Alcon, Inc., and Alcon Laboratories, Inc. v. ARanked
c/o Duck
Claim Number: FA1002001306493
Complainant is Alcon, Inc., and Alcon Laboratories, Inc. (“Complainant”), represented by Molly
Buck Richard, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <maxitrol.org>, <naphcon-a.com>, <tobradex.net>, and <vigamox.net>, registered with Web Commerce Communications Limited d/b/a Webnic.cc.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 4, 2010. With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitted an “opt-in” form available on the Forum’s website.
On February 5, 2010, Web Commerce Communications Limited d/b/a Webnic.cc confirmed by e-mail to the National Arbitration Forum that the <maxitrol.org>, <naphcon-a.com>, <tobradex.net>, and <vigamox.net> domain names are registered with Web Commerce Communications Limited d/b/a Webnic.cc and that Respondent is the current registrant of the names. Web Commerce Communications Limited d/b/a Webnic.cc has verified that Respondent is bound by the Web Commerce Communications Limited d/b/a Webnic.cc registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 5, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 2010 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@maxitrol.org, postmaster@naphcon-a.com, postmaster@tobradex.net, and postmaster@vigamox.net by e-mail. Also on February 5, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 4, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <maxitrol.org> domain name is identical to Complainant’s MAXITROL mark
Respondent’s <naphcon-a.com> domain name is
identical to
Complainant’s NAPHCON-A mark.
Respondent’s <tobradex.net> domain name is identical to Complainant’s TOBRADEX
mark.
Respondent’s <vigamox.net> domain name is identical to Complainant’s VIGAMOX mark.
2. Respondent does not have any rights or legitimate interests in the <maxitrol.org>, <naphcon-a.com>, <tobradex.net>, and <vigamox.net> domain names.
3. Respondent registered and used the <maxitrol.org>, <naphcon-a.com>, <tobradex.net>, and <vigamox.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Alcon, Inc., is an international health care company specializing in eye care products with distributions in more than 180 countries around the world and sales exceeding $6 billion. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its MAXITROL (e.g., Reg. No. 790,950 issued on June 15, 1965), NAPHCON-A (e.g., Reg. No. 1,166,061 issued on August 25, 1981), TOBRADEX (e.g., Reg. No. 1,897,276 issued on June 6, 1995), and VIGAMOX (e.g., Reg. No. 2,924,187 issued on February 1, 2005) marks.
Respondent registered the <maxitrol.org>, <naphcon-a.com>, <tobradex.net>, and <vigamox.net> domain names on September 3, 2009. Respondent’s disputed domain names resolve to websites that display pictures and information on Complainant’s products, and offers for sale similar products that are in competition with Complainant.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Previous panels have decided that a complainant can establish its right in a mark through registration of the mark with a governmental trademark authority. Therefore, the Panel finds that Complainant has established rights under Policy ¶ 4(a)(i) in its MAXITROL (e.g., Reg. No. 790,950 issued on June 15, 1965), NAPHCON-A (e.g., Reg. No. 1,166,061 issued on August 25, 1981), TOBRADEX (e.g., Reg. No. 1,897,276 issued on June 6, 1995), and VIGAMOX (e.g., Reg. No. 2,924,187 issued on February 1, 2005) marks through its trademark registrations with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights or legitimate interests in the <maxitrol.org>, <naphcon-a.com>, <tobradex.net>, and <vigamox.net> domain names. Upon Complainant making a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it possesses rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant alleges that Respondent is not commonly known by, nor does Respondent have permission to use Complainant’s marks. The WHOIS information for each lists the registrant of the disputed domain names as “ARanked c/o Duck Dawson.” Respondent has not submitted any evidence showing that it is commonly known by the <maxitrol.org>, <naphcon-a.com>, <tobradex.net>, and <vigamox.net> domain names and there is no other evidence on record showing Respondent is commonly known by the disputed domain names. The Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s disputed domain names resolve to a website that shows pictures of and has information on Complainant’s products. The Internet user then has the option of purchasing products similar to Complainant’s products. Complainant alleges that using its marks to attract Internet users to Respondent’s website for commercial gain is evidence that Respondent is not using the disputed domain names for a bona fide offering of goods or services or a noncommercial or fair use. The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”). Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the <maxitrol.org>, <naphcon-a.com>, <tobradex.net>, and <vigamox.net> domain names under Policy ¶ 4(a)(ii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that by Respondent using its MAXITROL,
NAPHCON-A, TOBRADEX, and VIGAMOX marks to attract Internet users to its
websites for financial gain, that Respondent has registered and used the
disputed domain names in bad faith by disrupting Complainant’s eye care
pharmaceutical business. The Panel finds
that Respondent’s use of Complainant’s marks to attract Internet users to its
website for financial gain disrupting Complainant’s business, is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat.
Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s
mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”);
see also
Complainant further argues that Respondent registered and used the disputed domain names in bad faith because it intentionally attempted to attract Internet users to its website for commercial gain. Complainant further submits that Respondent’s use of pictures of Complainant’s products on its website leads to confusion with Internet users about the operator of the website. The Panel finds that Respondent’s use of the disputed domain names to profit from Internet users’ confusion as to the sponsor of the website is further evidence of bad faith under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site). Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <maxitrol.org>, <naphcon-a.com>, <tobradex.net>, and <vigamox.net> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: March 18, 2010
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