1.1 The Complainant is Novartis AG, Switzerland, represented by BrandIT GmbH, Switzerland.
1.2 The Respondent is Contact Privacy Inc. Customer 1246111874, Canada / Andrew C. Sikula, Negotiation Matters Inc., United States of America (“United States”). 2. The Domain Name and Registrar
2.1 The disputed domain name 3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2020. On July 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 4, 2020, 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 3.2 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”). 3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 7, 2020. 3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on August 13, 2020. 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. 3.5 On August 19, 2020, the Panel issued Procedural Order No. 1 directed to the Complainant requiring it to provide certain documents related to previous UDRP proceedings in relation to the Domain Name. 4. Factual Background 4.1 The Complaint is a refiling of a UDRP complaint first filed at the Czech Arbitration Court (the “CAC Proceedings”). The Complainant’s complaint in those proceedings was rejected, as is recorded in Novartis AG v Negotiation Matters Inc, CAC case ADR 103013 (the “CAC Decision”). 4.2 The Complainant is incorporated in Switzerland and is the holding company of the Novartis group, one of the world’s largest pharmaceutical and healthcare groups. It was created in 1996 through a merger of Ciba-Geigy and Sandoz. In 2019, 34% of the Novartis group’s net sales were in the United States. 4.3 The Complainant is the owner of numerous trade marks around the world that comprise or incorporate the word “Novartis”. They include: (i) United States registered trade mark No. 5420583, registered on March 13, 2018 in classes 9, 10, 41, 42, 44, and 45, for NOVARTIS as a standard character mark; and (ii) United States registered trade mark No. 2997235, registered on September 20, 2005 in class 5 for NOVARTIS as a standard character mark. 4.4 The Complainant also owns and operates numerous domain names that incorporate the term “Novartis”, both in combination with various country code Top-Level Domains (“ccTLDs”) and generic Top-Level Domains (“gTLDs”) (for example, 4.5 The Domain Name was first registered on December 20, 2019. The Complainant sent a cease-and-desist letter to the Respondent on December 30, 2019, followed by a reminder on January 16, 2020. At that time the Domain Name was registered using a privacy shield, but Drew Sikula of the Respondent responded to these letters on January 20 2020, claiming that the Respondent was a “developing venture” which “aimed at providing news reporting, comment, and, in some cases, criticism about companies known to, and important to, American consumers and the global marketplace”. 4.6 According to the CAC Decision, in correspondence that followed between the parties, the Respondent offered either to sell the Domain Name to the Complainant for out of pocket expenses or to let the Domain Name expire. So far as expenses was concerned it sought US “$12, plus attorney’s fees”. The Complainant’s position was that it would only pay the registration costs. Whether because of this or otherwise, it would appear that Mr Drew’s response was as follows: “Per my original reply, I am willing to entertain transferring the domain to you if and when I decide not to use for my legitimate purposes. As I have not made that decision, I am not ready to transfer the domain at this time.” 4.7 By at least April 2020, the Domain Name was being used to redirect internet users to a website operating from “www.globalpodcast.com”. The website promoted, hosted and shared interviews conducted by Mr. Sikula, including with various persons in the world of business. 4.8 On April 14, 2020, the Complainant commenced the CAC Proceedings. The CAC Decision rejecting the Complainant’s complaint was issued on May 26, 2010. The Panel will address the reasoning in the CAC Decision in greater detail in this decision, but in essence the CAC panel concluded as follows: (i) The Domain Name was confusingly similar to the Complainant’s NOVARTIS trade mark; (ii) The Domain Name was being used to redirect internet users to a website where the Respondent “include[d] content about the Complainant and its business activities and performance”; (iii) The Respondent’s use of the Complainant’s mark in the Domain Name was “nominative use” which the panel characterised as an “‘about’ site” and akin to a criticism site. The CAC panel also concluded that the word “podcast” “militates against any attempt to impersonate the Complainant and signalling that the site is informational and about the Complainant”. (iv) Given this the panel concluded that the Respondent had a right or legitimate interest in the Domain Name and consequentially that the Domain Name had not been registered and used in bad faith. It also appears that in coming to that conclusion the panel considered that the correspondence between the Complainant and the Respondent was not particularly significant and also expressed concern that it had been provided with the Complainant’s description of that correspondence and not the correspondence itself. 4.9 As at the date that the present proceedings were filed with the Center (i.e., July 2, 2020) the website operating from the url “www.globalpodcast.com” contained no content related to the Complainant. As at the date of this decision, that remains the case. 5. Parties’ Contentions A. Complainant 5.1 The Complainant refers to the fact that the WhoIs record identifies the registrant of the Domain Name to be a privacy service but identifies Negotiation Matters Inc. as the Respondent on the basis of details provided by the Registrar in the course of the CAC Proceedings. 