Novartis AG v zilong zhao

WIPO Case No. DCC2024-0037

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Novartis AG v. zilong zhao

Case No. DCC2024-0037

1. The Parties

The Complainant is Novartis AG, Switzerland, represented by Abion GmbH, Switzerland.

The Respondent is zilong zhao, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <novartisfcu.cc> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2024. On December 10, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 10, 2024, 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 (Domain Administrator, See PrivacyGuardian.org) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 10, 2024, 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 December 11, 2024.

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 December 18, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2025.

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The Center appointed Ahmet Akgüloğlu as the sole panelist in this matter on January 20, 2025. 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, Novartis AG, is the holding company of the Novartis Group, which provides solutions to address the evolving needs of patients worldwide by developing and delivering innovative medical treatments and drugs. Ridgedale Federal Credit Union (“Ridgedale FCU”), formerly known as Novartis Federal Credit Union (“Novartis FCU”) before the name change in 2022, was founded to service the financial needs of employees within the Novartis AG and their families.

The Complainant is the owner of the NOVARTIS trademark in several jurisdictions such as Switzerland and the United States. International Trademark numbered 663765 registered on July 1, 1996; Switzerland trademark numbered 427370 registered on July 1, 1996; United States trademarks numbered 4986124 registered on June 28, 2016 and 6990442 registered on February 28, 2023, are some of the Complainant’s trademarks.

The Complainant is also the owner of the numerous domain names consisting of the NOVARTIS trademark. Novartis FCU, now Ridgegale FCU, owns the domain names <novartisfcu.org> and <ridgedalefcu.org>. The domain name <novartisfcu.org> has redirected users to <ridgedalefcu.org> since 2022.

The disputed domain name was registered on November 1, 2024. The disputed domain name resolves to a webpage which purportedly offers an e-Banking platform by Novartis FCU.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that;

(a) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s NOVARTIS trademark since the disputed domain name contains the word “novartis”. The Complainant also explains that the second part of the disputed domain name which contains the term “fcu” stands for Federal Credit Union. The Complainant emphasizes that Novartis FCU was formerly a credit union founded to service the financial needs of employees within Novartis AG and their families. The Complainant also asserts that the addition of the country code top-level domain (“ccTLD”) extension “.cc” should be disregarded when assessing similarity since it is a standard registration requirement.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant submits that they have never granted the Respondent any rights to use the NOVARTIS trademark in the disputed domain name and the Respondent is not known by the disputed domain name. The Complainant has submitted evidence that when the terms “novartisfcu” and “novartis fcu” were

searched, all the results were related to Ridgegale FCU, formerly known as Novartis FCU. The Complainant also asserts that there are no registered trademarks incorporating the terms “novartisfcu” or “novartis fcu” in

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the name of the Respondent. Moreover, the Respondent is allegedly using the address of the former the Respondent.

Novartis FCU on the website’s “Contact Us” section. In conclusion, the Complainant underlines that the
Respondent is trying to deceive or confuse Internet users into thinking that the website is related to the
Complainant. Finally, the Complainant states that they sent a cease-and-desist letter to the Respondent and

(c) The disputed domain name was registered and is being used in bad faith.

The Complainant states that their NOVARTIS trademark is well known and this is accepted by the previous website’s “Contact Us” section which is also an indication that the Respondent is using the disputed domain name with the purpose of fraudulent impersonation. Moreover, The Complainant states that the Respondent was trying to conceal its identity when registering the disputed domain name as its name and most of its contact details are covered by a privacy shield in the WhoIs records, and the Respondent did not respond to the Complainant’s cease-and-desist letter which are all indications of bad faith.
UDRP panels. Therefore, the Complainant submits that the Respondent registered the disputed domain
name after the Complainant’s well-known NOVARTIS trademarks’ registration dates. In this regard, it is not
possible that the Respondent did not know about the Complainant’s trademarks. Also, the Complainant
underlines that the disputed domain name resolves to a website posing as a financial platform operated by
“Novartis FCU” and it is clear that the Respondent intended to attract Internet users to enter their financial
information and deposit funds on the website by exploiting the reliability of the NOVARTIS trademark.

Consequently, the Complainant believes that the Respondent using the website for fraudulent purposes.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain an order that the disputed domain name should be transferred or cancelled:

(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 will proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied in this proceeding.

