WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Novartis AG v. Sergei Lir

Case No. D2019-1229

1. The Parties

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

The Respondent is Sergei Lir, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <novartisbio.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2019. On May 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 26, 2019.

The Center appointed Adam Samuel as the sole panelist in this matter on July 1, 2019. 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 drug manufacturer based in Switzerland. It promotes its products through the domain name <novartis.com>, registered on April 2, 1996. The Complainant owns a number of trademarks around the world for the name, NOVARTIS, including a Russian trademark, registration number 534551, registered on February 13, 2015.

The disputed domain name was registered by the Respondent on March 18, 2018. The disputed domain name resolves to a page selling human growth hormone (“HGH”).

5. Parties’ Contentions

A. Complainant

The disputed domain name includes the Complainant’s trademark in its entirety combined with a generic term “bio” which is closely related to the Complainant’s business activities. The addition of the generic

Top-Level Domain (“gTLD”) does not add any distinctiveness to the disputed domain name. The Complainant’s well-known trademark NOVARTIS was registered before the disputed domain name. The Complainant is not affiliated to the Complainant in any form. The Complainant has already won a UDRP case against the Respondent in 2016, (See Novartis AG v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, / Sergei Lir, WIPO Case No. D2016-1688) involving a domain name which differs from the one in dispute here only by the addition of hyphen in the WIPO Case No. D2016-1688 between the Complainant’s trademark NOVARTIS and the word “bio”. In 2016, the UDRP panel found that the Respondent was using the Complainant’s trademark NOVARTIS to offer growth hormone for sale without any authorization. The Respondent is doing the same thing with the disputed domain name here. The Respondent has not shown that he has been commonly known by the disputed domain name.

The respondent had the NOVARTIS trademark in mind when he registered the disputed domain name and registered it only for the purposes of misleading consumers. As with the WIPO Case No. D2016-1688, the domain name resolves to the website which reproduces the Complainant’s trademark, offers pharmaceutical products for sale and describes the owner of the website as the Complainant, a global healthcare company based in Switzerland. As the UDRP panel in 2016 concluded, this evidences an attempt by the Respondent to impersonate the Complainant. In its use of the disputed domain name, the Respondent has attempted 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 the Respondent’s website. The Respondent has also used a privacy shield to conceal its identity.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(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 disputed domain name consists of the Complainant’s distinctive trademark, the generic word or abbreviation, “bio” and the gTLD “.com”. The gTLD is irrelevant because it is a standard registration requirement. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The addition of a generic word to a distinctive trademark does not prevent the disputed domain name from being confusingly similar to the trademark concerned. For these reasons, the Panel concludes the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent is not called “Novartis” or anything similar. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. For these reasons, and in the absence of any response on this point, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The website to which the disputed domain name resolves is selling growth hormone products using the Complainant’s trademark. The Respondent has already been the unsuccessful Respondent in a very similar case in WIPO Case No. D2016-1688 and yet has chosen to repeat this pattern of behaviour, only marginally adjusting the disputed domain name. When registering the disputed domain name, the Respondent knew of the Complainant’s trademark and has used the disputed domain name to impersonate the Complainant. For these reasons, the Panel concludes that in registering and using the disputed domain name, the Respondent has attempted 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 the Respondent’s website. Consequently, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

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 <novartisbio.com> be transferred to the Complainant.

Adam Samuel
Sole Panelist
Date: July 2, 2019