5.2 The Complainant acknowledges that these proceedings filed with the Center constitute a refiled complaint, but gives a number of reasons why it contends this is legitimate. These reasons are addressed in greater detail later on in this decision. However, in essence the Complainant contends that the reasons relied upon by the CAC panel in coming to its conclusion were not known or available to the Complainant at the time the Complaint in the CAC Proceedings was filed and further facts have come to its attention that justify a refiling. 5.3 So far as the substantive reasons for the present Complaint are concerned, the Complainant refers to its business and marks and refers to a previous UDRP decisions in which the Complainant’s trade mark was accepted to be well-known. The Complainant also refers to is online activities and claims to be “active in exploiting podcast tools on its official website”. In support of that contention it provides a print out of a page from its website operating from the 5.4 The Complainant contends that the Domain Name is confusingly similar to its NOVARTIS trade mark. It also claims so far as rights and legitimate interests are concerned that both at the time that it filed the CAC Complaint and after the CAC Decision, the Domain Name was not being used to display information about the Complainant. It contends that the only way that these facts can be reconciled with the CAC Decision is that the content on the website was temporarily changed by the Respondent at the time the CAC Decision was being prepared, in order to support contentions of fair use in those proceedings rather than due to any genuine intention to us the Domain Name for this purpose. This is said to demonstrate a lack of a right or legitimate interest for the purposes of the Policy. 5.5 The Complainant further contends that the use here is not akin to a protest site where the domain name signals the nature of the site concerned. In this respect it quotes the following passage from the decision Banque Cantonale de Geneva v. Primatex Group S.A.,WIPO Case No. D2001-0477: “it is the Panel’s belief that protest disseminated through the powerful tools of the Internet is only legitimate if the protest is transparent. Transparency starts with choosing a domain name which reflects the protest as opposed to a domain name which implies an affiliation to the trademark holder. If the protest is reflected in the domain name (for instance by adding the component ‘...sucks’ or a similar element), Internet users have a choice to follow or not to follow the link. Otherwise, they may be misled.” 5.6 Further, the Complainant contends that the reality here is that the Respondent has deliberately exploited the reputation of the Complainant’s NOVARTIS trade mark as the central component of the Domain Name, to attract and mislead consumers as to the source or sponsorship of the podcast service in the Respondent’s website. 5.7 The Complainant further contends that the use made of the Domain Name by the Respondent is commercial and refers to sections of the website that suggest that contributors of content to the website can earn a percentage of the revenue generated. 5.8 The Complainant also alleges that the use made of the Domain Name supports findings of bad faith registration and use and that in particular the Domain Name is being used in a manner that falls within the scope of paragraph 4(b)(iv) of the Policy. B. Respondent 5.9 The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response. 6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that: (i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and (iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)). 6.3 However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”. 6.4 The Panel will address each aspect of the Policy in turn. But before doing so it is necessary to address the fact that this is a refiled complaint and whether as a consequence it is appropriate for the Panel to proceed to issue a decision in this case. A. Should the Complainant be allowed to proceed with a refiled Complaint? 6.5 As this decision goes on to address, the Panel disagrees with the conclusions of the CAC panel even on the basis of the material that was apparently before that panel. However, that is not a reason for allowing these proceedings to continue. That panels may disagree is not a good reason to allow a refiling. If it were, that would amount to an open invitation to complainants to repeatedly refile complaints for no other reason that it might find a panelist more sympathetic to its position and thereby undermine the integrity of the operation of the Policy. 6.6 Given this, the general approach of panelists has been to only allow a refiling in exceptional circumstances. The issue is addressed in section 4.18 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) which states: “Panels have accepted refiled complaints only in highly limited circumstances such as (i) when the complainant establishes that legally relevant developments have occurred since the original UDRP decision, (ii) a breach of natural justice or of due process has objectively occurred, (iii) where serious misconduct in the original case (such as perjured evidence) that influenced the outcome is subsequently identified, (iv) where new material evidence that was reasonably unavailable to the complainant during the original case is presented, or (v) where the case has previously been decided (including termination orders) expressly on a ‘without prejudice’ basis. 