WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novartis AG v. Domain Administrator, See PrivacyGuardian.org / Vu Duc Toan, Hoc Vien Marketing Online
Case No. D2020-2145
1. The Parties
The Complainant is Novartis AG, Switzerland, represented by BrandIT GmbH, Switzerland.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Vu Duc Toan, Hoc Vien Marketing Online, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <novartiscs.icu> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2020. On August 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 14, 2020, 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 August 27, 2020 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 September 1, 2020. The original Complaint and amended Complaint concerned the disputed domain name together with another domain name <novartisgroup.com>. The Complainant and the registrant of this other disputed domain name resolved that portion of the dispute through settlement, which left only the current disputed domain name in this case.
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 September 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 19, 2021. (The long period of time between commencement of the proceedings and the due date for the Response is attributable to the suspension and reinstitution of the matter to address the settlement concerning the other domain name <novartisgroup.com>). The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 22, 2021.
The Center appointed Evan D. Brown as the sole panelist in this matter on February 1, 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 large pharmaceutical and healthcare group. It sells its products in many regions worldwide, including Viet Nam, where the Respondent is located. The Complainant owns the mark NOVARTIS, which is subject to trademark registrations in many jurisdictions. For example, it owns Viet Nam Registration No. 663765 for the NOVARTIS mark, registered on July 1, 1997. The disputed domain name was registered on October 21, 2019. The Respondent has used the disputed domain name to redirect Internet users to a website purporting to offer cleaning services.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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, namely, that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
The Panel finds that all three of these elements have been met in this case.
A. Identical or Confusingly Similar
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See, Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights in the NOVARTIS mark by providing evidence of its numerous trademark registrations. The disputed domain name incorporates the NOVARTIS mark in its entirety. This is sufficient for showing confusing similarity under the Policy. The presence of the letters “c” and “s” in the disputed domain name does not prevent the finding of confusing similarity. The Panel finds that the Complainant has established this first element under the Policy.
B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent.
On this point, the Complainant asserts that the Respondent had not been commonly known by the disputed domain name at the time of its registration, the disputed domain name creates a false and misleading impression among Internet users looking for information about the Complainant, that there is no evidence of bona fide services being offered using the disputed domain name, and that it is very likely that the Respondent intended to benefit from the reputation of the Complainant’s trademark
The Respondent has not introduced any of its own evidence to contradict these assertions. The Panel finds that the Respondent’s activity – as described by the Complainant and supported by the record – does not rise to the level of a bona fide use of the disputed domain name, nor does it meet any of the other criteria set out in the Policy that could show the Respondent’s rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has established, prima facie, that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not come forth with evidence to rebut that showing. The Panel finds that the Complainant has satisfied this second element of the Policy.
C. Registered and Used in Bad Faith
The Policy requires a complainant to establish that the domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith use and registration. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or a product or service on [the respondent’s] website or location”.
The Panel finds, based on the available record, that the Respondent registered and is using the disputed domain name in bad faith. Given how well-known the Complainant’s NOVARTIS mark is, it is not plausible to believe that the Respondent was not aware of the Complainant’s rights, when Respondent registered and began using the disputed domain name. Indeed, it is clear that the Respondent targeted the Complainant and its mark. These facts show bad faith under the Policy.
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 <novartiscs.icu> be transferred to the Complainant.
Evan D. Brown
Date: February 17, 2021