Novartis AG v. Reima Humar
Claim Number: FA2101001929881
Complainant is Novartis AG (“Complainant”), represented by Kathryn M. Eyster of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is Reima Humar (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sandoz-uscareers.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 27, 2021; the Forum received payment on January 27, 2021.
On January 27, 2021, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <sandoz-uscareers.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 28, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 17, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@sandoz-uscareers.com. Also on January 28, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 19, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant, Novartis AG, discovers, develops, manufactures, and distributes vaccines and consumer products on a global basis. Complainant has rights in the SANDOZ mark based upon numerous registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 315,685, registered Aug. 7, 1934).
2. Respondent’s <sandoz-uscareers.com>[i] domain name is confusingly similar to Complainant’s SANDOZ mark because it merely adds the descriptive term “US Careers” and the “.com” generic top-level domain (“gTLD”) to the mark.
3. Respondent does not have rights or legitimate interests in the <sandoz-uscareers.com> domain name because Respondent is not commonly known by the domain name and is not affiliated with Complainant or the SANDOZ mark in any way.
4. Additionally, Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent hosts click-through links in promotion of other commercial websites.
5. Respondent registered and uses the <sandoz-uscareers.com> domain name in bad faith. Respondent attracts users for commercial gain by displaying third-party commercial links.
6. Additionally, Respondent had knowledge of Complainant’s rights in the SANDOZ mark when it registered the <sandoz-uscareers.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SANDOZ mark. Respondent’s domain name is confusingly similar to Complainant’s SANDOZ mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <sandoz-uscareers.com> domain name and that Respondent registered and uses the domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the SANDOZ mark based upon numerous registrations with the USPTO. Registration with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides evidence of its registration with the USPTO (e.g., Reg. No. 315,685, registered Aug. 7, 1934). Therefore, Complainant has rights in the SANDOZ mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <sandoz-uscareers.com> domain name is confusingly similar to Complainant’s SANDOZ mark as it merely adds the descriptive term “US Careers” and the “.com” gTLD to the mark. Addition of generic or descriptive terms and a gTLD to a mark is generally insufficient to negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i). See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”). Thus, the Panel holds that the <sandoz-uscareers.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <sandoz-uscareers.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <sandoz-uscareers.com> domain name because Respondent is not commonly known by the domain name and is not affiliated with Complainant or the SANDOZ mark in any way. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). The WHOIS information of record lists the registrant as “Reima Hunter,” and Complainant has offered evidence that it did not authorize Respondent’s use of the SONDOZ mark. Therefore, the Panel holds that Respondent is not commonly known by the <sandoz-uscareers.com> domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant claims that Respondent fails to use the <sandoz-uscareers.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use and instead hosts click-through links in promotion of other commercial websites. Use of a domain name incorporating the mark of another to host commercial hyperlinks is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”). Complainant provides screenshots of Respondent’s website which provides evidence of the click-through links on the page. Thus, the Panel holds this use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <sandoz-uscareers.com> domain name in bad faith based upon Respondent’s use of the domain to display third-party commercial links. Use of a confusingly similar domain name to display third-party commercial hyperlinks is evidence of bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)). The Complainant has provided evidence that the resolving website of the <sandoz-uscareers.com> domain name shows click-through links from which Respondent presumably collects revenue from click-through fees. Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant also argues that Respondent had knowledge of Complainant’s rights in the SANDOZ mark when it registered the <sandoz-uscareers.com> domain name. Actual knowledge of a complainant’s rights in a mark evidences bad faith per Policy ¶ 4(a)(iii) and may be shown by the fame of the mark and the use a respondent makes of the domain name. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Complainant argues that Respondent clearly had notice of Complainant’s rights in the SANDOZ mark based upon its longstanding registrations for the mark and Respondent’s use of the exact mark in the <sandoz-uscareers.com> domain name. Because the Panel agrees, the Panel finds find bad faith per Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sandoz-uscareers.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 26, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page