WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novartis AG. v. Mathew French
Case No. DIO2020-0011
1. The Parties
The Complainant is Novartis AG., Switzerland, represented by BrandIT GmbH, Switzerland.
The Respondent is Mathew French, Canada.
2. The Domain Name and Registrar
The disputed domain name <novartis-forex.io> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2020. On September 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 25, 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 September 28, 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 October 5, 2020.
The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO 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 October 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 27, 2020.
The Center appointed Nick J. Gardner as the sole panelist in this matter on October 29, 2020. 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 relevant facts are straightforward and can be summarized very briefly as follows:
The Complainant is one of the world’s large pharmaceutical companies.
The Complainant is the owner of a number of national and international trademark registrations worldwide for the term NOVARTIS, including for example NOVARTIS, Canadian registration No. TMA523129, registered on February 15, 2000. These trademarks are referred to in this decision as the “NOVARTIS trademark”.
The Respondent registered the Disputed Domain Name on May 24, 2020.
The Disputed Domain Name has been linked to a website that purported to be operated by the Complainant and purports to offer trading facilities in digital currency. That website seeks to obtain confidential information from visitors. Following correspondence from the Complainant to the hosting provider, the website content was taken down after July 2020 and replaced with a pay-per-click website. However, beginning September 2020, the website at the Disputed Domain Name resolved back to the above-referenced trading platform and changed to refer to “Norvatis Forex New generation of profit” rather than Novartis.
5. Parties’ Contentions
The Complainant’s contentions are straightforward and can be summarized as follows:
The Disputed Domain Name is identical or confusingly similar to its trademark NOVARTIS in which it clearly has rights. It simply combines that trademark with the term “forex” which is a common abbreviation for foreign exchange.
The Respondent has no rights or legitimate interests in the term “novartis”. There is no other meaning associated with NOVARTIS other than in relation to the Complainant’s product.
The Disputed Domain Name was registered and is being used in bad faith. The website to which it is linked is phishing for Internet users’ sensitive information which is clear evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Preliminary issue - Nature of the .IO Policy
So far as the .IO Policy is concerned, the Panel notes that it is substantially similar to (though not identical to) the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) as adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”). The Panel will where appropriate apply principles that have been established in relation to the UDRP in determining this dispute.
B. Preliminary Issue – No Response
The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) The Disputed Domain Name is identical with 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 or is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the NOVARTIS trademark.
The Disputed Domain Name is confusingly similar to the NOVARTIS trademark. It is established that the addition of a descriptive term (such as here “forex” which is an obvious abbreviation of the words “foreign exchange”) to the Disputed Domain Name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a descriptive term does not exclude the confusing similarity (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006‑0189).
It is also well established that the country-code Top-Level Domain (“ccTLD”), in this case “.io”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Government Employees Insurance Company (“Geico”) v. Privacy.cc / Bulent Tekmen, WIPO Case No. DIO2020-0003.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
NOVARTIS is, as far as the Panel is aware, a word with no other meaning save in relation to the Complainant.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to the Respondent of the dispute, use of, or demonstrable preparations to use, the Disputed Domain Dame or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the NOVARTIS trademark.
The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered or Used in Bad Faith
“Novartis” has no other meaning so far as the Panel is aware save in relation to the Complainant. The Panel does not consider it likely that the Respondent chose to include it in the Disputed Domain for any other reason apart from its connection to the Complainant.
The Panel accepts the Complainant’s evidence that the Disputed Domain Name has been used in connection with “phishing” activity, which is intended to obtain data which can then in all probability be used in further fraudulent activity. See Australia and New Zealand Banking Group Limited v. Bashar Ltd., WIPO Case No. D2007-0031, and the cases therein referred to, for further analysis of why “phishing” activities amount to use in bad faith. See also Grupo Financiero Inbursa S.A. de CV v. ibuirisa, WIPO Case No. D2006-0614 to similar effect.
Under the Policy, evidence of registration or use in bad faith is established by, amongst other factors, circumstances which indicate that “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location” (Policy paragraph 4(b) (iv)). In the present case, the Panel concludes that the deliberate use of the Complainant’s trademark as part of the Disputed Domain Name, in combination with “forex” is intended to attract visitors who will believe the website operated by the Respondent is that of the Complainant or operated with its approval and who may then be misled into providing confidential information. That falls squarely within the type of circumstances to which the Policy refers.
Further, the Respondent has been given an opportunity to provide any legitimate explanation he may have to counter this assertion. Again, the burden of production in this respect is shifted to the Respondent. The Panel finds that the Respondent has failed to produce any evidence to establish a good faith use of the Disputed Domain Name. The Panel infers none exists.
In sum, all the evidence clearly points to bad faith on the part of the Respondent.
As a result the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <novartis-forex.io> be transferred to the Complainant.
Nick J. Gardner
Date: November 10, 2020