WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Novartis AG v. Ancient Holdings, LLC, Wendy Webbe

Case No. D2014-1084

1. The Parties

The Complainant is Novartis AG of Basel, Switzerland, represented by Dreyfus & associés, France.

The Respondent is Ancient Holdings, LLC, Wendy Webbe, Charlestown, Saint Kitts and Nevis.

2. The Domain Name and Registrar

The disputed domain name <novarti.com> is registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on June 23, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing contact details.

The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2014.

The Center appointed Andrea Dawson as the sole panelist in this matter on August 21, 2014. 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 Novartis AG is a world leader in pharmaceutical products.

The Complainant is a well-known medical and pharmaceutical global corporation.

The Pharmaceutical Division of Novartis is recognized throughout the world for its innovative products, services and solutions provided to patients, physicians and healthcare organizations.

Its global pharmaceutical portfolio includes over forty key marketed products.

The Complainant is the owner of the following trademark registrations:

- International trademark NOVARTIS n° 666218 dated of October 31, 1996;

- International trademark NOVARTIS n° 663765 dated of July 1st, 1996;

- Community trademark NOVARTIS n° 000304857 dated of June 25, 1999.

The disputed domain name <novarti.com> was registered on January 6, 2014

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name strongly imitates the trademark and company name NOVARTIS, with the mere deletion of the letter “s”. This deleted letter does not significantly affect the appearance or pronunciation of the disputed domain name. The Complainant argues that this practice is commonly referred to as “typosquatting” and creates virtually identical and/or confusingly similar marks to that of third parties trademarks.

The Complainant indicates that the Respondent is not affiliated with the Complainant in any way nor has it been authorized by Complainant to use and register its trademark, or to seek registration of any domain name incorporating said mark. The Complainant further states that the Respondent has no prior rights or legitimate interests in the disputed domain name. The registration of the NOVARTIS trademark preceded the registration of the disputed domain name by years. The Complainant finally contends that the Respondent is not commonly known by the name “Novartis”, in any way affiliated with the Complainant, nor authorized or licensed to use the NOVARTIS trademark, or to seek registration of any domain name incorporating said mark.

Finally, the Complainant alleges that it is unlikely that the Respondent was unaware of the existence of the Complainants trademarks when it registered the disputed domain name. In light of the reputation of the Complainant’s NOVARTIS trademark, the Respondent’s imitation of the said trademark clearly proves that the Respondent was aware of the existence of the Complainant’s trademark.

The Complainant says that the disputed domain name is for sale; the high price of the disputed domain name also demonstrates that the Respondent is aware of the NOVARTIS trademark and its value.

The Complainant additionally states that a quick NOVARTIS trademark search would have revealed to Respondent the existence of the Complainant and its trademark. The Respondent’s failure to do so is contributory evidence of its bad faith. Furthermore it contends that, a simple Internet search using the keyword “novarti” would have been enough to acknowledge the existence of the trademark NOVARTIS since all first results in various search engines reveal the Complainant’s trademark.

Consequently, in view of the above-mentioned circumstances, it is established that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered and used the disputed domain name in bad faith. The Complainant requests that the Panel order the transfer of the disputed domain name to the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action:

(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

The Complainant has been able to demonstrate that it has rights in numerous trademarks NOVARTIS. (Complaint Annexes 1 to 7). The disputed domain name is the term “novartis”, but without the “s” at the end, in what is simply a misspelling of the Complainant's mark. As indicated by the Complainant, previous UDRP panels constituted under the Policy have held that a domain name that is identical to another's mark but for a minor misspelling creates virtually identical and/or confusingly similar marks satisfying the requirement of paragraph 4(a)(i) of the Policy.

For all the above-cited reasons, the Panel concludes that disputed domain name is identical or confusingly similar to the Complainant’s trademark and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name.

However, many prior UDRP panels have established that once a Complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name the burden of production shifts to the respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name, in the absence of which the panel is entitled to rely on the complainant’s prima facie case that the respondent lacks such rights or interest. (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; see also Dow Jones & Company and Dow Jones LP v. The Hephzibah Intro-Net Project Limited, WIPO Case No. D2000-0704).

The present Panel agrees that the Complainant needs only to make out a prima facie case and finds that it has met that standard. The Panel will consider the arguments of the Complainant that the Respondent did not have any registered trademark, service mark or company name corresponding to the disputed domain name. That the Respondent is not commonly known by the name “Novartis”, is any way affiliated with the Complainant, nor authorized or licensed to use the NOVARTIS trademark, nor authorized to seek registration of any domain name incorporating said mark. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but intentionally misleadingly consumers to its website by an eventual typo error thus diverting them to its site.

Furthermore, the Complainant contacted the Respondent by sending a cease-and-desist letter, however the Respondent never replied. UDRP panels have repeatedly stated that when a respondent does not avail itself of its right to respond to the complainant, it can be assumed that the respondent has no rights or legitimate interests in the disputed domain name,

Consequently, the Panel finds that the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, if found by the Panel to be present, shall be evidence of both registration and use of the disputed domain name in bad faith.

The Panel considers that the Complainant has submitted evidence, unchallenged by the Respondent, that the Respondent has registered the disputed domain name with the knowledge of the Complainant’s rights in the Complainant’s trademarks and that the Respondent’s bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant’s trademarks at the time of the registration of the disputed domain name.

As mentioned by Complainant, in the view of the Panel it is unlikely that the Respondent was unaware of the Complainant when it registered the disputed domain name, since the Complainant owns numerous trademarks that are well- known throughout the world, therefore, it is almost impossible to conclude that the Respondent did not have this trademark in mind when registering the disputed domain name. Furthermore, past UDRP panels have found that “typosquatting” itself may constitute bad faith, which is exactly the present case since the only difference between the disputed domain name and the Complainants trademarks is the letter “s”. (See e.g. Briefing.com Inc. v. Cost Net Domain Manager, WIPO Case No. D2001-0970). The Panel has no hesitation in finding in the circumstances of this case that the disputed domain name was registered in bad faith.

In addition to the above, the Panel accepts the arguments of the Complainant that the disputed domain name was registered and used in bad faith as the Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website.

The Respondent uses the disputed domain name to direct Internet users to a webpage displaying commercial links related to pharmaceutical products and/or services, notably those of the Complainant and its competitors. These pay-per-click links are likely to generate revenues. Therefore, it is clear that the Respondent is taking undue advantage of the Complainant’s trademark to generate profits.

For the above-cited reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith; therefore, the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

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, <novarti.com> be transferred to the Complainant.

Andrea Dawson
Sole Panelist
Date: August 27, 2014