Novartis AG v. Name Administration Inc. (BVI)
Claim Number: FA1403001548210
Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is Name Administration Inc. (BVI) (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clearcare.com>, registered with iRegistry Corp.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Hon. Charles K. McCotter, Jr. (Ret.), Alan L. Limbury, Esq. and James A. Carmody, Esq. (Chair), as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 12, 2014; the National Arbitration Forum received payment on March 12, 2014.
On March 18, 2014, iRegistry Corp. confirmed by e-mail to the National Arbitration Forum that the <clearcare.com> domain name is registered with iRegistry Corp. and that Respondent is the current registrant of the name. iRegistry Corp. has verified that Respondent is bound by the iRegistry Corp. 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 March 18, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 7, 2014 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@clearcare.com. Also on March 18, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 April 7, 2014.
On April 16, 2014, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Charles K. McCotter, Jr. (Ret.), Alan L. Limbury, Esq. and James A. Carmody, Esq. (Chair), as Panelists.
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 makes the following assertions:
Complainant uses the CLEAR CARE mark in connection with the sale of contact lens products and holds United States Patent and Trademark Office ("USPTO") trademark registration for the CLEAR CARE mark (Reg. No. 2,738,908 filed Jun. 6, 2001; registered Jul. 15, 2003).
Respondent’s <clearcare.com> domain name is identical to the CLEAR CARE mark, as the only difference is the introduction of the generic top-level domain (“gTLD”) “.com.”
Respondent is not known by the mark and is otherwise not commonly known by the <clearcare.com> domain name. Respondent uses the <clearcare.com> domain name to advertise healthcare companies.
Respondent is an owner of approximately 245,928 domain names. As such it is no surprise that Respondent has the <clearcare.com> domain name up for sale for $5,000. Complainant bid on the domain name, but Respondent never responded. Instead, Respondent asked for $48,000 on October 7, 2013, and later changed the asking price to $80,000 on November 14, 2013. Respondent’s attempts to ratchet the sale price of the <clearcare.com> domain name from $5,000 all the way up to $80,000 implies bad faith. Respondent is disrupting Complainant’s business through its use of the <clearcare.com> domain name.
Respondent had constructive notice of Complainant’s CLEAR CARE mark prior to domain name registration. Complainant alleges that Respondent registered the <clearcare.com> domain name on November 20, 2007.
B. Respondent makes the following assertions:
Respondent won an auction for this domain name in February 2005, and paid $310 at that time for this domain name. Complainant is incorrect in claiming Respondent held the domain name since only 2007.
Respondent sees no need to attack Complainant’s contentions under Policy ¶ 4(a)(i), as Respondent can illustrate rights and legitimate interests in the domain name, along with a lack of bad faith registration and use. Respondent notes however that the CLEAR CARE mark is not inherently distinctive and that several concurrent users for this mark exist in the United States.
Respondent is well known for its efforts to obtain abandoned domain name registrations through auction services. Respondent’s business is to register many domain names that consist of descriptive connotations and using the domain names to advertise categories of goods or services that bear some relation to the terms in the domain name. Respondent has at times prevailed under the UDRP through its use of domain names in this manner. Respondent prevails because its domain names are not used to target the types of products sold by any specific trademark holder, only a broad range of goods related to the “key words” that underlie the domain name. The <clearcare.com> domain name features hyperlinks related to “care,” but none of the hyperlinks concern contact lens goods or any of the other products Complainant sells under the CLEAR CARE mark.
Respondent did not act in bad faith by registering the <clearcare.com> domain name. The phrase “clear care” is sufficiently non-distinctive, and used by a number of businesses. Respondent registered and has used the domain name for purposes of targeted advertising of any content related to the phrase “clear care.” Complainant cannot illustrate that the phrase “clear care” is distinctive enough to warrant a finding of bad faith registration.
Complainant has failed to show it was Respondent’s “primary purpose” to register the domain name for purposes of reselling it to Complainant. Respondent held onto the domain name for over nine years and used it to advertise the unrelated companies promoted through the <clearcare.com> domain name’s website.
Complainant cannot claim that its business has been seriously disrupted by the <clearcare.com> domain name when it has waited more than nine years to pursue this claim. While the doctrine of laches is not always applied by panels in UDRP proceedings, it should nonetheless be evident that a nine year delay undermines any argument that Complainant has seriously witnessed a disruption of its business as a result of this domain name.
Complainant uses the CLEAR CARE mark in connection with the sale of contact lens products. Complainant holds USPTO trademark registration for the CLEAR CARE mark (Reg. No. 2,738,908 registered July 15, 2003, filed June 6, 2001). Respondent does not dispute that Complainant has rights in its CLEAR CARE mark or that the domain name at issue is identical or confusingly similar to that mark.
Respondent is the owner of many thousands of domain names which it obtains at auctions and otherwise. The <clearcare.com> domain name features hyperlinks related to “care,” but none of the hyperlinks concern contact lens goods or any of the other products Complainant sells under the CLEAR CARE mark. Respondent offers many of its domain names for sale and offered the domain name at issue for sale. Complainant bid on <clearcare.com> but was apparently not able to come to a price acceptable to Respondent.
Owing to the fact that Complainant waited more than nine years following registration of the domain name at issue to bring this action, there is scant evidence, if any, that <clearcare.com> and/or the resolving website caused disruption of Complainant's business.
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.
Complainant uses the CLEAR CARE mark in connection with the sale of contact lens products and holds USPTO trademark registration for the CLEAR CARE mark (Reg. No. 2,738,908 registered July 15, 2003, filed June 6, 2001). Complainant’s Policy ¶ 4(a)(i) rights in the CLEAR CARE mark are effective back to the June 6, 2001 filing date of the trademark with the USPTO. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Respondent’s <clearcare.com> domain name is identical to the CLEAR CARE mark, as the only difference is the introduction of the gTLD “.com.”
Respondent does not dispute that Complainant has rights in its CLEAR CARE mark or that the domain name at issue is identical or confusingly similar to that mark.
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
In this case, Respondent is well known for its efforts to obtain abandoned domain name registrations through auction services. Respondent’s business is to register many domain names that consist of descriptive connotations and using the domain names to advertise categories of goods or services that bear some relation to the terms in the domain names. Respondent's domain names are not used to target the types of products sold by any specific trademark holder, only a broad range of goods related to the “key words” that underlie the domain name. The <clearcare.com> domain name features hyperlinks related to “care,” but none of the hyperlinks concern contact lens goods or any of the other products Complainant sells under the CLEAR CARE mark. Respondent’s use of the <clearcare.com> domain name is a protectable Policy ¶ 4(c)(i) bona fide offering of goods, namely an offering of non-competitive related goods vis-à-vis hyperlink advertisements. See Multicast Media Networks, LLC v. MDNH, Inc., FA 434268 (Nat. Arb. Forum Apr. 28, 2005) (finding that the respondent’s use of the disputed domain name to operate a pay-per-click website from which Respondent derives revenue was considered a bona fide use within the meaning of Policy ¶ 4(c)(i), especially considering the extended period of such use). It appears to the Panel that Respondent has rights and legitimate interests in the domain name at issue.
The Panel finds that Policy ¶ 4(a)(ii) has not been established.
Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Since the Panel concludes that Respondent has rights or legitimate interests in the <clearcare.com> domain name pursuant to Policy ¶ 4(a)(ii), it also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Further, the Panel finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Complainant cannot credibly claim that its business has been seriously disrupted by the <clearcare.com> domain name or the resolving webpage, because Respondent has been using the disputed domain name for nine years prior to Complainant's bringing this action. Further, the Panel finds that Respondent’s use of the domain name for purposes of an unrelated hyperlink directory cannot rightfully constitute a Policy ¶ 4(b)(iii) bad faith disruption of Complainant’s business. See Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding the domain name <seminarsuccess.com> to be generic and that the respondent registered and used the domain name in good faith “because Respondent selected the name in good faith for its web site, and was offering services under the domain name prior to the initiation of the dispute”).
The Panel finds that Policy ¶ 4(a)(iii) has not been established.
Doctrine of Laches
Based upon the facts found above, the Panel would also find that the equitable doctrine of laches militates in favor of the denial of relief for Complainant. See, e.g., Wiluna Holdings, LLC v. Michael Stadlin / IMS Internte Management Services GmbH, FA1311001529658 (Nat. Arb. Forum January 13, 2014), The Panel also notes that the parties do not dispute that Respondent registered the disputed domain name on April 2, 2006, around seven years prior to this proceeding. It appears to the Panel that any business disruption or confusion suffered by Complainant as a result of Respondent's domain name registration was either non-existent or de minimis, else Complainant would have taken action in a more timely fashion. Previous panels have found that the principles associated with the equitable doctrine of laches may inform the panel in cases such as this. See Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003) (“Although laches by itself is not a defense to a complaint brought under the Policy, Complainant's delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith.”); Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defence in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <clearcare.com> domain name REMAIN WITH Respondent.
James A. Carmody, Esq. (Chair)
Hon. Charles K. McCotter, Jr. (Ret.),
Alan L. Limbury, Esq.
Dated: April 24, 2014
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