ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Novartis AG v. 陈涵 (Chen Han), 海南趣够科技有限公司 (Hai Nan Qu Gou Ke Ji You Xian Gong Si); 谢瑶 (Xie Yao), 深圳星芒互联科技有限公司 (Shen Zhen Xing Mang Hu Lian Ke Ji You Xian Gong Si); 王杰 (Wang Jie), 西安远景网络科技有限公司 (Xi An Yuan Jing Wang Luo Ke Ji You Xian Gong Si); 林晟 (lin cheng) Case No. D2024-5053 1. The Parties The Complainant is Novartis AG, Switzerland, represented by MSA IP, Milojevic Sekulic & Associates, Serbia. The Respondents are 陈涵 (Chen Han), 海南趣够科技有限公司 (Hai Nan Qu Gou Ke Ji You Xian Gong Si), China (the “First Respondent”); 谢瑶 (Xie Yao), 深圳星芒互联科技有限公司 (Shen Zhen Xing Mang Hu Lian Ke Ji You Xian Gong Si), China (the “Second Respondent”); 王杰 (Wang Jie), 西安远景网络科技有限公司 (Xi An Yuan Jing Wang Luo Ke Ji You Xian Gong Si), China (the “Third Respondent”), 林晟 (lin cheng), China (the “Fourth Respondent”). 2. The Domain Names and Registrar The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , ,
page 2 , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and are registered with DNSPod, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2024. On December 9, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 10, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondents (Hai Nan Qu Gou Ke Ji You Xian Gong Si/Shen Zhen Xing Mang Hu Lian Ke Ji You Xian Gong Si/Xi An Yuan Jing Wang Luo Ke Ji You Xian Gong Si/TencentCloud) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 11, 2024 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrar, requesting the Complainant to either file separate complaint(s) for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all disputed domain names are under common control. The Complainant filed an amended Complaint in English on December 16, 2024. On December 11, 2024, the Center informed the Parties in Chinese and English, that the language of the Registration Agreements for the disputed domain names is Chinese. On December 13, 2024, the Complainant confirmed its request English to be the language of the proceeding. The Respondents did not submit any comment on the Complainant’s submission. 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 Respondents in English and Chinese of the Complaint, and the proceedings commenced on December 18, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2025. The Third Respondent sent an email communication in English to the Center on December 23, 2024 expressing its willingness to settle the disputes regarding the disputed domain names and . The Center sent an email communication regarding the possible settlement to the Parties on the same day. On December 30, 2024, the Complainant requested to continue the proceedings. The Center informed the Parties of the commencement of the panel appointment process on January 8, 2025. The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on January 13, 2025. 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.
page 3 4. Factual Background The Complainant was formed in 1996 by the merger of Swiss pharmaceutical companies Ciba-Geigy and Sandoz, and is a Swiss company specializing in the development of pharmaceutical products. The Complainant has more than 380 operating sites around the world, including more than fifty production sites worldwide and Research and Development (R&D) facilities in the United States of America, Europe, and Asia. The Complainant’s medicines treat major diseases, and one such type of medication is ofatumumab, offered under the brand name KESIMPTA, which treats relapsing forms of multiple sclerosis and another of such types of medication is ribociclib, sold under the brand name KISQALI, used for the treatment of certain kinds of breast cancer. The Complainant possesses a large international trademark portfolio, including for the marks KESIMPTA and KISQALI, including but not limited to the following trademark registrations: International Trademark Registration No. 1390984 for KESIMPTA, registered on January 15, 2018, designating, inter alia, China; Swiss Trademark Registration No. 711875 for KESIMPTA, registered on January 15, 2018; International Trademark Registration No. 1226294 for KISQALI, registered on October 2, 2014, designating, inter alia, China; and Swiss Trademark Registration No. 664399 for KISQALI, registered on October 2, 2014. The Complainant also has a strong online presence and owns an extensive domain name portfolio including many domain names which incorporate its KESIMPTA and KISQALI trademarks, such as and . The disputed domain names were all registered between March 11, 2024, and September 29, 2024 and were therefore registered on a later date than the date of registration of the Complainant’s trademarks. The Complainant provides evidence that the disputed domain names all direct to active websites with a very similar dark blue layout, displaying what are presumed to be pay-per-click (“PPC”) links to a variety of products and services (some of which are in the pharmaceutical sector), except for disputed domain names , which directs to an inactive webpage, and , which directs to an active website containing what are presumed to be PPC links, but which has a different layout. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names. Notably, the Complainant contends that the disputed domain names are identical or confusingly similar to its registered trademarks, since the disputed domain names incorporate the Complainant’s highly distinctive trademarks KESIMPTA and KISQALI (or variations thereof), on their own or in combination with various numbers, letters or generic or geographical terms (such as “best”, “first”, “cost”, “new” “medication”, “price”, “usa”, “uses”, etc.), or a combination thereof, within various generic Top-Level Domains (“gTLDs”) including “.online”, “.site”, “.asia”, “.xyz”, “.fun”, and “.store”. The Complainant contends that the Respondents are not licensees of the Complainant, nor are the Respondents otherwise entitled or authorized to use the Complainant’s trademarks KESIMPTA and KISQALI for any purpose. The Complainant further states that it has not given the Respondents permission to use the marks and that the Respondents are not commonly known under the disputed domain names. Furthermore, the Complainant argues that the Respondents have merely registered the disputed domain names to display sponsored links or PPC links and such use indicates that the Respondents are using the disputed domain names in order to make a commercial gain by abusing the reputation of the Complainant’s marks. Additionally, the Complainant argues that the Respondents are serial cybersquatters who has already lost a procedure under the Policy against the Complainant where they were found to have committed bad faith registration of a number of domain names confusingly similar to the Complainant’s KESIMPTA trademarks and that the Respondents have also registered a number of domain names targeting famous third party brands, thereby exposing a pattern of bad faith registrations. The Complainant essentially argues that in these circumstances, the Respondents have
