The case has been initiated by a complaint filed jointly by Novartis AG, a Swiss company, and Novartis Pharma GmbH, a company seated in Nürnberg, Germany. The Complainants clarify that Novartis Pharma GmbH is part of the Novartis Group, whereas Novartis AG is the headquarter company (henceforth: \"the Complainant\").<\/p>\n
The Complainants owns the following trademarks, applicable to these proceedings:<\/p>\n
EU TM registration NOVARTIS No. 000304857 registered on 25.06.1999 in Classes 1, 5, 9, 10, 29, 30, 32 of ICGS;<\/p>\n
EU TM registration NOVARTIS No. 1544148 registered on 29.06.2020 in Class 35 of ICGS;<\/p>\n
EU TM registration NOVARTIS No. 013393641 registered on 13.03. 2018 in Class 9, 10 of ICGS;<\/p>\n
Cyprus Trademark registration NOVARTIS No. 45686 registered on 10.11.200 in Class 29 of ICGS.<\/p>\n
The Complainants also own numerous domain names incorporating the NOVARTIS mark, including <novartis.fr>, <novartis.com>, <novartis.ch> and many others, pointing to the Complainant’s official websites.<\/p>\n
The Respondent, Pierre MARIONE, registered the domain name <NOVARTIS-BIO.EU> on January 3, 2023.<\/p>\n
On February 7, 2023, the Complainants submitted a complaint. Following submission, the standard procedures according to ADR rules took place: EURid transmitted the relevant information on the registrant, revealing in particular the identity and address of the owner of the disputed domain name. As a consequence, the ADR Centre requested the Complainant to amend its complaint. This was done accordingly on February 20, 2023. The time of filing of the complaint is February 21, 2023.<\/p>\n
The Respondent was properly notified and informed that, should he fail to send the Response within the prescribed period of time, the Respondent would be considered in default. On April 4, 2023, the ADR Centre issued a \"notification of Respondent's default\" informing the Respondent that he failed to comply with the ADR Centre's request.<\/p>\n
The Complainants request the transfer of the disputed domain name to Novartis Pharma GmbH. The Panel was therefore appointed, and has filed the \"statement of acceptance and declaration of impartiality and independency\".<\/p>", "other_legal_proceedings": "
There are no other legal proceedings of which the Panel is aware that are pending or decided and that relate to the disputed domain name.<\/p>", "discussion_and_findings": "
Before entering into the merits of the case, the Panel wishes to underline that the pending dispute has been initiated after the entry into force of Commission Regulation (EC) No 2019\/517 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 19 March 2019 on the implementation and functioning of the .eu top-level domain name and amending and repealing Regulation (EC) No 733\/2002 and repealing Commission Regulation (EC) No 874\/2004. Pursuant to article 22 of this Regulation, this Regulation ... shall apply from 13 October 2022. In addition, according to article 21, Regulations (EC) No 733\/2002 and (EC) No 874\/2004 are repealed with effect from 13 October 2022. Hence, the law applicable to the present case is Regulation 2019\/517, not Regulation 874\/2004.<\/p>\n
In accordance with Article 4(4) of Regulation 2019\/517<\/strong>, a domain name may be revoked, and where necessary subsequently transferred to another party, following an appropriate ADR or judicial procedure, in accordance with the principles and procedures on the functioning of the .eu TLD laid down pursuant to Article 11, where that name is identical or confusingly similar to a name in respect of which a right is established by Union or national law, and where it: (a) has been registered by its holder without rights or legitimate interest in the name; or (b) has been registered or is being used in bad faith.