6.7 In the present case, the Complainant contends that there is new material evidence that was reasonably unavailable to the Complainant (and panelist) during the original case. This evidence is said to be that after it filed a complaint in the CAC Proceedings and before the CAC Decision was issued, the website operating from the Domain Name changed so as to display some content related to the Complainant that had not previously been there –, and that after the CAC Decision the website was changed yet again back to its original form. 6.8 The Panel accepts that the change in the content of the website after the CAC Decision was published amounts to new material evidence. This new material is highly relevant to, and calls into question, the factual conclusions of the panel in the CAC Decision as to for what reasons the Domain Name was registered. 6.9 That is sufficient to justify this refiling. But the Panel is also concerned that there appears to have been a breach of natural justice which would also justify a refiling. 6.10 The Panel is conscious that it does not have the benefit of having access to the full record of the CAC Proceedings. But in response to Procedural Order No. 1, the Complainant has provided the Panel with a copy of the Complaint and Response filed in the CAC Proceedings. In light of this, what appears to have occurred is as follows: (i) At the time the complaint was filed in the CAC Proceedings, there was a podcast website operating from Domain Name, and a screenshot of that website was provided by the Complainant. That screenshot did not show any material related to the Complainant (and in the Complaint the Complainant has now further confirmed that, having conducted searches, there was no such material at that time). (ii) The response filed in the CAC Proceedings was sketchy at best. It comprised a pro forma document into which had been inserted the following text: “Freedom of speech as detailed in my original response to the Complaintant [sic]. (iii) This response did not suggest that the Domain Name was already being used in this fashion and did not attach any website screenshots. Instead, it attached copies of a letter sent to the Complainant’s lawyers on January 20, 2020, in which it stated: “The Company is a new and developing venture which is aimed at providing news reporting, comment, and, in some cases, criticism about companies known to, and important to, American consumers and the global marketplace. As you are likely aware, the [sic] these type of activities are decidedly ‘lawful’ uses of trademarks in connection with domain names. See House Judiciary Committee Report on H.R. 3028, H.R. Rep. No. 106-412 p. 11 (Oct. 25, 1999); Congressional Record, p. S14713 (Nov. 17, 1999). Indeed, the Company considers its activities to be an important part of an open and transparent discourse for consumers under the First Amendment.” (iv) Notwithstanding (i) to (iii) above, the panel in the CAC Proceedings was of the view that the Domain Name was being used in connection with a website where actual material related to the Complainant was displayed. This is the only sensible reading of the final paragraph of the “Factual Background” section of the CAC Decision. It is not clear what form this material took as this is not further explained in the CAC Decision. But the panel in the CAC Decision must have based this conclusion on something. Accordingly, the Panel accepts the Complainant’s contention that the only sensible explanation is that the Respondent added material about the Complainant and that the panel in the CAC Decision then independently viewed this material and was influenced by it in coming to its decision. 6.11 There is nothing improper in the CAC panel having independently considered what appears on the website operating from the Domain Name. Section 4.8 of the WIPO Overview 3.0 states under the heading “May a panel perform independent research in assessing the case merits?”: “Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name, consulting historical resources such as the Internet Archive (“www.archive.org”) in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias (e.g., Wikipedia), or accessing trademark registration databases. In some circumstances, a panel may also rely on personal knowledge (e.g., to take ‘judicial notice’ of the reputation of a well-known mark, or a corporate affiliation/structure).” 6.12 The difficulty arises out of the question of what a panel should do where, as appears to have happened here, it discovers material of relevance that is not in the parties’ submissions. Section 4.8 of the WIPO Overview 3.0 partly addresses this by also stating that: “Where a panel intends to rely on information outside the pleadings, in certain limited scenarios, e.g., where such information may not be general public knowledge or at least readily accessible, it may consider issuing a procedural order to give the parties an opportunity to comment on such information as it relates to the proceedings.” 6.13 The Panel would express matters somewhat differently. It is of the opinion that, in those cases where the new material is either determinative of, or significantly impacts upon, the outcome of proceedings under the Policy, then as a matter of course the panel should bring this to the parties’ attention and in the case of any party whose case is adversely affected by that material, give it an opportunity to make further submissions in this respect. 