page 4 no rights or legitimate interests in the disputed domain names, and the registration and use of the disputed domain names are made in bad faith. B. Respondents The Respondents did not formally reply to the Complainant’s contentions, apart from a submission filed in English on December 23, 2024 by the Third Respondent, essentially stating its willingness to settle this proceeding amicably, offering to transfer its respective disputed domain names and . 6. Discussion and Findings 6.1. Preliminary Issues A. Consolidation: Multiple Respondents The amended Complaint was filed in relation to nominally different domain name registrants. The Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other, or under common control. The Complainant requests the consolidation of the Complaint against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules. The Third Respondent sent an email communication on December 23, 2024, stating its willingness to transfer the disputed domain names and , however, the Third Respondent did not specifically comment on the Complainant’s request for consolidation. The other Respondents also did not comment on the Complainant’s request for consolidation. Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2. As regards common control, the Panel notes that all disputed domain names are registered with the same Registrar and share the same nameservers; mail exchange (MX) records for all disputed domain names are configured in the identical manner; the naming structure for the First Respondent, the Second Respondent and the Third Respondent consists of an uncommon structure (i.e., name of a geographic location in China followed by the term “Ke Ji You Xian Gong Si” (科技有限公司) which means “Technology Co., Ltd” ) thereby exposing a pattern; all disputed domain names have been registered within the year 2024 during a period of seven consecutive months between March 2024 and September 2024; 119 out of 122 disputed domain names registered under the First Respondent and the Second Respondent share the same email address; at least one UDRP panel has previously recognized that the First Respondent and the Second Respondent are connected, and concluded that domain names registered by these registrants are under common control (see Novartis AG v. 陈涵 (Chen Han), 海南趣够科技有限公司 (Hai Nan Qu Gou Ke Ji You Xian Gong Si) and 谢瑶 (Xie Yao), 深圳星芒互联科技有限公司 (Shen Zhen Xing Mang Hu Lian Ke Ji You Xian Gong Si), WIPO Case No. D2024-2644); two disputed domain names registered under the Third Respondent resolve to the PPC website with the identical layout against a dark blue background as 119 disputed domain names registered under the First Respondent and the Second Respondent, save for the non-use of the disputed domain name ; and, finally, for the disputed domain name registered under the Fourth Respondent, the Panel notes that this disputed domain name shares all above-mentioned key commonalities with the remaining disputed domain names, as it is registered with the same Registrar, shares the same nameservers, has identically configured MX records and resolves to a website containing PPC links (which are different in layout but conceptually similar).
page 5 As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party. Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding. B. Language of the Proceeding The language of the Registration Agreement for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Complaint and amended Complaint were filed in English and the Complainant requests that the language of the proceeding be English for several reasons, including, notably, the fact that the presumed PPC contents on the websites to which most of the disputed domain names direct are in English, the allegation that the Complainant is unable to communicate in Chinese, the fact that the disputed domain names include numerous terms in the English language; and the fact that in a prior UDRP proceeding against the First Respondent and the Second Respondent, the respective panel has accepted English as the language of the proceeding (see Novartis AG v. 陈涵 (Chen Han), 海南趣够科技有限公司 (Hai Nan Qu Gou Ke Ji You Xian Gong Si) and 谢瑶 (Xie Yao), 深圳星芒互联科技有限公司 (Shen Zhen Xing Mang Hu Lian Ke Ji You Xian Gong Si), WIPO Case No. D2024-2644). The Respondent did not make any specific submissions with respect to the language of the proceeding. In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview 3.0, section 4.5.1). Having considered all the matters above, and also considering the submission filed in English by the Third Respondent on December 23, 2024 from which it appears that the Respondent is able to communicate in English, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. 6.2. Discussion and Findings on the Merits A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademarks and the disputed domain names. WIPO Overview 3.0, section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds that the disputed domain names , , and are identical to the Complainant’s KESIMPTA and KISQALI marks. The Panel finds that each of the disputed domain names , , , , , and incorporates an misspelled version of the Complainant’s KISQALI mark (replacing the letter “q” with the letter “k”) with additional term(s) save for , which does not prevent a finding of confusing similarity because the Complainant’s KISQALI mark remains recognizable in these disputed domain names. WIPO Overview 3.0, sections 1.8 and 1.9. Accordingly, these disputed domain names are confusingly similar to the Complainant’s KISQALI mark.
