s trademark, was registered with a legitimate purpose, and was neither registered nor used in bad faith.<\/p>\n

    \n

    COMPLAINANT (Supplemental filing):<\/span><\/p>\n

    Further to the Respondent’s Response of February 6,2025, the Complainant reiterates the arguments and position expressed in the Complaint and Amended Complaint.<\/p>\n

     <\/p>\n

    In response to the Respondent’s claims that the disputed domain name is entirely inactive and that the PPC links were not placed by the Respondent, reference is to be made to Annex to the Complaint, showing the parking page with PPC links and clearly stating at the bottom of the parking page that: “This webpage was generated by the domain owner”.<\/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 February 12, 2025, the Complainant submitted an unsolicited supplemental filing, reiterating the arguments and position expressed in the Complaint and Amended Complaint.<\/p>\n

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

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

    Having reviewed the Complainant’s unsolicited supplemental filing, the Panel finds that it does not contain significant material that could not have been included in the original Complaint. Nor does it present information of such importance that it would be critical to the outcome of the case. The Panel further notes that the supplemental filing does not introduce any new information. The Panel is already aware of the reference in Annex of the Complaint (or Amended Complaint), which displays the parking page with PPC links, clearly stating: \"This webpage was generated by the domain owner.\"<\/em><\/p>\n

    Under these circumstances, the Panel determines that the Complainant’s unsolicited supplemental filing is not admissible in this proceeding.<\/p>\n

    For all the reasons stated above, the Panel is satisfied that all procedural requirements under the UDRP have been met and that there is no reason why issuing a decision would be inappropriate.<\/p>", "decision": "Accepted", "panelists": [ "Barbora Donathová" ], "date_of_panel_decision": "2025-02-25 00:00:00", "informal_english_translation": "

    Novartis AG (the “Complainant”)<\/span> is the owner of the registered well-known trademark NOVARTIS in numerous jurisdictions all over the world, including in Pakistan. These trademark registrations predate the registration of the disputed domain name <novartispakistan.com>, such as but not limited to:<\/p>\n

      \n
    • Pakistan Trademark: NOVARTIS, Reg. No. 134437, Registration Date: February 27,1996<\/li>\n
    • Pakistan Trademark: NOVARTIS, Reg. No. 135177, Registration Date: April 9, 1996<\/li>\n
    • International trademark: NOVARTIS, Reg. No. 663765, Registration Date: July 1, 1996<\/li>\n
    • International trademark: NOVARTIS, Reg. No. 1544148, Registration Date: June 29, 2020<\/li>\n
    • US trademark: NOVARTIS, Reg No. 4986124Registration Date: June 28, 2016<\/li>\n
    • US trademark: NOVARTIS, Reg. No. 6990442, Registration Date: February 28, 2023<\/li>\n
    • EU trademark: NOVARTIS, Reg. No. 304857, Registration Date: June 25, 1999<\/li>\n<\/ul>\n

      The Complainant owns numerous domain names composed of either its trademark NOVARTIS alone, including <novartis.com> (created on 2 April 1996), <novartis.us> (created on 19 April 2002), <novartis.pk> (created on 7 August 2013) or in combination with other terms, such as <novartispharma.com> (created 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.<\/p>\n

      The Complainant also enjoys a strong presence online via its official social media platforms. Moreover, the Complainant uses multiple social media platforms under the name “Novartis Pakistan”.<\/p>", "decision_domains": { "novartispakistan.com": "TRANSFERRED" }, "panelist": null, "panellists_text": null }