The Complainant is Novartis AG of Basel, Switzerland, represented by Dreyfus & associés, France.
The Respondent is Hoang Le of Pasadena, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 21, 2016. On March 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 22, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 proceeding commenced on March 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 13, 2016.
The Center appointed George R. F. Souter as the sole panelist in this matter on April 20, 2016. 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 is a Swiss pharmaceutical company with a global reputation. Details of extensive registrations of its NOVARTIS trademark internationally, including International trademark NOVARTIS No. 663765 dated of July 1, 1996 (renewed), covering goods and services in classes 1, 2, 3, 4, 5, 7, 8, 9, 10, 14, 16, 17, 20, 22, 28, 29, 30, 31, 32, 40 and 42; have been supplied to the Panel, together with evidence of the well-known nature of the Complainant's NOVARTIS trademark.
The disputed domain name was registered on January 1, 2016. 5. Parties' Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to its NOVARTIS trademark, containing the NOVARTIS trademark in its entirety with the mere addition of the descriptive or non-distinctive element ".online".
The Complainant alleges that the Respondent is not affiliated with the Complainant in any way nor has he been authorized by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating said mark. Further, the Complainant alleges that the Respondent is not generally known by the disputed domain name, could not reasonably have been unaware of the Complainant's NOVARTIS trademark when he registered the disputed domain name, and lacks any rights or legitimate interests in the disputed domain name.
The Complainant alleges that the disputed domain name was registered in bad faith. Although the disputed domain name is not currently in use, it poses a direct threat to the Complainant's interests, and the Complainant has drawn the Panel's attention to the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and numerous subsequent UDRP cases in which panels have decided that passive holding of a disputed domain name can satisfy the requirements of paragraph 4(a)(iii) of the Policy, and that in such cases the UDRP panels must give close attention to all the circumstances of respondent's behaviour. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(i) the disputed domain name 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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is well established in decisions under the UDRP that generic Top-Level Domain ("gTLD") indicators (e.g., ".com", ".info", ".net", ".org") may typically be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name. The Panel agrees with this view and considers the gTLD indicator ".online" to be irrelevant in the present case.
In the Panel's opinion, the Complainant has demonstrated clear rights to its NOVARTIS trademark, and the Panel recognises it to be well known. The disputed domain name incorporates the Complainant's NOVARTIS trademark in its entirety, with the mere addition of the element ".online". The Panel is of the view that this addition is nothing more than a non-distinctive element. It is well-established in prior decisions under the UDRP that the mere addition of descriptive or non-distinctive element to a trademark in which a complainant has rights is insufficient to avoid a finding of confusing similarity. In the circumstances of the present case, ".online" is, in the Panel's opinion, clearly descriptive or non-distinctive.
The Panel, consequently, finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the present Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel regards the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity provided by this proceeding to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name, may lead, in appropriate circumstances, to a finding that a disputed domain name was registered in bad faith. The Panel regards the circumstances of the present case, in which the Complainants' well-known trademark was incorporated in its entirety, with no additions beyond a non-distinctive element and the legally irrelevant ".online" gTLD indicator, as sufficient for the Panel to find that the disputed domain name was registered in bad faith.
In connection with use in bad faith, the Panel agrees with the UDRP panel's reasoning in Telstra Corporation Limited v. Nuclear Marshmallows, supra and in the circumstances of the present case, can find no plausible alternative reason for the adoption of the disputed domain name to a deliberate attempt to illegitimately profit from the reputation of the Complainant's NOVARTIS trademark. Further, the Panel is convinced that the registration of the disputed domain name poses a real threat to the legitimate interests of the owner of the trademark NOVARTIS. The Panel, therefore, finds that the disputed domain name is being used in bad faith and that, accordingly, the Complainant has satisfied the dual 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.
George R. F. Souter
Sole Panelist
Date: May 11, 2016
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