Novartis AG v. ICS INC.
Claim Number: FA1212001477529
Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwfreshlook.com>, registered with Enom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 27, 2012; the National Arbitration Forum received payment on December 27, 2012.
On December 27, 2012, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <wwwfreshlook.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 January 2, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 22, 2013 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@wwwfreshlook.com. Also on January 2, 2013, 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 January 28, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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
a) Complainant has rights in the FRESHLOOK mark in connection with contact lenses. Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registration for the FRESHLOOK mark (Reg. No. 2,888,957 registered Sep. 28, 2004). See Complainant’s Exhibit 2.
b) The <wwwfreshlook.com> domain name is confusingly similar to the FRESHLOOK mark. Respondent merely adds the prefix “www” and the generic top-level domain (“gTLD”) “.com” to the FRESHLOOK mark in the domain name.
c) Respondent has no rights or legitimate interests in the <wwwfreshlook.com> domain name. Respondent is not known by the <wwwfreshlook.com> domain name, Respondent is not connected to or affiliated with Complainant, and Complainant has not consented to Respondent’s use of the FRESHLOOK mark.
d) Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The <wwwfreshlook.com> domain name is used to operate a click-through website where revenue is generated from Internet users searching for information about Complainant and its products by diverting them to competing goods.
e) Respondent’s hosting of a click-through links website on the <wwwfreshlook.com> domain name for commercial gain is evidence of Respondent’s bad faith.
f) Respondent had constructive notice of Complainant’s rights in the FRESHLOOK mark given Complainant’s registration of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its FRESHLOOK mark.
2. Respondent’s <wwwfreshlook.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain 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.
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.”).
Complainant contends that it has rights in the FRESHLOOK mark in connection with contact lenses. Complainant demonstrates that it is the owner of the USPTO registration for the FRESHLOOK mark (Reg. No. 2,888,957 registered Sep. 28, 2004). See Complainant’s Exhibit 2. Panels have found that, regardless of the location of the parties, the registration of a mark with a federal trademark authority is evidence of rights in a mark. 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 Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel finds that Complainant has rights in the FRESHLOOK mark pursuant to Policy ¶ 4(a)(i).
Complainant next alleges that the <wwwfreshlook.com> domain name is confusingly similar to the FRESHLOOK mark. Complainant asserts that Respondent merely adds the prefix “www” and the gTLD “.com” to the FRESHLOOK mark in the domain name. In Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003), the panel held that the addition of the prefix “www” failed to create a distinction between the domain name and the mark it incorporated. The panel in Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), similarly found that the addition of a gTLD did not prevent the panel from finding confusing similarity. Therefore, the Panel finds that Respondent’s <wwwfreshlook.com> domain name is confusingly similar to Complainant’s FRESHLOOK mark under Policy ¶ 4(a)(i).
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.”).
Complainant asserts that Respondent has no rights or legitimate interests in the <wwwfreshlook.com> domain name. Complainant argues that Respondent is not known by the <wwwfreshlook.com> domain name, Respondent is not connected to or affiliated with Complainant, and Complainant has not consented to Respondent’s use of the FRESHLOOK mark. Additionally, the Panel notes that the WHOIS record for the disputed domain name lists “ICS INC.” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the <wwwfreshlook.com> domain name pursuant to 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).
Next, Complainant contends that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. According to Complainant, the <wwwfreshlook.com> domain name is used to operate a click-through website where revenue is generated from Internet users searching for information about Complainant and its products by diverting them to competing goods. According to the screenshot that Complainant provides as evidence of Respondent’s use, the Panel notes that these links are listed under headings such as “Acuvue Tru Eye” and “Color Blend Contacts.” See Complainant’s Exhibit 5. The panel in Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), held 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). Therefore, the Panel finds that the <wwwfreshlook.com> domain name is being used for neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Complainant contends that Respondent’s hosting of a click-through links website on the <wwwfreshlook.com> domain name for commercial gain is evidence of Respondent’s bad faith. The Panel notes that the <wwwfreshlook.com> domain name resolves to a website which hosts competing links displayed as “Halloween Eye Lenses” and “Colored Eye Contacts.” See Complainant’s Exhibit 5. Therefore, the Panel finds that Respondent registered and uses the <wwwfreshlook.com> domain name in a bad faith attempt to take commercial advantage of Internet users’ mistakes under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Complainant alleges that Respondent must have had constructive notice of Complainant's rights in the FRESHLOOK mark prior to registration of the domain names because of Complainant's use of the mark and its trademark registrations with the USPTO. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwfreshlook.com> domain name be TRANSFERRED from Respondent to Complainant..
Tyrus R. Atkinson. Jr., Panelist
Dated: February 8, 2013
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