<\/p>\n The above provision has replaced article 21 (1) of the European Regulation n° 874\/2004 relating to the Speculative and abusive registrations, which had the following wording: “a registered domain name shall be subject to revocation, using an appropriate extra-judicial or judicial procedure, where that name is identical or confusingly similar to a name in respect of which a right is recognized or established by national and\/or Community law, such as the rights mentioned in Article 10(1), and where it: (a) has been registered by its holder without rights or legitimate interest in the name; or (b) has been registered or is being used in bad faith”. Paragraph 3 of the above article featured a long list of bad faith situations (letters a-e), which is not anymore embedded in the text of the new EU Regulation. Recitals 19-20 of Regulation <\/strong>2019\/517 provide that:<\/p>\n (19) A domain name that is identical or confusingly similar to a name in respect of which a right is established by Union or national law and which has been registered without rights or legitimate interest in the name, should, in principle, be revoked and, where necessary, transferred to the legitimate holder. Where such a domain name has been found to have been used in bad faith, it should always be revoked. <\/p>\n (20) The Registry should adopt clear policies aiming to ensure the timely identification of abusive registrations of domain names and, where necessary, should cooperate with competent authorities and other public bodies relevant to cybersecurity and information security which are specifically involved in the fight against such registrations, such as national computer emergency response teams (CERTs).<\/p>\n From the provisions aforementioned, it follows that the criteria for establishing a bad faith case are to be found in pertinent case law, which was shaped and developed through the long practice and implementation of EU Regulation 874\/2004, coupled with the .eu Alternative Dispute Resolution Rules (the \"ADR Rules\") (Article 11(f).<\/p>\n Pursuant to article B(1)(b)(10) ADR Rules (in force since October 13, 2022), for the purposes of challenging the registration of a domain name, the complainant has to prove that the Domain Name is identical or confusingly similar to a name in respect of which a right is recognized or established by national and\/or Community law; the Domain Name is registered by the holder without rights or legitimate interest in the name; or, the Domain Name is registered or is being used in bad faith.<\/p>\n Following the facts and assertions submitted by the Complainants, and taking into account the default of the Respondent (article B(10)(1) ADR Rules), the Panel will proceed to the examination of the conditions aforementioned. (a) Identical or confusingly similar<\/span><\/strong><\/p>\n The Complainants demonstrate they have valid trademark rights in the NOVARTIS sign. Based on the evidence furnished by the Complainants, the Panel recognizes that the Complainants' trademark rights in the NOVARTIS sign are established. The Panel also agrees that the disputed domain name is confusingly similar to Complainant’s NOVARTIS trademark. The suffix “BIO” is not reason enough for convincing the Panel that it could influence the position of the court. On the contrary, the reference to \"BIO\" for biology refers to the known activity of the Complainants.<\/p>\n The disputed domain name <novartisbio.eu> incorporates Complainants’ Trademarks “NOVARTIS” in its entirety. In a decision concerning a case with the same parties, it was ruled that the incorporation of a trademark in its entirety may be sufficient to establish that the domain name is identical or confusingly similar to Complainant’s trademark (CAC-ADREU-008361). This is evidently the case in the dispute at hand.<\/p>\n Accordingly, by registering the disputed domain name, the Respondent has created a likelihood of confusion with Complainants' trademark. It is likely that the domain name could mislead Internet users into thinking that it is, in some way, associated with the Complainants. As a result, the Panel finds that the disputed domain name is confusingly similar to the trademark “NOVARTIS”. (b) No rights nor legitimate interests<\/span><\/strong> As already mentioned above, the Respondent did not provide a reply. In previous cases, panels have held that the Respondent’s default was proof that Complainant and Respondent had no relation and that the Respondent is not commonly known under the disputed domain name (see CAC-ADREU-008361, and the cases cited there). In the absence of a response, and in accordance with article B(10)(1) ADR Rules, the Panel accepts that the Respondent has no authorization to use the Complainant’s