The Complainant is Novartis AG, Switzerland, represented by BrandIT GmbH, Switzerland.
The Respondent is YXP Li, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2020. On August 13, 2020, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On August 14, 2020, SIDN transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 26, 2020, providing the registrant and contact information disclosed by the Registrar, and requesting the Complainant to submit an amendment to the Complaint in this light. Complainant filed an amended Complaint on September 2, 2020. The Center verified that the Complaint together with the Amended Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”). In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 3, 2020. In accordance with the Regulations, article 7.1, the due date for Response was September 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 24, 2020. The Center appointed Wolter Wefers Bettink as the panelist in this matter on October 5, 2020. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background The Complainant is a global healthcare company based in Switzerland that provides solutions to address the evolving needs of patients worldwide. The Complainant’s products are sold in about 155 countries and they reached nearly 800 million people globally in 2018. About 125,000 people of 145 nationalities work worldwide for the Complainant. The Complainant is the owner of a number of registrations of the word mark NOVARTIS, including Benelux trade mark registration no. 663765, registered on July 1, 1996 (the “Trade Mark”). The Domain Name was registered on November 29, 2019, and does not resolve to an active website. On December 19, 2019, the Complainant sent a cease-and-desist letter to the Respondent, but it did not receive a reply. 5. Parties’ Contentions A. Complainant According to the Complainant, the Domain Name is confusingly similar to the Trade Mark as it incorporates the Trade Mark in its entirety combined with the dictionary term “pharma”, which is closely related to the Complainant and its business activities, while the addition of the country code Top Level Domain (“ccTLD”) “.nl” does not add any distinctiveness to the Domain Name. The Complainant states that it has never granted the Respondent any right to use the Trade Mark within the Domain Name, nor is the Respondent affiliated to the Complainant in any form. The Complainant submits that the Respondent could have easily performed a search on the Internet before registering the Domain Name and it would have learned that the Trade Mark is owned by the Complainant and that the Complainant has been using the Trade Mark worldwide, including in the Netherlands and China. The Complainant further states that it has not found that the Respondent was commonly known by the Domain Name, while the Respondent’s name is not related to the Trade Mark in any way. The Complainant also puts forward that the Domain Name did not resolve to any active website at the time of filing of the Complaint, indicating that the Respondent was not using the Domain Name for a bona fide offer of goods or services, nor making a legitimate, noncommercial or fair use of the Domain Name. Taking all the above into account, the Complainant concludes that Respondent should be considered as having no right or legitimate interest in respect of the Domain Name. The Complainant submits that the registration of the Trade Mark significantly predates the registration of the Domain Name and that the Respondent has never been authorized by the Complainant to register the Domain Name. The Complainant contends that the incorporation of the Trade Mark, which is well-known and distinctive, in the Domain Name is a deliberate and calculated attempt to improperly benefit from the Complainant’s rights in the Trade Mark. The Complainant states that the Domain Name shall be deemed as registered in bad faith, considering the fact that: - the Respondent very likely knew about the Complainant and the Trade Mark; In addition, the Complainant contends that the Domain Name is being used in bad faith. The Domain Name did not resolve to an active website and should therefore fall into the definition of “passive holding” which should be deemed bad-faith use, the Complainant submits. Furthermore, the Respondent did not reply to the aforementioned cease-and-desist letter, which the Complainant sent through the registrar, since the Domain Name was registered using a privacy shield. In addition, the Complainant contends, since the Respondent’s name “YXP Li”, and in particular the part “YXP”, does not correspond to any Chinese word nor even to any pronunciation in Chinese, the Respondent has very likely provided false WhoIs information which adds up to the finding of bad-faith use. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has shown that it has registered rights in the Trade Mark. The Domain Name is confusingly similar to the Trade Mark as it incorporates the term NOVARTIS in its entirety (see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7).1 As the Trade Mark is recognizable within the Domain Name, the addition of the descriptive term “pharma” does not prevent a finding of confusing similarity under the first element (see also section 1.8 of the WIPO Overview 3.0). The ccTLD “.nl” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 3.0, section 1.2). Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Mark in which the Complainant has rights. B. Rights or Legitimate Interests Under article 3.1 of the Regulations, the Complainant has to make out at least a prima facie case that the Respondent does not have rights to or legitimate interests in the Domain Name (WIPO Overview 3.0, section 2.1). Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s consent to use the Trade Mark as part of the Domain Name, is not commonly known by the Domain Name, has no connection or affiliation with the Complainant, and has not acquired trade mark rights in the Domain Name. As the Domain Name does not resolve to an active website, there is no evidence that the Domain Name is being used for a bona fide offering of goods or services, or that the Respondent makes a legitimate noncommercial or fair use of the Domain Name. The Panel concludes that the Respondent has no rights to or legitimate interests in the Domain Name. C. Registered or Used in Bad Faith In accordance with article 3.2 of the Regulations, the Complainant has to show that the Domain Name was registered or is being used in bad faith. Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Name the Respondent was or should have been aware of the Trade Mark, since: - the Respondent’s registration of the Domain Name occurred 23 years after the registration of the Trade Mark in the Benelux; Taking into account the further circumstances of this case, the Panel finds that the Respondent has registered the Domain Name in bad faith. While the above findings as such suffice for a transfer decision under the Regulations, the Panel will also consider whether the Domain Name is being used in bad faith. The Panel points out that the fact that the Domain Name at this stage does not appear to resolve to an active website does not imply a lack of bad faith. As set out in WIPO Overview 3.0, section 3.2, the apparent lack of so-called active use (e.g., to resolve to a website) of a domain name without any active attempt to sell or to contact the trade mark holder (passive holding), does not as such prevent a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and HUGO BOSS Trade Mark Management GmbH & Co. KG, HUGO BOSS AG v. Dzianis Zakharenka,WIPO Case No. D2015-0640). In accordance with this UDRP jurisprudence, the Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. In this case, the Panel finds that the combination of the following circumstances is indicative of bad-faith use of the Domain Name: - the fact that the Respondent was aware or should have been aware of the Complainant’s rights in the Trade Mark; The Panel concludes that the Domain Name has been registered and is being used in bad faith. 7. Decision For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name Wolter Wefers Bettink 1 In view of the fact that the Regulations are to an extent based on the Uniform Domain Name Dispute Resolution Policy (UDRP), it is well established that cases decided either under the Regulations or under the UDRP, and therefore WIPO Overview 3.0, are relevant to this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V.,WIPO Case No. DNL2008-0050).
- the Trade Mark is distinctive and well-known worldwide, including in the Netherlands and China;
- the Respondent has failed to present any credible explanations for registering the Domain Name.
- the Trade Mark is well-known throughout the world;
- a simple trade mark register search, or even an Internet search, prior to registration of the Domain Name in its name would have informed the Respondent of the existence of the Trade Mark and other NOVARTIS trade marks.
- the nature of the mark NOVARTIS incorporated in the Domain Name, such that the Respondent cannot claim to have “accidentally” registered a domain name that happens to correspond to the Trade Mark;
- the lack of a Response;
- the lack of a reply of the Respondent to the cease-and-desist letter sent by the Complainant; and
- the Respondent’s concealment of its identity.
Panelist
Date: October 19, 2020
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