Novartis AG v. Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf
Claim Number: FA2303002036002
Complainant is Novartis AG ("Complainant"), Switzerland, represented by Elena Zubenko of BRANDIT GmbH, Switzerland. Respondent is Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf ("Respondent"), Iceland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <novartis.us.com>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainant participated in the mandatory CentralNic Mediation, and the mediation process was terminated on March 14, 2023.
Complainant submitted a Complaint to Forum electronically on March 16, 2023; Forum received payment on March 16, 2023.
On March 17, 2023, NameCheap, Inc. confirmed by email to Forum that the <novartis.us.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the "CDRP Policy").
On March 21, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 2023 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@novartis.us.com. Also on March 21, 2023, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On April 14, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the CDRP Dispute Resolution Policy ("Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the CDRP Policy, CDRP Rules, Forum's Supplemental Rules, and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a global pharmaceutical and healthcare group with headquarters in Switzerland. Its products are manufactured and sold in many countries worldwide including in the United States, where Complainant has an active presence through subsidiaries and associated companies. Complainant uses the NOVARTIS mark in connection with various goods and services and owns longstanding trademark registrations for NOVARTIS in the United States and other jurisdictions.
The disputed domain name <novartis.us.com> was registered in October 2022. The domain name is registered in the name of Respondent, a privacy registration service that is holding the registration to shield the identity of the beneficial owner. The domain name does not resolve to a website; it previously displayed a registrar-hosted parking page composed of pay-per-click links. Complainant alleges states that the domain name has been used to impersonate an employee of Complainant in email messages to conduct a fraudulent phishing scheme, and provides supporting evidence to substantiate that allegation. Complainant states that Respondent is not commonly known by the domain name, has no relationship with Complainant, and is not authorized to use Complainant's mark.
Complainant contends on the above grounds that the disputed domain name <novartis.us.com> is identical or confusingly similar to its NOVARTIS mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
The CDRP Policy also requires that Complainant have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy ("UDRP") and the CDRP Policy, the Panel will draw upon UDRP principles as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a), and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <novartis.us.com> incorporates Complainant's registered NOVARTIS trademark, adding the ".us" second-level domain and the ".com" top-level domain. Such additions are normally disregarded for purposes of assessing identicality or confusing similarity under paragraph 4(a)(i) of the CDRP Policy. See, e.g., Woot LLC v. Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf, FA 2026096 (Forum Feb. 7, 2023) (finding <woot.us.com> confusingly similar to WOOT); Bunge Ltd., Bunge SA & Bunge Asia Pte. Ltd v. Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf, FA 1993197 (Forum June 6, 2022) (finding <bunge.us.com> identical to BUNGE); Teva Pharmaceutical Industries Ltd. v. Withheld for Privacy Purposes / Privacy service provided by Withheld for Privacy ehf, FA 1973413 (Forum Dec. 16, 2021) (finding <tevapharm.us.com> confusingly similar to TEVA); Novartis AG v. Gueorgui Dimitrov, Netart, D2020-2144 (WIPO Oct. 7, 2020) (finding <novartis.pro> identical or confusingly similar to NOVARTIS). The Panel considers the disputed domain name to be identical to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and its sole apparent use has been in connection with a fraudulent phishing scheme. Such use does not give rise to rights or legitimate interests under the CDRP Policy. See, e.g., Bunge Ltd., Bunge SA & Bunge Asia Pte. Ltd v. Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf, supra (finding lack of rights or interests in similar circumstances); Teva Pharmaceutical Industries Ltd. v. Withheld for Privacy Purposes / Privacy service provided by Withheld for Privacy ehf, supra (same); Novartis AG v. Javapolis, Brian, FA 1543982 (Forum Mar. 14, 2014) (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the CDRP Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent used a privacy registration service to register a domain name corresponding to Complainant's registered mark, and is using the domain name to impersonate Complainant and conduct a fraudulent phishing scheme. Such circumstances are indicative of bad faith registration and use under the CDRP Policy. See, e.g., Bunge Ltd., Bunge SA & Bunge Asia Pte. Ltd v. Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf, supra (finding bad faith registration and use in similar circumstances); Teva Pharmaceutical Industries Ltd. v. Withheld for Privacy Purposes / Privacy service provided by Withheld for Privacy ehf, supra (same); Novartis AG v. Javapolis, Brian, supra (same). The Panel so finds.
Having considered the three elements required under the CDRP Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <novartis.us.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: April 15, 2023
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