URS DEFAULT DETERMINATION


Novartis AG v. Privacy Protection et al.
Claim Number: FA2207002005620


DOMAIN NAME

<novartis.foundation>


PARTIES


   Complainant: Novartis AG of Basel, Switzerland
  
Complainant Representative: BRANDIT GmbH of Zürich, Switzerland

   Respondent: Privacy Protection of Chicago, IL, US
  

REGISTRIES and REGISTRARS


   Registries: Public Interest Registry
   Registrars: Sav.com, LLC

EXAMINER


   The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
   Saravanan Dhandapani, as Examiner

PROCEDURAL HISTORY


   Complainant Submitted: July 26, 2022
   Commencement: July 26, 2022
   Default Date: August 10, 2022
   Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").

RELIEF SOUGHT


   Complainant requests that the domain name be suspended for the life of the registration.

STANDARD OF REVIEW


   Clear and convincing evidence.

FINDINGS and DISCUSSION


   Procedural Findings:  
      Multiple Complainants: Multiple Complainants: No multiple Complainants are involved in this proceeding. This Complaint and findings relate to the domain name <novartis.foundation>. No domain name is dismissed from this Complaint.
      Multiple Respondents: Multiple Respondents: No multiple Respondents are involved in this proceeding. This Complaint and findings relate to the domain < novartis.foundation >. No domain name is dismissed from this Complaint.

   Findings of Fact: The case of the Complainant is as follows: The Novartis Group is one of the biggest global pharmaceutical and healthcare groups. Novartis AG (the “Complainant”), created in 1996, is the holding company of the Novartis Group. The Complainant has an active presence in US where the Respondent is located. The Complainant is the owner of the well-known trademark NOVARTIS registered as both word and figurative mark in several classes worldwide, including US vide Trademark Reg. no: 5420583 dated 13 March 2018 and Trademark Reg. no: 4986124. Dated 28 June 2016. The domain name <Novartis.foundation> (the “Disputed Domain Name”) registered on 11 June 2022, incorporates the trademark NOVARTIS in its entirety, directly referring to the Complainant. The addition of the new gTLD “.foundation” does not add any distinctiveness to the Disputed Domain Name. Therefore, the Disputed Domain Name is identical to the Complainant's word trademark. The Complainant and the Respondent have never had any previous relationships, nor has the Complainant ever granted Respondent with any rights to use the NOVARTIS trademark in any form. The returned results in Google search for the terms “novartis” or “novartis.foundation” point to the Complainant and their business activities. Namely, the first results relate to Novartis Foundation that aims to improve healthcare of low-income populations. The Respondent could have easily learnt that the trademarks are owned by the Complainant and that the Complainant has been using their trademarks in US and globally. The Disputed Domain Name resolves to parked page at Dan.com stating that the Domain Name is for sale. Such use cannot be considered as bona fide offering of goods or services. The Respondent deliberately chose to use well¬known trademark NOVARTIS in the Disputed Domain Name very likely with the intention to benefit from the Complainant’s worldwide renown by confusing internet users as to the source of sponsorship or affiliation. The Complainant’s NOVARTIS trademark is a distinctive, well-known trademark worldwide and in the US. It is not a coincidence that the Respondent registered the Disputed Domain Name incorporating the trademark. The Respondent likely knew about the Complainant and their trademark; The Respondent has failed in presenting a credible evidence-backed rationale for registering the Disputed Domain Name the Disputed Domain Name shall be deemed as registered in bad faith. The Disputed Domain Name resolves to parked page at Dan.com stating that the Domain Name is for sale. The mere failure to make an active use of the Disputed Domain Name is indicative of bad faith registration and use pursuant to previous URS decision, dispute number: 85ACB43F “veolia.cloud”. The Complainant has tried to reach the Respondent by a cease-and-desist notice sent on 29 June 2022 but received no response, which also infers bad faith.

  

Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.


[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
  (i) for which the Complainant holds a valid national or regional registration and that is in current use; or
  (ii) that has been validated through court proceedings; or
  (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

Determined: Finding for Complainant 


The Complainant has proved by documentary evidence that they are the registered owner of trademark “NOVARTIS " under various classifications, such as, Pharmaceutical and Veterinary Products, Education Services, Scientific and Technology Services and Pharmaceutical Research and Development. As noted, the disputed domain name <novartis.foundation> composes “NOVARTIS” and “.FOUNDATION”. The word “NOVARTIS” in disputed domain name is identical to Complainant’s registered mark “NOVARTIS”. The “.FOUNDATION” in disputed domain name, being a generic code Top-Level Domain name (gTLD), is suffix which are non-distinctive and are incapable of differentiating the disputed domain name from the Complainant’s registered trademark. Merely adding a suffix to a popular trademark cannot be the basis of a new trademark. Based on the “NOVARTIS” being a registered trademark of the Complainant, the Examiner determines that URS 1.2.6.1(i) covers the domain name at issue in this Complaint.


[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant 


The Complainant owns registered mark “NOVARTIS”. The Complainant’s adoption and first use of the registered trademark is for quite some time. In such case, the burden lies on the Respondent to prove that he/she has legitimate rights and/or interests in the disputed domain name. The Respondent is in default and has not filed any response. Although, the Complainant is not entitled to relief simply by default of the Respondent to submit a Response, the Examiner can however and does draw evidentiary inferences from the failure of the Respondent to respond. In view of the above, the Complainant has established a prima facie case of lack of rights and legitimate interest over the disputed domain name. Based on the record, the Respondent does not have rights or legitimate interests in the disputed domain names. Hence, the Examiner determines that URS 1.2.6.2 covers the domain names at issue in this Complaint and that the Respondent has no legitimate right or interest to the domain names.


[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
  a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant's 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 Registrant's web site or location or of a product or service on that web site or location.

Determined: Finding for Complainant 


It is the specific case of the Complainant that the Respondent is not affiliated with Complainant in any manner and never authorized the Respondent to register or use any domain name incorporating “NOVARTIS”. It is evident that the disputed domain name resolves to a parked page proclaiming that the domain name is for sale. Thus, the Panel Examiner is of the firm view that Registrant registered the disputed domain name in bad faith. It is well established that the registration and use of the disputed domain name must involve malafides where the registration and use of it was continues to be made in full knowledge of the Complainant’s prior rights in the “NOVARTIS” registered mark and in circumstances where the registrant did not seek permission from the Complainant, as the owner of trademark, for such registration and use. Thus the Panel Examiner comes to irresistible determination that (i) the disputed domain name is identical to the Complainant’s “NOVARTIS” pre-existing trademark rights; (ii) the Respondent’s name does not correspond to the disputed domain name; (iii) the Respondent was aware of the Complainant and its trademark when it registered the disputed the domain name; (iv) there is no indication of any authorization to use the Complainant’s mark and (v) the Registrant registered the disputed domain name in bad faith. Hence, it is lawful to conclude that the disputed domain name was registered in bad faith. Thus, the Examiner determines that URS 1.2.6.3 (a) and (d) covers the domain name at issue in this Complaint and the domain name was registered and are being used in bad faith.


FINDING OF ABUSE or MATERIAL FALSEHOOD


The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:


  1. The Complaint was neither abusive nor contained material falsehoods. 

DETERMINATION


After reviewing the parties submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for the duration of the registration:

  1. novartis.foundation

 

Saravanan Dhandapani
Examiner
Dated: August 12, 2022

 

 

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