Novartis AG v. Stefan Szaraz / Szari Solutions s.r.o.
Claim Number: FA1402001544006
Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is Stefan Szaraz / Szari Solutions s.r.o. (“Respondent”), Slovakia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <air-optik.net>, registered with GoDaddy.com, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 17, 2014; the National Arbitration Forum received payment on February 17, 2014.
On February 17, 2014, GoDaddy.com, LLC confirmed by email to the National Arbitration Forum that the <air-optik.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 February 18, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 10, 2014 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@air-optik.net. Also on February 18, 2014, 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.
A timely Response was received and determined to be complete on March 9, 2014.
On March 17, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin as Panelist.
On March 18, 2014, the Panel entered a procedural order requesting additional submissions. An Additional Submission was received from Respondent on March 28, 2014.
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 (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant manufactures and distributes products for vision care and eye health. Complainant has used the trademark AIR OPTIX in connection with its contact lens products and related Internet services for several years. Complainant owns various trademark registrations for the AIR OPTIX mark, including International Registrations with protection extended into Slovakia.
Respondent registered the disputed domain name <air-optik.net> on or about January 28, 2014. Complainant contends that this domain name is confusingly similar to its AIR OPTIX mark.
Complainant alleges that the disputed domain name is being used in connection with a website that includes links to direct competitors of Complainant. Complainant states that Respondent has no connection or affiliation with Complainant, that Complainant has not consented to Respondent’s use of the disputed domain name, and that neither Respondent nor its business is known by the name “AIR OPTIX.” On these grounds Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name.
Complainant asserts further that Respondent is using the domain name for a website that seeks to generate click-through revenue from users searching for information about Complainant and its contact lens products. Complainant alleges that Respondent had at least constructive notice of Complainant’s AIR OPTIX mark prior to its selection of the domain name, based upon Complainant’s trademark registrations. Complainant asserts that there is no plausible explanation for Respondent’s selection of the domain name, particularly in light of its use to direct consumers to competing contact lens products, other than to trade on Complainant’s goodwill.
B. Respondent
Respondent states that the disputed domain name was routed to Respondent’s primary domain name, <air-optic.net>, which Respondent uses for marketing activities related to its core business as an Internet service provider. Respondent states that it offers Internet services under the names “S-Optic” and “Air-Optic” for wired and wireless service respectively. In support of this statement, Respondent submitted a printscreen image of its primary website at <air‑optic.com>.
Respondent explains that the routing of the disputed domain name to Respondent’s primary domain name has been blocked by the provider, Go Daddy, and that Respondent has no connection with the sponsored listings that currently appear on the parked page. Respondent suggests that the “sponsored listings” that Complainant or its representatives viewed on the parked page may have been targeted links that resulted from their previous browsing activity, rather than being a result of any actions by Respondent. (Both Complainant’s and Respondent’s printouts of the page contain these statements: “This Web page is parked for FREE, courtesy of GoDaddy.com” and “Is this your domain? Let’s turn it into a website!”)
Respondent also denies that the disputed domain name is confusingly similar to Complainant’s mark. Respondent explains that in the Slovak language the letter “c” is often pronounced like the letter “k”, and that this is why Respondent registered the disputed domain name and routed it to Respondent’s primary domain name. Respondent notes that Complainant’s AIR OPTIX mark is pronounced differently in Slovak and therefore would not be confused with the disputed domain name, at least not by the intended audience of the primary domain name.
Respondent claims that it has rights or legitimate interests in the disputed domain name, based upon its registration and intended use of the name in connection with its business as described above, and that this use is a bona fide offering of services. Respondent denies any involvement in eye health services or contact lenses.
Respondent further denies Complainant’s allegations of bad faith. Respondent states that it does not have any agreement with any third party to generate clickthrough revenues using the disputed domain name, and that it intends to use the name solely to promote its own Internet and related services.
C. Additional Submissions
The Panel entered a procedural order requesting Respondent to submit evidence that Respondent is actively engaged in business as an Internet service provider, and that it is actively engaged in business under the name “Air Optic” or “Air Optik.” The order stated that printouts or screenshots of websites operated by or under the control of a Party shall be provided only if no other evidence is available.
In response to this request, Respondent submitted the following material:
(1) an electronic copy of a logo containing the words “AIR‑OPTIC”;
(2) an electronic copy of a flyer promoting Internet services using the words “AIR‑OPTIC”;
(3) a screenshot of the properties display for the above flyer, indicating a creation or modification date of September 17, 2013;
(4) an electronic copy of a Google Analytics report for the domain name <air‑optic.com> for the period February 25 through March 27, 2014, indicating (inter alia) 37 visits and 24 unique visitors during this period; and
(5) a copy of an email message from Go Daddy dated September 12, 2013, confirming Respondent’s registration of the domain names <air‑optic.net>, <air‑optic.com>, <air‑optic.info>, and <air‑optic.org>; and
(6) a copy of Respondent's license or registration with the Telecommunications Office of the Slovak Republic as an Internet network access provider, dated September 26, 2013.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights. The Panel finds that Complainant has not proved that Respondent lacks rights or legitimate interests in respect of the disputed domain name, nor that the disputed domain name was registered and has been used 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.
The primary differences between the disputed domain name and Complainant’s AIR OPTIX mark are that the letter “x” in the mark is replaced by the letter “k”; the space is replaced by a hyphen; and the top-level domain suffix “.net” is appended. These differences do not sufficiently diminish the similarity between the domain name and Complainant’s mark. See, e.g., Novartis AG v. Wall, FA 1484866 (Nat. Arb. Forum Mar. 24, 2013) (finding <airoptik.com> confusingly similar to AIR OPTIX); TV EARS, Inc. v. Orlando, FA 1534094 (Nat. Arb. Forum Jan. 8, 2014) (finding <tv‑ears.net> confusingly similar to TV EARS). The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Under paragraph 4(c)(i) of the Policy, the use of, or demonstrable preparations to use, a domain name in connection with a bona fide offering of goods or services prior to notice of the dispute demonstrates rights or legitimate interests for purposes of the Policy. Respondent claims that it has rights or legitimate interests in the domain name arising from its use in connection with Respondent’s business as an Internet service provider, and has submitted evidence to substantiate such use. The Panel considers this evidence, taken together, sufficient to indicate that Respondent has at least made demonstrable preparations to use the domain name in connection with a bona fide offering of services. The Panel therefore finds that Complainant has not met its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Respondent has offered plausible explanations both for its registration of the disputed domain name and for the content of the page to which it resolves. In light of these explanations and the evidence that Respondent has submitted, the Panel concludes that Respondent’s registration of the disputed domain name was not targeted at Complainant or its mark. Such targeting is required for bad faith under the Policy. See, e.g., Kanal, Inc. v. Domain Admin, FA 1478238 (Nat. Arb. Forum Feb. 12, 2013). The Panel therefore finds that Complainant has not met its burden of proving that the disputed domain name was registered and is being used in bad fiath.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <air-optik.net> domain name REMAIN WITH Respondent.
David E. Sorkin, Panelist
Dated: April 8, 2014
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