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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Novartis AG v. Privacy Protect, LLC (PrivacyProtect.org) / Yabani Eze, Sugarcane Internet Nigeria Limited

Case No. DCO2021-0025

1. The Parties

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

The Respondent is Privacy Protect, LLC (PrivacyProtect.org), the United States of America / Yabani Eze, Sugarcane Internet Nigeria Limited, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <entresto.co> is registered with Sav.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2021. On April 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 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 April 12, 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 April 15, 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 April 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 7, 2021.

The Center appointed Taras Kyslyy as the sole panelist in this matter on May 27, 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 global healthcare company based in Switzerland that provides solutions to address the needs of patients worldwide. It was created in 1996 through a merger of Ciba-Geigy and Sandoz. The Complainant’s products are available in about 155 countries and they reached nearly 1 billion people globally in 2017. About 126,000 people of 145 nationalities work at Novartis around the world. Novartis has more than 200 products in its clinical pipelines and 500 clinical trials are in progress.

ENTRESTO is one among the various pharmaceutical products manufactured by the Complainant. The Complainant owns numerous ENTRESTO trademark registrations around the world, including international trademark registration No. 1102109, registered on November 29, 2011.

The Complainant operates, among others, domain names reflecting its trademark in order to promote its services including <entresto.com> registered on May 10, 2011.

The disputed domain name was registered on July 24, 2020 and directs to a parking page displaying commercial links of various content. The disputed domain name is configured with an email server.

The Complainant sent a cease and desist letter on February 4, 2021 and received several generic responses from the Registrar advising to look into their policy relating to trademark disputes.

The Respondent was also a party to a number of previous UDRP proceedings resulting in transfer or cancellation of its domain names as follows: CSC Brands LP v. Domain Admin, Privacy Protect, LLC / Yabani Eze, Sugarcane Internet Nigeria Limited, WIPO Case No. D2020-0991; Sanofi v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Yabani Eze, Sugarcane Internet Nigeria Limited, WIPO Case No. D2020-1779; Anda, Inc v. Yabani Eze, WIPO Case No. DCO2021-0014; Barrett Steel Limited v. Privacy Protect, LLC (PrivacyProtect.org) / Yabani Eze, Sugarcane Internet Nigeria Limited, WIPO Case No. DCO2020-0045.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical or confusingly similar to the Complainant’s trademark. The disputed domain name reproduces Complainant’s trademark in its entirety. The structure of the disputed domain name enhances the false impression that it is somehow officially related to the Complainant, as it may be perceived as the official domain name differing only in one letter in the extension. The omission of the letter “m” in the extension “.co” might constitute a case of typo-squatting. This deleted letter does not significantly affect the appearance or pronunciation of the disputed domain name and creates virtually identical and/or confusingly similar marks to the Complainant’s trademark. The extension “.co” is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademark and the disputed domain name as it is viewed as a standard registration requirement.

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating said trademark. The Respondent cannot claim prior rights or legitimate interest in the disputed domain name as the ENTRESTO trademark precedes the registration of the disputed domain name for years. The Respondent is not commonly known by the disputed domain name or the name “ENTRESTO”. In the absence of any license or permission from the Complainant to use such widely-known trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed. The disputed domain name is virtually identical to the Complainant’s trademark and the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name. The adjunction of the extension “.co” increases the risk of confusion since Internet users are likely to believe that the disputed domain name will direct them to the official website offering information on Complainant’s product.

The Respondent cannot assert that, before any notice of this dispute, it was using, or had made demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name directed Internet users to a parking page with pay-per-clicks which are likely to generate revenues. Hence, it cannot be inferred that Respondent is making a legitimate non-commercial or fair use of disputed domain name. The disputed domain name is virtually identical to Complainant’s domain name <entresto.com> easing eventual typing error by Internet users; thus, resulting to diversion from Complainant’s site to that of Respondent. Such typo-squatting does not constitute a legitimate use of a trademark. The Respondent registered the disputed domain name with a privacy shield service to hide his identity and prevent Complainant from contacting him, and such a behavior highlights the fact that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Given the Complainant’s goodwill and renown worldwide, and the nature of the disputed domain name, which is virtually identical to the Complainant’s trademark, it is not possible to conceive a plausible circumstance in which the Respondent could legitimately use the disputed domain name, as it would invariably result in misleading diversion and taking unfair advantage of Complainant’s rights.

