Complainant is Novartis AG, Switzerland, represented by Inttl Advocare, India.
Respondents are Amartya Sinha, Global Webs Link (“Respondent No. 1”) and Novartis RO, India (“Respondent No. 2”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2020. On November 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 1, 2020, 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 Complainant on December 15, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 19, 2020. 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 Respondents of the Complaint, and the proceedings commenced on January 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2021. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on February 5, 2021. The Center appointed Stephanie G. Hartung as the sole panelist in this matter on February 26, 2021. 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 Complainant is a company organized under the laws of Switzerland that is active in the healthcare industry and specialized in innovation through the research and development of products designed to improve the health and well-being of patients worldwide. Complainant has provided evidence that it is the registered owner of numerous trademarks worldwide relating to its company name and brand “Novartis”, including the following with protection for the territory of India: - Word mark NOVARTIS, Intellectual Property (IP) India, registration number: 283971, - Word mark NOVARTIS, Intellectual Property (IP) India, registration number: 273273, Moreover, Complainant has demonstrated to own, inter alia, the domain name Respondent No.1, according to the disclosed WhoIs information for the disputed domain name, is domiciled in India who registered the disputed domain name on March 24, 2011. By the time of the rendering of this decision, the disputed domain name resolves to a website by Respondent No. 2 at “www.novartisro.com” which is headed “NOVARTIS Drinking Water Systems” and offers innovative healthcare products such as water purifiers. Complainant requests, inter alia, that the disputed domain name be transferred to Complainant. 5. Parties’ Contentions A. Complainant Complainant contends that it coined and adopted the fanciful trademark NOVARTIS, which is not used in common language and does not find any place in any dictionary, already back in 1996 and started using it e.g. in India already back in 1997. Due to its extensive use worldwide, including in India, considerable reputation and goodwill has been built ever since into Complainant’s NOVARTIS trademark which nowadays must be considered well-known throughout the world. Complainant submits that the disputed domain name is at least confusingly similar to Complainant’s NOVARTIS trademark as it adopts the latter in its entirety. Moreover, Complainant asserts that Respondents have no rights or legitimate interests in respect of the disputed domain name since (1) Respondent No. 1 has registered the disputed domain name in the absence of any business connection with, or approval or consent by Complainant, and (2) Respondents apparently registered and started using the disputed domain name with the intent for wrongful commercial gain and to misleadingly divert consumers. Finally, Complainant asserts that Respondents have registered and are using the disputed domain name in bad faith since (1) Respondents are intentionally and methodically attempting to confuse and deceive consumers at the expense of Complainant, and (2) Respondents knew or ought to have been aware of the well-known trademark NOVARTIS by the time of registration of the disputed domain name. B. Respondents Respondents did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, Complainant carries the burden of proving: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and Respondents default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondents do not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondents’ failure to submit a Response as it considers appropriate. A. Consolidation As a procedural comment, given that Respondent No. 1 apparently is the registered owner of the disputed domain name while Respondent No. 2 is using it to run a website thereunder, it is reasonable to argue that the disputed domain name is subject to common control which is why it is fair and equitable to all parties that this Complaint is consolidated against multiple respondents at the same time (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2). B. Identical or Confusingly Similar The Panel concludes that the disputed domain name is confusingly similar to the NOVARTIS trademark in which Complainant has rights. The disputed domain name incorporates the NOVARTIS trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among UDRP panels (see WIPO Overview 3.0, section 1.8), that the addition of other terms (whether e.g. descriptive, geographic or otherwise) would not prevent the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the term/acronym “ro” does not dispel the confusing similarity arising from the incorporation of Complainant’s NOVARTIS trademark in the disputed domain name. Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i). C. Rights or Legitimate Interests The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondents have not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor have Respondents been commonly known by the disputed domain name, nor can it be found that Respondents have made a legitimate noncommercial or fair use thereof without intent for commercial gain. Respondents have neither been granted a license nor have they been otherwise authorized by Complainant to use its NOVARTIS trademark, either as a domain name or in any other way. Also, in the absence of e.g. any lawful imprint or the like on the website under the disputed domain name and in light of the case file, there is no justified reason to believe that Respondents’ names somehow correspond with the disputed domain name, and Respondents do not appear to have any trademark rights associated with the invented term “Novartis” on their own. Finally, the disputed domain name resolves to a commercially active website at “www.novartisro.com” which offers products and services in the healthcare industry which are at least confusingly similar to those offered by Complainant, and thereby prominently displays as a logo the same invented word “Novartis” as it is reflected in Complainant’s well-known NOVARTIS trademark. Such use of the disputed domain name neither qualifies as bona fide nor as legitimate noncommercial or fair within the meaning of paragraph 4(c) of the Policy. Accordingly, Complainant has established a prima facie case that Respondents have no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondents to come forward with appropriate evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondents have defaulted, they have not met that burden. The Panel, therefore, finds that Respondents have no rights or legitimate interests in respect of the disputed domain name, and that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. D. Registered and Used in Bad Faith The Panel finally holds that the disputed domain name was registered and is being used by Respondents in bad faith. The circumstances to this case leave little, if no doubt that Respondents were fully aware of Complainant’s business and its rights in the NOVARTIS trademark (notwithstanding the claimed reputation of this trademark worldwide) when registering the disputed domain name and that the latter clearly is directed thereto. Moreover, using the disputed domain name to run a website offering services that are at least confusingly similar to those of Complainant, and thereby prominently displaying as a logo the same invented word “Novartis” as it is reflected in Complainant’s NOVARTIS trademark, is a clear indication that Respondents intentionally attempted to attract, for commercial gain, Internet users to their own website by creating a likelihood of confusing with Complainant’s NOVARTIS trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. As a general comment, the Panel has certainly noted that the disputed domain name was registered already back in March 2011; however, at this point of time, Complainant enjoyed registered rights in its NOVARTIS trademark already for several years and had already built up substantial reputation and fame therein throughout the world. Accordingly, given the timing of the registration of Complainant’s NOVARTIS trademark and – yet much later – the disputed domain name, there is no reason for this Panel not to find that Respondents acted in bad faith. Therefore, the Panel concludes that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii). 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 Stephanie G. Hartung
registration date: December 29, 2003, status: active;
registration date: November 5, 2003, status: active.
(ii) that Respondents have no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Sole Panelist
Date: March 10, 2021
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