national arbitration forum

 

DECISION

 

Alcon Laboratories, Inc. and Alcon Manufacturing, Ltd. v. Lori Beer

Claim Number: FA0703000936961

 

PARTIES

Complainant is Alcon Laboratories, Inc. and Alcon Manufacturing, Ltd. (collectively, “Complainant”), represented by Kristy Mothersbaugh, of Richard Law Group, Inc., 8411 Preston Road, Suite 890, Dallas, TX 75225.  Respondent is Lori Beer (“Respondent”), 3600 W Orange Grove Rd., Albany 84095.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <online-patanol-pharmacy.info>, registered with Direct Information Pvt. Ltd. d/b/a PublicDomainRegistry.com.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 13, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 14, 2007.

 

On March 14, 2007, Direct Information Pvt. Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <online-patanol-pharmacy.info> domain name is registered with Direct Information Pvt. Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name.  Direct Information Pvt. Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the Direct Information Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 March 16, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 5, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@online-patanol-pharmacy.info by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On April 11, 2007, 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."  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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <online-patanol-pharmacy.info> domain name is confusingly similar to Complainant’s PATANOL mark.

 

2.      Respondent does not have any rights or legitimate interests in the <online-patanol-pharmacy.info> domain name.

 

3.      Respondent registered and used the <online-patanol-pharmacy.info> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Alcon Laboratories, Inc. and its affiliate Alcon Manufacturing, Ltd., holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the PATANOL mark (i.e., Reg. No. 2,113,082 issued on November 11, 1997).  Complainant has used the PATANOL mark for the manufacture, development, and distribution of eye care pharmaceutical and surgical products.  Complainant has registered the <patanol.com> domain name providing information about its PATANOL goods, which it uses in connection with the distribution of its pharmaceutical products to more than 180 countries.

 

Respondent registered the <online-patanol-pharmacy.info> domain name on July 4, 2006.  Respondent was using the disputed domain name to redirect Internet users to Respondent’s website displaying links to third-party websites unrelated to Complainant with some websites offering competing goods and services with Complainant’s goods and services.  The website is presently removed or inactivated.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the PATANOL mark through registration of the mark with the USPTO.  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).

 

Respondent’s <online-patanol-pharmacy.info> domain name is confusingly similar to Complainant’s PATANOL mark in that is uses Complainant’s mark in its entirety and merely adds the generic word “online” and the descriptive word “pharmacy” to the mark.  The mere addition of the word “online” to a mark is not sufficient to distinguish the disputed domain name from the mark.  See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark).  In addition, the addition of words that describe Complainant do not make a sufficient distinction between the disputed domain name and Complainant’s mark.  See, e.g., Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark).  Therefore, the Panel finds that the addition of these generic words does not alter the mark sufficiently to negate the confusingly similar aspects of Respondent’s domain name under Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant must make a prima facie case and then the burden shifts to Respondent to prove it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  Complainant’s assertion that Respondent has no rights or legitimate interests in the <online-patanol-pharmacy.info> domain name establishes a prima facie case.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.  Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).  The Panel assumes that Respondent has no rights or legitimate interests here because Respondent has failed to respond to the Complaint.  See America Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).  However, the Panel will consider all available evidence in determining whether Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).

 

Complainant alleges that Respondent is using the <online-patanol-pharmacy.info> domain name to redirect Internet users to Respondent’s website displaying links to third-party websites unrelated to Complainant.  Respondent’s use of the disputed domain name to divert Internet users to a website displaying links to unrelated websites is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names). 

 

Additionally, no evidence is present in the record to indicate that Respondent is commonly known by the <online-patanol-pharmacy.info> domain name.  Respondent’s WHOIS information identifies Respondent as “Lori Beer.”  Therefore, Respondent has failed to establish rights or legitimate interests in the <online-patanol-pharmacy.info> domain name under Policy ¶ 4(c)(ii).  See America West Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent has registered and was using the <online-patanol-pharmacy.info> domain name, which is confusingly similar to Complainant’s PATANOL mark, in order to redirect internet users to Respondent’s website displaying links to unrelated third-party websites offering competing goods and services.  The Panel finds that such use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).

 

Respondent was using the <online-patanol-pharmacy.info> domain name to redirect Internet users to Respondent’s website offering links to unrelated third parties for the assumed profit of Respondent.  The Panel finds that because Respondent’s domain name is confusingly similar to Complainant’s PATANOL mark, Internet users may become confused as to Complainant’s affiliation with the website.  Presumably, Respondent is profiting from this confusion in the form of click-through-fees.  As such, Respondent’s use of the <online-patanol-pharmacy.info> domain name to display links to unrelated third-party websites constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites.  Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); 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 Policy ¶ 4(a)(iii) has been satisfied.

                                                                                                                              

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <online-patanol-pharmacy.info> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Bruce E. Meyerson, Panelist

Dated:  April 24, 2007

 

 

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