The Complainant is Novartis AG of Basel, Switzerland, represented by Dreyfus & associés, France.
The Respondent is Seedy Loveth, ArtisNov Medical Chemical of Delhi, India / Privacy Protection Service INC d/b/a PrivacyP, Domain Admin of Nobby Beach, Queensland, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Shinjiru MSC Sdn Bhd (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 30, 2015. On October 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 3, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 4, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant submitted a request for suspension on November 6, 2015 and the Center sent a Notification of Suspension on the same date. On November 24, 2015, the Complainant submitted a request for the reinstitution of proceedings and simultaneously filed the Amended Complaint.
The Center verified that the Complaint together with the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 25, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 16, 2015.
The Center appointed William R. Towns as the sole panelist in this matter on December 23, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant, a leading global pharmaceutical company headquartered in Basil, Switzerland, is the owner of numerous registrations for the NOVARTIS trademark, including a Community Trade Mark for NOVARTIS registered on June 25, 1999, and international trademarks for NOVARTIS registered through the Madrid System on July 1, 1996, and October 31, 1996. The Respondent registered the disputed domain name on April 4, 2015. The disputed domain name currently resolves to a website on which it is represented among other things that the Respondent is a Nordo Nordisk company that has supplied materials to the medical industry for more than 65 years. 5. Parties' Contentions A. Complainant
The Complainant maintains that the disputed domain name is confusingly similar to its NOVARTIS mark. The Complainant asserts that the NOVARTIS mark is distinctive and well-known, and has been recognized as a well-known or famous mark by UDRP panels, citing Novartis Ag v. Susan Christensen,WIPO Case No. D2015-0476; Novartis AG v. Hka c/o Dynadot Privacy,WIPO Case No. D2014-1737; and Novartis AG v. Ancient Holdings, LLC, Wendy Webbe,WIPO Case No. D2014-1084. According to the Complainant, the disputed domain name is an inversion of the syllables "nov" and "artis" in NOVARTIS and imitates the Complainant's mark, and also is reproduced on the Respondent's website in images that associate "Artisnov" with the Complainant's logo.
The Complainant argues that the disputed domain name is a deliberate misspelling of the Complainant's NOVARTIS mark. According to the Complainant, the inversion of identical syllables in the Complainant's mark does not dispel similarity of the disputed domain name to the Complainant's mark. The Complainant cites Office for Harmonization in the Internal Market ("OHIM") and l'Institut National de la Propriete Industrielle ("INPI") decisions in support of this.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant avers that the Respondent has not been authorized to use the NOVARTIS mark and has not been commonly known by the name "Novartis". The Complainant argues that the similarity of the disputed domain name to the Complainant's famous NOVARTIS mark is such that no actual or contemplated legitimate use of the disputed domain name can credibly be claimed by the Respondent.
According to the Complainant, the Respondent's claim to be a division of Novo Nordisk, providing ingredients for the biopharmaceutical and pharmaceutical industries is a pretext. The Complainant submits evidence that the Respondent's website has been used for phishing attempts (bogus recruitment ads), and to solicit money laundering. The Complainant contends that the Respondent has neither used nor made demonstrable preparations to use the disputed domain name with a bona fide offering of goods or services, and is not making a fair use of the disputed domain name.
The Complainant argues that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that the Respondent clearly was aware of the Complainant when registering the disputed domain name, given the global reputation of the NOVARTIS mark. The Complainant maintains the Respondent's conspicuous use of the Complainant's logo on the Respondent's website, and the Respondent's use of a privacy shield to hide its true identity are evidence of bad faith registration.
The Complainant further urges that the Respondent is using the disputed domain name in bad faith. Given the Respondent's unauthorized use of the Complainant's well-known NOVARTIS mark, the Complainant submits that no actual or contemplated bona fide or legitimate use of the disputed domain could be claimed. The Complainant submits that the Respondent's bad faith is further reflected by the use of the disputed domain name with a fraudulent phishing scheme, which seeks to deceive Internet visitors into believing that they are dealing with the Complainant. In addition, the Complainant reiterates that the Respondent has represented on its website that it provides chemical products to "clean" banknotes, an obvious reference to money laundering. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use (see Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774). Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting" (see Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187; and Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170).
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing (see, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270). A. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is confusingly similar to the Complainant's NOVARTIS mark, in which the Complainant has demonstrated rights. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.
Applying this standard, the disputed domain name is confusingly similar to the Complainant's trademark NOVARTIS for purposes of the Policy. The disputed domain name is comprised of the same letters as the Complainant's mark – with "nov" and artis" inverted. The Panel finds that this inversion does not serve to distinguish the disputed domain name from the Complainant's NOVARTIS mark, particularly given that the Complainant's mark is well-known and, as other UDRP panels have held, has acquired a degree of fame.
Although the generic Top-Level Domain ("gTLD") may in appropriate circumstances be considered when evaluating identity or confusing similarity, gTLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant's mark and the disputed domain name (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374).
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel finds that the Complainant has made a prima facie showing. The Respondent, without the Complainant's authorization or consent, has registered a domain name that is confusingly similar to the Complainant's well-known NOVARTIS mark, and is using the disputed domain name with a website on which the disputed domain name is associated with the Complainant's logo, and pharmaceutical products calling to mind the Complainant purportedly are offered. Further there are indications of the operation of a fraudulent phishing scheme on the Respondent's website.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true (see Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the "safe harbors" of paragraph 4(c) of the Policy.
Based on the record in this proceeding the Panel considers it highly likely that the Respondent was aware of the Complainant and the Complainant's NOVARTIS mark when registering the disputed domain name. In the absence of any reply by the Respondent, the Panel concludes that the Respondent registered the disputed domain name in order to trade on the goodwill and reputation of the Complainant's well-known mark through the creation of Internet user confusion (see Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774).
Nothing in the record suggests that the Respondent chose the disputed domain name for reasons unrelated to the Complainant (see The American Automobile Association Inc. v. Private Whois Escrow Domains Private Limited / K.A.L Services,WIPO Case No. D2009-0822). To the contrary, in all likelihood the Respondent has intentionally targeted the Complainant's well-known NOVARTIS mark for mala fide purposes, including a fraudulent phishing scheme run from the Respondent's website. One of the most obvious indications of such targeting is a photograph on the Respondent's website of an office building on which "ARTISNOV" has been superimposed over "NOVARTIS", next to the Complainant's clearly recognizable logo.
The Panel finds nothing in the record that credibly reflects the Respondent's use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Nor does the record reflect that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers, or that the Respondent has been commonly known by the disputed domain name for purposes of paragraph 4(c)(ii) of the Policy.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another (see M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230).
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes for the reasons set forth above that the Respondent's primary motive in registering and using the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant's trademark rights, in order to intentionally attract Internet users to the Respondent's website, where, among other things, it appears that the Respondent has operated a phishing scheme.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: January 6, 2016
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2. .
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