WIPO Domain Name Decision DCO2021-0055 for novartismedical.co

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Novartis AG v. Majid Sheikh, Tech4A Case No. DCO2021-0055 1. The Parties

The Complainant is Novartis AG, Switzerland, represented by BrandIT GmbH, Switzerland.

The Respondent is Majid Sheikh, Tech4A, Pakistan.

2. The Domain Name and Registrar

The Disputed Domain Name is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2021. On July 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 6, 2021, 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 the Complainant on July 8, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 20, 2021.

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 Respondent of the Complaint, and the proceedings commenced on July 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 15, 2021.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on August 31, 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

The Complainant is a pharmaceutical and healthcare group, which provides solutions to address the evolving needs of patients worldwide by developing and delivering innovative medical treatments and drugs. The Complainant sells its products in many regions worldwide, including Pakistan.

In addition, the Complainant owns the trademark NOVARTIS, which is subject to trademark registrations in many jurisdictions, among others:

- NOVARTIS Pakistan trademark Registration No. 134437, registered on February 27, 1996; and
- NOVARTIS (Logo) Pakistan trademark Registration No. 135177, registered on September 4, 1996.

Furthermore, the Complainant owns numerous domain names composed by the trademark NOVARTIS, inter alia:

- registered on April 19, 2002;
- registered on April 2, 1996; and
- registered on October 27, 1999.

The Respondent registered the Disputed Domain Name on June 1, 2021. The Disputed Domain Name is currently inactive. However, the Complainant submitted evidence that the Disputed Domain Name resolved to a website under construction but displayed image of what appeared to be surgical supplies and then, it resolved to an active website offering medical instruments which were closely related to the Complainant and its business activities; a logo with terms “Novartis Medical” was displayed in the upper-left corner.

5. Parties’ Contentions A. Complainant

The Complainants contentions can be summarized as follows:

Identical or confusingly similar

The Complainant states that the Disputed Domain Name incorporates the Complainant’s trademark in its entirety with the addition of the term “medical”, which is closely related to the Complainant and its business.

Rights or legitimate interest

The Complainant alleges that the Respondent have never had any previous relationships, nor has the Complainant ever granted the Respondent with any rights to use the NOVARTIS trademark in any forms, including the Disputed Domain Name.

The Complainant further states that the Respondent is not commonly known by the Disputed Domain Name. Instead, the Respondent is an organization named Tech4A, with contact person named Majid Sheikh, which is not related to the Complainant nor to the term “Novartis” in any way.

Registration and use in bad faith

The Complainant alleges that its trademark registrations predate the registration of the Disputed Domain Name and the Respondent has never been authorized by the Complainant to register the Disputed Domain Name with the trademark NOVARTIS.

The Complainant further alleges, that the Disputed Domain Name first resolved to a website under construction but displayed image of what appeared to be surgical supplies, which constitutes passive holding; later it resolved to an active website offering medical instruments which was closely related to the Complainant and its business activities and using the term “Novartis” in its “logo” to confuse Internet users.

Consequently, the Complainant states that the Respondent registered and is using the Disputed Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements, which the Complainant must satisfy with respect to the Disputed Domain Name at issue in this case:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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

Based on the evidence submitted, the Panel finds that the Disputed Domain Name is confusingly similar to the Complaint’s NOVARTIS trademark. The Complainant’s trademark is clearly recognizable within the Disputed Domain Name.

Furthermore, the Disputed Domain Name contains the Complainant’s NOVARTIS trademark in its entirety. The addition of the term “medical” does not alter the assessment of confusing similarity, since the Complainant’s NOVARTIS trademark is recognizable. Moreover, the addition of the country-code Top-Level Domain (“ccTLD”) “.co” does not change this finding, since the ccTLD is generally disregarded in such an assessment of confusingly similarity.

Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service at issue.

There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark in the Disputed Domain Name. The Complainant has prior rights in the trademark, which precede the Respondent’s registration of the Disputed Domain Name. In addition, the Respondent is not commonly known by the Disputed Domain Name.

The Respondent has failed to show that it has acquired any rights or legitimate interests with respect to the Disputed Domain Name. Moreover, it had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contentions.

In addition, noting the composition of the Disputed Domain Name, and its use, the Panel finds that Disputed Domain Name carries a risk of implied affiliation with the Complainant.

As such, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

The Complainant has used its trademarks long before the Disputed Domain Name was registered.

The Complaint’s trademarks are well-known as it has been recognized by previous decisions under the Policy (see case, Novartis AG v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, / Sergei Lir,WIPO Case No. D2016-1688).

The Disputed Domain Name is currently inactive. The Respondent was well aware of the Complainant’s prior rights and business, since the Disputed Domain Name was registered on 2021, while the Complainant had the registration of one of its trademarks since 1996. Thus, and also considering the nature of the Disputed Domain Name, it is very unlikely that the Respondent could have been unaware of the Complainant’s trademark and business when it registered the Disputed Domain Name.

The Respondent has not denied these assertions because of its default.

The Panel infers from the current circumstances that the Respondent knew of the Complainant’s trademark and prior rights at the time of registering the Disputed Domain Name.

According to the evidence submitted by the Complainant, the Respondent used the Disputed Domain Name to create a likelihood of confusion with the Complainant’s trademark in order to attract Internet users to its website, which amounts to a use of the Disputed Domain Name in bad faith. Moreover, the fact that the Disputed Domain Name is currently inactive does not prevent a finding of bad faith use and does not change the Panel’s views in this respect.

Therefore, taking all the circumstances into account and for all above reasons, the Panel concludes that there is bad faith in the use and registration of the Disputed Domain Name.

The third element of paragraph 4(a) of the Policy is, therefore, satisfied.

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.

Pablo A. Palazzi
Sole Panelist
Date: September 14, 2021

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