trademarks in the disputed domain name. Hence, as the Complainant has made out its prima facie case, and as the Respondent has not demonstrated any rights or legitimate interests, nor has the Panel found any other basis for finding any rights or legitimate interests of the Respondent in the disputed domain name, the Panel concludes that the Complainant has satisfied the requirements of article 4(4)(a) Regulation 2019\/517 and B(1)(b)(10)(B) ADR Rules <\/strong>”). (c) Registration or Use in Bad Faith<\/span><\/strong><\/p>\n To comply with articles 4(4)(b) Regulation 2019\/517 and B(1)(b)(10)(C) ADR Rules), the Complainant must demonstrate that the disputed domain name is registered or is being used in bad faith. It is not necessary to prove both registration and use in bad faith; it is sufficient if evidence illustrates that one of the two elements discussed is met, in order to comply with the provisions above. It is established that the disputed domain name directed originally to a website presenting products of the Complainants. Therefore, the Panel considers that the pattern of conduct constitutes a bad faith conduct, and that the disputed domain name is being used in bad faith by the Respondent. Hence, the third condition is also fulfilled.<\/strong><\/p>",
"decision": " For all the foregoing reasons, in accordance with Paragraph B12 (b) of the Rules, the Panel orders that the disputed domain name <novartisbio.eu> be transferred to the Complainant, Novartis Pharma GmbH.<\/p>",
"panelists": [
"Apostolos Anthimos"
],
"date_of_panel_decision": "2023-05-10 00:00:00",
"informal_english_translation": " I. Disputed domain name: NOVARTISBIO.EU<\/p>\n II. Country of the Complainant: Switzerland and Germany, country of the Respondent: Cyprus<\/strong><\/p>\n III. Date of registration of the domain name: January 3, 2023<\/strong><\/span><\/p>\n IV. Rights relied on by the Complainant (A<\/span>rticle 4(4)(a) Regulation 2019\/517<\/span>)<\/strong> on which the Panel based its decision: V. Response submitted: No<\/p>\n VI. Domain name is confusingly similar to the protected right of the Complainant<\/p>\n VII. Rights or legitimate interests of the Respondent (A<\/span>rticle 4(4)(a) Regulation 2019\/517<\/span>)<\/strong>: VIII. Bad faith of the Respondent (A<\/span>rticle 4(4)(b) Regulation 2019\/517<\/span>)<\/strong>: IX. Other substantial facts the Panel considers relevant: Pattern of conduct to engage in bad faith registrations by the Respondent.
<\/p>\n
<\/p>\n
<\/p>\n
Pursuant to article 4(4)(a) Regulation <\/strong>2019\/517, the Complainants have to prove prima facie that the Respondent lacks rights and legitimate interests in the disputed domain name. The burden of proof thereto shifts to the Respondent. This standard has been recognized by continuous case law (see CAC-ADREU-008361, and the cases cited there), where it was established that a Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the domain name.<\/span><\/p>\n
Given the absence of an apparent right or legitimate interest and the failure of the Respondent to appear and provide evidence to the contrary, the Panel decides that the Respondent has no rights or legitimate interests regarding the disputed domain name.<\/p>\n
EU TM registration NOVARTIS No. 000304857 registered on 25.06.1999 in Classes 1, 5, 9, 10, 29, 30, 32 of ICGS;
EU TM registration NOVARTIS No. 1544148 registered on 29.06.2020 in Class 35 of ICGS
EU TM registration NOVARTIS No. 013393641 registered on 13.03. 2018 in Class 9, 10 of ICGS
Cyprus Trademark registration NOVARTIS No. 45686 registered on 10.11.200 in Class 29 of ICGS.<\/span><\/p>\n
1. No
2. Why: Default of Respondent; no evidence proving rights or legitimate interest on the part of the Respondent in the disputed domain name.
No evidence that the Respondent has any connection with the Complainants.<\/p>\n
1. Yes
2. Why: The disputed domain name directed originally to a website presenting products of the Complainants or alike.<\/p>\n
X. Dispute Result: Transfer of the disputed domain name
XI. Procedural factors the Panel considers relevant: -
XII. [If transfer to Complainant] Is Complainant eligible? Yes, seat of Novartis Pharma GmbH located in Germany<\/p>",
"decision_domains": [],
"panelist": null,
"panellists_text": null
}