The Panel will proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied in this proceeding.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1. It is uncontested to the Panel that the Complainant has rights to the
NOVARTIS trademark as a result of their registrations in different jurisdictions.

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The Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed
domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section

1.7.

The disputed domain name is composed of “Novartis”, “fcu” and “.cc”. The disputed domain name includes
the Complainant’s NOVARTIS trademark in its entirety. When a domain name wholly incorporates a
Complainant’s registered trademark that is sufficient to establish confusing similarity for purposes of the
Policy.

The Panel notes the term “fcu” is a common abbreviation for “federal credit union”. UDRP panels find that the addition of other terms to a mark, whether descriptive, geographical, pejorative, meaningless, or otherwise, will not prevent a finding of confusing similarity under the first element. Therefore, although the addition of other term “fcu” may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel also ignores the ccTLD extension “.cc” since it is viewed as a standard registration requirement and suggested as disregarded under the first element similarity test. WIPO Overview 3.0, section 1.11.1.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

It is accepted by the Panel that the Respondent has not been authorized by the Complainant to use of their NOVARTIS trademark. The Panel finds no indication that the Respondent is commonly known by the disputed domain name and the respondent has not submitted any evidence to the contrary. the panel also considers that the complainant sent a cease-and-desist letter to the Respondent, hence the Respondent was given the opportunity to prove their rights or legitimate interests in the disputed domain name but they failed to take it.

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The Panel also finds that the Respondent is using the website for potentially fraudulent and impersonation purposes and the Respondent has not submitted any evidence to prove their bona fide use of the disputed domain name. It is clear that the Respondent is trying to deceive the Internet users into sharing their

financial information and depositing funds by pretending to be the Complainant. The Respondent’s use of
the former Novartis FCU’s address on its website is also supportive evidence of such.

Panels have held that the use of a domain name for illegal activity here, claimed, impersonation/passing off, or other types of fraud can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel acknowledges that the Complainant has a connection with the former Novartis FCU which is a federal credit union, founded to serve financial needs of the employees of the Complainant. The disputed domain name resolves to a webpage that offers e-Banking services. Therefore, the Panel agrees that the disputed domain name was registered to deceive Internet users into sharing their financial information by taking advantage of the reliability of the former Novartis FCU. The fact that the Respondent has used the address of the former Novartis FCU on its website’s “Contact Us” section also substantiates this.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent has registered the disputed domain name in bad faith since it is proven that the Complainant’s NOVARTIS trademark is well known (see Novartis AG v. Amartya Sinha, Global Webs Link, Novartis RO, WIPO Case No. D2020-3203) and it is inconceivable that the Respondent was not aware of the NOVARTIS trademark. The Respondent chose to register the disputed domain name even though they knew about the Complainant’s well-known trademark, hence they acted in bad faith. The Respondent intends to deceive Internet users for commercial gain by using the well- known status of the Complainant’s trademark. Therefore, the Panel agrees that the Respondent is still using the disputed domain name in bad faith.

Panels have held that the use of a domain name for illegal activity, such as claimed impersonation/passing off, or other types of fraud, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

According to the evidence provided by the Complainant, the Panel notes that, the Complainant has provided evidence of the reputation of the NOVARTIS trademark due to its longstanding use. Thus, the Panel accepts that the Respondent was aware of the Complainant’s trademark but still decided to use it in the disputed

domain name. The fact that the Respondent has used the address of the former Novartis FCU on its
website’s “Contact Us” section also substantiates that they knew the NOVARTIS trademark and also shows
that the Respondent has attempted to appear as the Complainant in the eyes of Internet users. The Panel
also accepts that the Respondent has registered the disputed domain name with fraudulent purposes and
attempts to impersonate the Complainant for deceiving Internet users into sharing their financial information
and depositing funds. Considering the above, it is clear that the Respondent registered and is using the

disputed domain name in bad faith to take advantage of the Complainant’s well-known trademark.

The Panel finds that the Complainant has established the third element of the Policy.

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7. Decision

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 <novartisfcu.cc> be transferred to the Complainant.

/Ahmet Akgüloğlu/
Ahmet Akgüloğlu
Sole Panelist
Date: February 5, 2025