The Claimant is Novartis AG, of Switzerland, represented by BrandIT GmbH, Switzerland.
The Respondent is L.L.W., of United States of America (“United States”). 2. The Domain Name
The dispute concerns the following domain name The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2021. On July 26, 2021, the Center transmitted by email to SWITCH, the “.ch” and “.li” registry, a request for verification in connection with the Disputed Domain Name. On July 27, 2021, SWITCH transmitted by email to the Center its verification response confirming that the Respondent is listed as the holder of the domain name and providing the relevant contact details. The Center verified that the Request satisfied the formal requirements of the Rules of procedure for dispute resolution procedures for “.ch” and “.li” domain names (the “Rules of Procedure”), adopted by SWITCH, on January 1, 2020. In accordance with the Rules of Procedure, paragraph 14, the Center formally notified the Respondent of the Request, and the Dispute resolution procedure commenced on July 28, 2021. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was August 17, 2021. No Conciliation conference has taken place within the deadline specified in paragraph 17(b) of the Rules of Procedure. The Respondent has neither filed a Response nor expressed his readiness to participate in a Conciliation in accordance with paragraph 15(d) of the Rules of Procedure. On August 18, 2021, the Center notified the Claimant accordingly, who on August 19, 2021, made an application for the continuation of the Dispute resolution proceedings in accordance with specified in paragraph 19 of the Rules of procedure and paid the required fees. On August 23, 2021, the Center appointed Peter Wild as Expert in this case. The Expert finds that it was properly appointed. In accordance with Rules of Procedure, paragraph 4, the above Expert has declared his independence of the parties. 4. Factual Background The Claimant is a major global pharmaceutical and healthcare group, created in 1996 through a merger of two other companies Ciba-Geigy and Sandoz, and is the holding company of the Novartis Group. It has its headquarter in Switzerland and presence around the world, including the United States where the Respondent is located. The Claimant is the owner of the well-known trademark NOVARTIS registered as both a word and device mark in several classes worldwide, especially in Switzerland, most of them predating the registration of the Disputed Domain Name. Namely, the Claimant’s trademark registrations in Switzerland applying to the present proceedings include the following earlier rights: Swiss Trademark registration No. 2P-427370, NOVARTIS, registered on July 1, 1996; and Swiss Trademark registration No. 2P-432588, NOVARTIS, registered on October 31, 1996. The Disputed Domain Name resolved to an active website in French, which displayed content that used elements of the Claimant’s official website for Switzerland including use of the Complainant’s NOVARTIS logo in a prominent position. 5. Parties’ Contentions A. The Claimant According to the Claimant, it has a right in a distinctive sign under the law of Switzerland. The Claimant claims that the Disputed Domain Name is confusingly similar to the Claimant’s well-known, distinctive NOVARTIS trademarks and the Disputed Domain Name is confusingly similar to the Claimant’s company name “Novartis AG”, and to numerous domain names owned by the Claimant. The Claimant furthermore alleges that the allocation or use of the Disputed Domain Name infringes the Claimant’s right in a distinctive sign under the law of Switzerland namely the Federal Act on the Protection of Trade Marks and Indications of Source, Trade Mark Protection Act, (“TmPA”) Article 13, paragraph 1 and paragraph 2(c). The Claimant also invokes paragraph 1, Article 15 of TmPA, claiming rights under the “famous trademark” provisions. According to the Claimant, the Disputed Domain Name incorporates the trademark NOVARTIS in its entirety in combination with a descriptive term “premium”, which creates an overall impression that is confusingly similar to the Claimant’s trademark. Furthermore, the addition of the country code Top-Level Domain (“ccTLD”) “.ch” does not create any sufficient distinction to exclude the likelihood of confusion. The Claimant claims that the general look and feel of the website, which the Disputed Domain Name resolves to, was copied from the Claimant’s official website, and that it was also using the NOVARTIS logo in a prominent position and each page of the website was copied from the Claimant’s official website. As the Disputed Domain Name website is impersonating NOVARTIS, it is very likely that Internet users will be misled to believe that this is an authorised/associated website of NOVARTIS, and provide sensitive information in such belief when contacting the website owner, i.e. the Respondent. B. The Respondent The Respondent did not reply to the Claimant’s contentions. 6. Discussion and Findings A. The Claimant has a right in a distinctive sign under the law of Switzerland The Claimant has shown that it owns a wide range of distinctive NOVARTIS trademarks, including the Swiss Trademark registration No. 2P-427370, NOVARTIS, and the company name Novartis AG. This Expert therefore concludes that the Claimant has a right in a distinctive sign under the law of Switzerland. B. The allocation or use of the disputed domain name constitutes a clear infringement of a right in a distinctive sign which the Claimant owns under the law of Switzerland According to the TmPA, Article 13, paragraph 1, trade mark right confers on the proprietor the exclusive right to use the trade mark to identify the goods or services for which it is claimed and to dispose of it; and paragraph 2(c) of the TmPA states: “The proprietor of a trade mark may prohibit others from using a sign that is excluded from trade mark protection under Article 3 paragraph 1, in particular, from: Also, paragraph 1, Article 15 of TmPA provides that: “The proprietor of a famous trade mark may prohibit others from using his trade mark for any type of goods or services if such use threatens the distinctiveness of the trade mark or exploits or damages its reputation.” The Disputed Domain Name incorporates the trademark NOVARTIS in its entirety in combination with a descriptive term “premium”, which leads to an overall confusing similarity with the Claimant’s trademark; the addition of the ccTLD “.ch” does not prevent a finding of confusing similarity. The Disputed Domain Name resolved to an active website with the general look and feel copied from the Claimant’s official website, and using the NOVARTIS logo in a prominent position. It is therefore very likely that Internet users will be misled to believe that this is an authorized/associated website of NOVARTIS and even may provide sensitive information in such belief when contacting the website owner. Such registration and use of the Disputed Domain Name by the Respondent violates Article 13 TmPA and consequently constitutes an infringement of Claimant’s trademark rights under Swiss law. In addition, it also constitutes an act of unfair competition regarding the Claimant’s company name’s rights. (See Bulgari S.p.A. v. Registration Private, WhoisGuardService.com / S. H., Two Stooges LLC,WIPO Case No. DCH2021-0005, and Swiss Life AG and Swiss Life Intellectual Property Management AG v. S.Z.,WIPO Case No. DCH2021-0009.) For all the above reasons this Expert holds that the allocation and use of the disputed domain name constitutes a clear infringement of the Claimant’s rights in the distinctive trademark and corporate name NOVARTIS under the law of Switzerland. 7. Expert Decision For the above reasons, in accordance with paragraph 24 of the Rules of Procedure, the Expert orders that the Disputed Domain Name Peter Wild
[...]
c. offering or providing services under the sign;
[...]”
Expert
Dated: September 1, 2021
Full & Egal Universal Law Academy