The disputed domain name was registered and is being used in bad faith. It is implausible that the Respondent was unaware of the Complainant when registering the disputed domain name. The Complainant is well-known throughout the world and owns several international registrations for the trademark ENTRESTO, making it unlikely that Respondent was not aware of Complainant’s rights in said trademark. The composition of the disputed domain name reproducing the Complainant’s pharmaceutical product “Entresto”, which is a highly distinctive mark having no regular meaning and associating it to a parking page with commercial links, clearly demonstrate that the Respondent registered the disputed domain name based on the attractiveness of the Complainant’s mark to divert Internet traffic to its website. The disputed domain name is so obviously connected with the well-known Complainant’s trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith. Registering the disputed domain name identical to the Complainant’s trademark since the omission of the letter “m” from the extension “.com”, is a form of typo-squatting, which is in itself evidence of bad faith. The Complainant’s trademark registrations significantly predate the registration of the disputed domain name and knowledge of the Complainant’s trademark at the time of registration of the disputed domain name proves bad faith registration.

The Respondent registered the disputed domain name through a privacy shield service to hide its identity and contact details, thus, preventing Complainant from contacting him, which is bad faith. The Respondent is a well-known cyber-squatter that has been the subject of a number of UDRP proceedings. There is little doubt that, at all times, the Respondent was not aware that the Complainant’s trademark enjoyed a substantial reputation worldwide. In light of this knowledge, the Respondent used the disputed domain name to direct Internet users and generate more traffic to a parking page displaying commercial links that are likely to generate revenues. The Respondent is thus intentionally attempted to attract Internet users to its website for commercial gain by creating likelihood of confusion with the Complainant’s trademark as to the affiliation or endorsement of either the Respondent or its website. Moreover, an email server has been configured on the disputed domain name and thus, there might be a risk that the Respondent is engaged in a phishing scheme. Given the Complainant’s goodwill and renown worldwide, and the nature of the disputed domain name, which is confusingly similar to Complainant’s trademark, it is not possible to conceive a plausible circumstance in which the Respondent could legitimately use the disputed domain name, as it would invariably result in misleading diversion and taking unfair advantage of the Complainant’s rights.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) the applicable generic Top-Level Domain (“gTLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards the country code Top-Level Domain (“ccTLD”) “.co” for the purposes of the confusing similarity test.

According to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that in the resent case the disputed domain name consists solely of the Complainant’s trademark.

Considering the above the Panel finds the disputed domain name is identical to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.

Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain name.

The Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).

The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPOCase No. D2014-1875).

According to section 2.9 of the WIPO Overview 3.0 the use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. The Panel finds this applies to the present case.

Noting the high risk of implied affiliation between the disputed domain name and the identical known trademark of the Complainant, the Panel finds that there is no plausible fair use to which the disputed domain name could be put that would not have the effect of being somehow connected to the Complainant (see, e.g., Instagram, LLC v. Super Privacy Service LTD c/o Dynadot / Zayed, WIPO Case No. D2019-2897).

Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to section 3.2.2 of the WIPO Overview 3.0 further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark. In the present case, the Respondent chose the disputed domain name identical to the Complainant’s trademark with the Top-Level Domain that differs in one letter “m” (“.co” instead of “.com”) compared to the respective Complainant’s domain name. Taking this into account, and noting the Respondent’s pattern for registering infringing domain names in the past, the Panel finds that the Respondent was aware of the Complainant’s trademark and targeted it when registering the disputed domain name, which is bad faith.

According to section 3.1.4 of the WIPO Overview 3.0 the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark both in Switzerland and internationally. Thus, the Panel finds that the disputed domain name identical to the Complainant’s trademark was registered in bad faith.

According to paragraph 4(b)(iv) of the Policy the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location. In this case, the disputed domain name identical to the Complainant’s trademark was resolving to a website featuring pay-per-click links to intentionally attract Internet users by creating likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website. The Panel finds the above confirms the disputed domain name was registered and used in bad faith.

Moreover, the Respondent seems to have failed to respond to the Complainant’s cease and desist letter, and did not provide any good reason to justify this, which confirms the bad faith (see, e.g., Compagnie Generale des Etablissements Michelin v. Vaclav Novotny, WIPO Case No. D2009-1022).

Considering the above the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) 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 name, <entresto.co> be transferred to the Complainant.

Taras Kyslyy
Sole Panelist
Date: June 1, 2021

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