6.14 This appears not to have happened in the CAC Proceedings. There is certainly no record in the CAC Decision of the CAC panel having issued any procedural order in that case or otherwise notifying the Complainant of its intentions to rely on evidence that was not in the parties’ submissions. The Panel considers it to have been unfair to the Complainant that it did not. It is perhaps unlikely that at that stage the Complainant could have advanced evidence to suggest that the material now appearing on the website was not genuine, but it should have had an opportunity to do so. Further, and perhaps more importantly, unbeknownst to the Complainant it was now facing a very different factual case than that which it thought it was addressing when the complaint was filed, or even after the response had been submitted. The failure is one that independently justifies a refiling in this case. B. Identical or Confusingly Similar 6.15 The CAC Decision concluded that the Domain Name is confusingly similar to the Complainant’s NOVARTIS marks. The Panel agrees. The Complainant clearly has registered trade mark rights in the term NOVARTIS and the only sensible reading of the Domain Name is as the term “Novartis” combined with the word “podcast” and the “.com” gTLD. The Complainant’s mark is clearly recognisable in the Domain Name (see section 1.7 of the WIPO Overview 3.0). The Complainant has therefore satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests 6.16 The panel in the CAC Proceedings concluded that this was a case of “nominative use” involving issues of free speech and criticism, which provided the Respondent with a right or legitimate interest. 6.17 In coming to its conclusion, the CAC panel thought it necessary to “consider for example if a company can stop a newspaper or TV station reporting on a company’s business performance by claiming trade mark infringement when its name is used”, asserting that the CAC Proceedings involved the “same scenario”. However, this statement is problematic on a number of levels. First, although trade mark principles often inform decisions under the Policy, proceedings under the Policy do not involve an assessment of trade mark infringement. Second, a newspaper or a television station’s reporting provides a very poor analogy to, let alone the “same scenario” as, the question of whether a domain name that incorporates the trade mark of another provides a legitimate interest. A newspaper or a television station would not adopt or co-opt the name of another company to report on that company. 6.18 So far as criticism and free speech are concerned, the issue of whether and in what circumstances a domain name incorporating the trade mark of another in respect of a site used to criticise the trade mark owner is addressed in sections 2.5.1 and 2.6 of the WIPO Overview 3.0. Here a distinction is made between the situation where the domain name takes the form <[trade mark].[gTLD]> and where the domain name takes the form, for example <[trade mark]-[derogatory term].[gTLD]> and inherently signals to the internet user the nature of the material that is likely to appear on the associated website. In the former case (subject to a caveat which as this decision goes on to address may now be historic), panelists have generally concluded that there is no right or legitimate interest, but in the latter one may exist. 6.19 Where the additional word added to the trade mark is not derogatory the position is more nuanced and will depend upon the word chosen and the broader circumstances of the case. For example in Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign,WIPO Case No. D2004-0206, the addition of the word “campaign” to a trade mark was considered to be a sufficient modifier in that case. In contrast, as is recorded in section 2.5.1 of the WIPO Overview 3.0, geographical terms generally are not. 6.20 In the present case the Panel is of the view that the word “podcast” does not sufficiently indicate that this is unlikely to be a domain name authorised or being used by the Complainant. The CAC Decision states that “The addition of podcast signals that the Respondent’s site is ‘about’ the Complainant –to avoid impersonation or confusion”. The Panel agrees with the first part of that sentence, but the second part of the sentence does not necessarily follow. This is particularly so given that the Complainant uses in connection with its business domain names such as 6.21 For these reasons the Panel is of the view that the Domain Name involves an impermissible impersonation of the Complainant and as a consequence the Respondent does not have a right or legitimate interest in the Domain Name for the purposes of the Policy. 6.22 As the Panel has already stated, section 2.6 of the WIPO Overview 3.0 contains a caveat. This records that some (but not all) United States based panelists had previously been prepared where both parties are based in the United States to adopt a more liberal approach to the use of the trade mark of another on free speech grounds. Since this edition of the overview was published, matters appear to have moved on such that there may no longer be any separate United States view of significance. In this respect, see for example, Dover Downs Gaming & Entertainment, Inc. v. Domains By Proxy, LLC / Harold Carter Jr, Purlin Pal LLC, Case No. D2019-0633, where the domain name took the form <[trade mark]news.com>. But there are at least three reasons why even this more liberal view does not assist the Respondent in this case. 6.23 The first is that this is not a case where both parties are located in the United States. The Complainant did admittedly rely upon the fact that a large percentage of its business takes place in the United States, but the Complainant is nevertheless a Swiss company and the Complainant’s activities in the United States were not advanced by the CAC panel as a reason for adopting this approach in the CAC Decision. 6.24 The second is that to rely upon this exception, the criticism generally has to be noncommercial. As is recorded in section 2.6.3 of the WIPO Overview 3.0 “some panels have found in such cases that a limited degree of incidental commercial activity may be permissible” particularly where this is intended to offset registration or hosting costs. But it is clear that the commercial activity is anything other than incidental so far as the use of the Domain Name is concerned. The Panel accepts the Complainant’s contentions that the Respondent is running a podcast or webcast business. 