page 6 As to the remaining disputed domain names, the Panel finds that the Complainant’s KESIMPTA and KISQALI marks are recognizable within these disputed domain names in spite of the additions to those marks in the disputed domain names such as the addition of various numbers, letters, dictionary or geographical terms (such as “003”, “j”, “best”, “first”, “cost”, “new”, “medication”, “price”, “usa”, “uses”, and etc.), or a combination thereof, which does not prevent a finding of confusing similarity. WIPO Overview 3.0, sections 1.7 and 1.8. Accordingly, these disputed domain names are also confusingly similar to the Complainant’s KESIMPTA and KISQALI marks for the purposes of the Policy. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in the disputed domain names. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise. Moreover, upon review of the facts and evidence submitted, the Panel notes that all disputed domain names apart from direct to a page that contains purported PPC or monetized links to various services that are sometimes related to the Complainant’s area of businesses, including “Laser skin treatments”, “Hiv Drug Prep”, “Depsression Treatment”, “Iv Injection” and etc. The Panel also notes that there are no elements in this case that point to the Respondent having made any reasonable and demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. In the Panel’s view, these elements show that the Respondent’s intention was not to make any use of the disputed domain names as a bona fide provider of goods or services, or to make legitimate noncommercial use or fair use of the disputed domain names. Instead, it shows the Respondent’s clear intention to mislead and divert Internet users for commercial gain to these parking webpages offering PPC links by taking unfair advantage of the goodwill and reputation of the Complainant’s KESIMPTA and KISQALI marks, see also WIPO Overview 3.0, section 2.9. As to the disputed domain name , this disputed domain name directs to an inactive webpage. In this regard, the Panel finds that holding a domain name passively, without making any use of it, also does not confer any rights or legitimate interests in the disputed domain name on the Respondent under the circumstances of this case (see in this regard earlier UDRP decisions such as Bollore SE v. 赵竹飞 (Zhao Zhu Fei), WIPO Case No. D2020-0691 and Vente-Privee.Com and Vente-Privee.com IP S.à.r.l. v. 崔郡 (jun cui), WIPO Case No. D2021-1685). The Panel finds the second element of the Policy has been established.
page 7 C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the Respondent has registered the disputed domain names which are identical or confusingly similar to the Complainant’s intensely used and distinctive KESIMPTA and KISQALI marks, and that the products marketed under these marks are commercialized throughout the world. Furthermore, the Panel also notes that the Complainant’s trademarks were registered many years before the registration date of the disputed domain names. The Panel deduces from these elements that the Respondent knew, or at least should have known, of the existence of the Complainant’s trademarks at the time of registering the disputed domain names. In the Panel’s view, these elements indicate bad faith on the part of the Respondent, and the Panel therefore finds that it has been demonstrated that the Respondent registered the disputed domain names in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Particularly, the Complainant provides evidence that all of the disputed domain names except for are linked to pages that contain purported PPC or monetized links to various products and services, some of which are related to the Complainant and/or its trademarks, including “Laser skin treatments”, “Hiv Drug Prep”, “Depsression Treatment”, “Iv Injection”, and etc. The Panel concludes that such use constitutes an intentional attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to the source, affiliation, or endorsement of the disputed domain names. This constitutes direct evidence of the Respondent’s bad faith under paragraph 4(b)(iv) of the Policy. As to the disputed domain name , this disputed domain name directs to an inactive webpage. In this regard, the Panel refers to the settled view of panels applying the Policy which have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the strong reputation of the Complainant’s trademarks, and the composition of this disputed domain name, and finds that in the circumstances of this case the current passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. Further, the Panel agrees with the Complainant that the First Respondent and the Second Respondent have already targeted the Complainant and its KESIMPTA trademark in the recent past (see Novartis AG v. 陈涵 (Chen Han), 海南趣够科技有限公司 (Hai Nan Qu Gou Ke Ji You Xian Gong Si) and 谢瑶 (Xie Yao), 深圳星芒互联科技有限公司 (Shen Zhen Xing Mang Hu Lian Ke Ji You Xian Gong Si), WIPO Case No. D2024-2644). The Panel also refers to the Complainant’s evidence from which it is clear that the First Respondent, the Second Respondent and the Third Respondent have registered other domain names targeting well-known trademarks (e.g., Amazon, BBVA, Toyota). Finally, the Panel has also reviewed the Complainant’s evidence containing the MX records for the disputed domain names, which indicate that the Respondent has connected the disputed domain names to email servers. The Panel finds that this creates a grave risk that the Respondent may be using the disputed domain names, which are confusingly similar to the Complainant’s marks, for misrepresentations and/or phishing and spamming activities (see in this sense also previous UDRP decisions such as Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533).
page 8 The preceding elements lead the Panel to conclude that the Respondent is using the disputed domain names in bad faith. The Panel therefore finds that it has been demonstrated that the Respondent has registered and is using the disputed domain names in bad faith. Based on the available record, the Panel finds that the Complainant has established the third element 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 names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , ,