Novartis AG v. ALEXVACDSANDBOOKS
Claim Number: FA1112001420352
Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is ALEXVACDSANDBOOKS (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freshlookpainting.co>, registered with GoDaddy.com, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 16, 2011; the National Arbitration Forum received payment on December 16, 2011.
On December 19, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <freshlookpainting.co> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 December 21, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 2012 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@freshlookpainting.co. Also on December 21, 2011, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 (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. 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <freshlookpainting.co> domain name is confusingly similar to Complainant’s FRESHLOOK mark.
2. Respondent does not have any rights or legitimate interests in the <freshlookpainting.co> domain name.
3. Respondent registered and used the <freshlookpainting.co> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Novartis AG, manufactures and distributes products relating to vision care and eye health. Complainant does business under the FRESHLOOK mark and holds a trademark registration for the FRESHLOOK mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,888,957 registered September 28, 2004).
Respondent, Michael Rorie/Alexcacdsandbooks, registered the <freshlookpainting.co> domain name on June 19, 2011. The disputed domain name resolves to a website that offers hyperlinks to websites whose businesses compete with 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."
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.
Complainant manufactures and distributes products relating to vision care and eye health. Complainant holds a trademark registration for the FRESHLOOK mark with the USPTO (Reg. No. 2,888,957 registered September 28, 2004). The Panel determines that by registering its mark with the USPTO, Complainant has effectively established rights in that mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant argues that the <freshlookpainting.co> domain name is confusingly similar to its FRESHLOOK mark. Complainant contends that Respondent incorporates the term “painting,” as well as the country code top level domain (“ccTLD”) “.co,” which are additions that do not properly distinguish the domain name from Complainant’s mark. The Panel concludes that adding a generic term, as well as a ccTLD to a mark, does not serve to properly differentiate the domain name from the mark under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Lockheed Martin Corp. v. Roberson, FA 323762 (Nat. Arb. Forum Oct. 19, 2004) (holding that the ccTLD does not differentiate the disputed domain name from Complainant’s mark). Consequently, the Panel determines that the <freshlookpainting.co> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant argues that Respondent possesses no rights or legitimate interests in the disputed domain name. Under Policy ¶ 4(a)(ii), Complainant has the burden of establishing a prima facie case supporting these allegations. After Complainant has successfully fulfilled this requirement, the burden is placed upon Respondent to show why it does have rights or interests in the domain name. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”). The Panel determines that Complainant was successful in meeting the burden of making a prima facie case. As a result of Respondent’s absence of response, the Panel may construe the failure to reply as an admission that Respondent has no rights or legitimate interests in the domain name. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Nonetheless, the Panel will consider the evidence provided to make a determination as to Respondent’s rights or legitimate interests in the domain name under Policy ¶ 4(c).
Complainant argues that Respondent is not known by the disputed domain name and that Complainant has not consented to Respondent’s use of the domain name. The WHOIS information identifies the domain name registrant as “Michael Rorie / Alexvacdsandbooks,” which does not provide any proof or support to the inference that Respondent is commonly known by the <freshlookpainting.co> domain name. In light of the lack of further evidence from Respondent, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent does not use the disputed domain name in the context of a bona fide offering of goods or services and that Respondent is not making a legitimate noncommercial or fair use of the domain name. The <freshlookpainting.co> domain name resolves to a website offering various hyperlinks corresponding to competing websites for visitors to click on, presumably to generate “click-through” revenue. The Panel holds that displaying hyperlinks to competitors’ businesses is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and that such use is not a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees . . . . is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered the <freshlookpainting.co> domain name in bad faith under Policy ¶ 4(b)(iii) because Respondent attempts to divert Internet users to Complainant’s competitors. The resolving website displays hyperlinks available for Internet users who visit the site to click on, which redirects them to competitors’ websites. The Panel finds that by misdirecting Internet users seeking Complainant’s products and sending them to its own website, Respondent’s activities amount to disruption of Complainant’s business and are evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant argues that the domain name serves to purposely reroute Internet traffic to the corresponding website to “increase its own Internet sales through association with” Complainant’s mark is additional evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). Complainant alleges that Respondent capitalizes from an unauthorized association with Complainant’s business because consumers are likely to be confused as to the affiliation between Complainant and the <freshlookpainting.co> domain name. The Panel finds that Respondent’s use of the domain name to attract Internet traffic, confuse consumers, and thus make a profit demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <freshlookpainting.co> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 7, 2012
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