6.25 Third, and perhaps more fundamentally, and regardless of exactly what the CAC panel saw, it is clear that there was a mixture of content displayed on the website operating from the Domain Name (or to which the Domain Name redirected internet users) and that this content extended to podcasts or webcasts that covered companies and businesses other than the Complainant. This is apparent from the statement in the Factual Background section of the CAC Decision that the website “include[d] content about the Complainant and its business activities and performance”. Webcasts related to companies and business other than the Complainant continue to be made available on the website to this day. 6.26 Even if there is a legitimate interest in using a domain name that incorporates the trade mark of another to report upon the trade mark owners activities, it does not follow that it can also be used to promote news stories related to other companies. It is noticeable that the CAC Decision cites no UDRP cases that suggests this is legitimate and this Panel is not aware of any. It is also at odds with the case law in reseller cases with which the Panel suggested in Johnson & Johnson v. Ebubekir Ozdogan,WIPO Case No. D2015-1031, an analogy could and should be drawn. In such cases there can be no legitimate interest unless the reseller used the domain name incorporating the trade mark of another, only to trade in the trade mark owners goods (see section 2.8.1 of the Overview). If other goods are on sale, the domain name owner is unfairly taking advantage of the reputation of the trade mark to sell those other goods. There is no legitimate interest in a domain name being used for this purpose. Similarly, there cannot be a right or legitimate interest in using a domain name that incorporates a trade mark of one business to draw internet users to a site that provides extensive information about other businesses. 6.27 In justifying its approach the panel in the CAC Decision also refers to the discussion of criticism cases to be found in Bettinger Domain Name Law and Practice, Second Edition at pp.1398-1399 paragraph IIIE.334.-339. This text book predated the WIPO Overview 3.0 and therefore primarily comprises a consideration of a “first view” and “second view” regarding criticism cases to be found in section 2.4 of the second edition of the Overview – now overtaken. This textbook then posits a “third line of case interpretation” where the panels engaged in a “detailed account of all the relevant facts and circumstances”. The CAC panel states that it prefers this third approach and has adopted it. However, there is little evidence in the CAC Decision that it has actually done so. For example, there is no discussion and consideration of the fact that information about the Complainant is only a subset of the material available on the website to which the Domain Name diverts internet users. 6.28 There is also now the evidence of the Complainant, unavailable it would appear in the CAC Proceedings, that insofar as the Respondent ever provided information related to the Complainant it was a mere subset of other content on the webpage and that information appeared for a very short time and that it was removed after the CAC Decision. The Complainant contends that this material was pretextual and did not reflect the Respondent’s true intentions when registering and holding the Domain Name. The Panel agrees with this. 6.29 For all these reasons the Panel is of the view that Respondent does not have rights or legitimate interests in the Domain Name. 6.30 It follows that the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith 6.31 In light of the analysis set out above in relation to rights and legitimate interest, the issue of bad faith can be dealt with more rapidly. 6.32 There is no doubt that the Domain Name was chosen because of its associations with the Complainant and to draw internet users to the Respondent’s website. Further, the Panel has already concluded that the Domain Name did not sufficiently signal to internet users that it was not operated or authorised by the Complainant, that the website was a commercial one that provided information and commentary about companies other than the Complainant, and that even the information provided in relation to the Complainant was temporary and pretextual and did not reflect the Respondent’s real intentions. Given this the Panel concludes that the Domain Name was registered and used in order to use the reputation of the Complainant’s business and trade marks to draw internet users to content created by the Respondent that was unrelated to the Complainant’s business. It follows from this that the Domain Name was registered and used in bad faith and the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision 7.1 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 Matthew S. Harris
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In certain highly limited circumstances (such as where a panel found the evidence in a case to be finely balanced, and opined that it may be possible for future respondent behavior to cast a different light on a panel’s assessment of bad faith), a panel may record in its decision that in the event certain conditions would be met, acceptance of a refiled complaint may be justified. The extent to which any such conditions have been met would bear on determining whether a refiled complaint should be accepted prima facie by the provider, and subsequently by the panel.”
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Novartispodcast.com is designated to be a forum for the public to review and provide feedback on the company in a new message board style interface which is being developed.”
Sole Panelist
Date: August 27, 2020
Full & Egal Universal Law Academy