Align Technology, Inc. v. faktor plus communications
Claim Number: FA2006001898708
Complainant is Align Technology, Inc. (“Complainant”), represented by Ansel Halliburton, California, USA. Respondent is faktor plus communications (“Respondent”), represented by Dominic Ruh, Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <suissealign.com>, registered with Realtime Register B.V..
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 2, 2020; the Forum received payment on June 2, 2020.
On June 4, 2020, Realtime Register B.V. confirmed by e-mail to the Forum that the <suissealign.com> domain name is registered with Realtime Register B.V. and that Respondent is the current registrant of the name. Realtime Register B.V. has verified that Respondent is bound by the Realtime Register B.V. 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 June 5, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 2020 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@suissealign.com. Also on June 5, 2020, 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 July 20, 2020.
Complainant’s Additional Submission was received on July 27, 2020.
On July 22, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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. Preliminary Issue 1: Trademark Dispute Outside the Scope of the UDRP
Complainant mentions that a number of trademark disputes have been filed by Complainant against Respondent in opposition to Respondent’s SWISS INSIDE SUISSEALIGN mark in a number of jurisdictions. Complainant provides arguments in the complaint that blend UDRP arguments and trademark law.
Respondent asserts Complainant’s marks are descriptive and has filed a cancellation request against Complainant’s mark with the EUIPO.
The Panel observes previous panels’ point of view that legitimate disputes should be decided by the courts. See Commercial Publishing Co. v. EarthComm, Inc., FA 95013 (Forum July 20, 2000) (“The policy relegates all “legitimate disputes” to the courts. Only cases of abusive registrations are intended to be subject to the streamline [sic] administrative dispute-resolution procedure.”); Abbott Labs. v. Patel, FA 740337 (Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else); and Stevenson Indus., Inc. v. CPAP-PRO Online, FA 105778 (Forum Apr. 25, 2002) (“If the existence of [rights or legitimate interests] turns on resolution of a legitimate trademark dispute, then Respondent must prevail, because such disputes are beyond the scope of this proceeding.”).
The Panel notes that the arguments in the complaint and the response blend UDRP arguments and trademark law. The Panel also notes that Complainant did claim the three elements of Paragraph 4(a) of the Policy in addition to the trademark disputes. As such, the Panel determined its own jurisdiction over the disputed domain name and chose to consider the Complaint and issue an order. See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (“Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.”); see also Telebrands Corp. v. Khalid, FA 467079 (Forum May 31, 2005) (decided to proceed with the dispute over the <telebrandspakistan.com> even though both the complainant and the respondent had registered marks in TELEBRANDS and TELE BRANDS PAKISTAN, respectively, because the panel thought it would be unfair and costly to treat the case as a trademark dispute when the “gravamen” of the proceeding was the alleged misuse of the domain name in dispute).
B. Preliminary Issue 2: Deficient Response
The Response was received with a file size over the 10MB limit; therefore the Forum does not consider the Response to be in compliance with ICANN Rule #5 (a) and/or the Annex to the Supplemental Rules. The Panel, at its discretion, decided to accept and consider the Response. See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
A. Complainant
i) Complainant offers clear braces services. Complainant has rights in the ALIGN mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,181,043, registered Dec. 5, 2006). The disputed domain name <suissealign.com> is confusingly similar to Complainant’s mark as Respondent merely adds the descriptive term “suisse” to Complainant’s fully incorporated mark.
ii) Respondent has no rights or legitimate interests in the disputed domain name as Respondent is no longer operating a business under the disputed domain name. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is attempting to pass off as Complainant.
iii) Respondent registered and used the disputed domain name in bad faith. Specifically, Respondent is attempting to sell the disputed domain name to Complainant for a sum of USD $1.3 million. Furthermore, Respondent is attempting to pass off as an affiliate of Complainant. Finally, Respondent had actual knowledge of Complainant’s rights in the ALIGN mark at the time of registration.
B. Respondent
i) Complainant’s ALIGN mark was found to be descriptive by the USPTO, and cancellation of Complainant’s mark in the European Union is pending. Respondent’s inclusion of the term “suisse” differentiates the disputed domain name enough to overcome a finding of confusing similarity with Complainant’s mark.
ii) Respondent’s business registrations and bankruptcies are not relevant in this dispute. Respondent has trademark rights to the SWISS INSIDE SUISSEALIGN mark and Respondent uses the disputed domain name in connection medical and dental technology. The typeface on the website ("SUISSE INSIDE SUISSEALIGN") together with the graphic elements is identical with Swiss trademark No. 722889, to which the defendant has contractual rights of use. The disputed domain name is based on the Swiss trademarks No. 722889 (SUISSE INSIDE SUISSEALIGN) to which Respondent has contractual rights of use. This Swiss trademark was previously registered in the Swiss Trademark Register on 24 October 2018 (available from swissreg.ch). Thus, it is not Respondent, but Complainant, who has caused this confusing similarity.
iii) Respondent did not register or use the disputed domain name in bad faith. The settlement offer was done to protect Respondent’s trademark and the suggested amount did not include the disputed domain name.
C. Complainant’s Additional Submission
i) Respondent discusses Complainant’s US trademark registration for the ALIGN word mark, US reg. no. 3259957. Respondent quotes from an Office Action dated April 25, 2005, in which the examiner argued that use of the mark for training services in class 41 was merely descriptive. Respondent fails to reveal that, after Complainant’s response to this Office Action, the examiner expressly withdrew this descriptiveness refusal as to training services, finding instead that the mark was not descriptive of the services in classes 41 and 44.
ii) Respondent’s falsely inflated laundry list of trademark filings, with its deceptive representation of the underlying goods and services and its attempt to falsely portray the state of global registries and marketplace realities, is irrelevant to the case in hand.
1. The disputed domain name was registered on March 28, 2015.
2. Complainant has established rights in the ALIGN mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,181,043, registered December 5, 2006).
3. Respondent has trademark rights to the SWISS INSIDE SUISSEALIGN mark (e.g., Swiss trademark Reg. No. 722889, registered on October 24, 2018).
4. Respondent uses the disputed domain name in connection medical and dental technology.
5. The typeface on the website of the disputed domain name ("SUISSE INSIDE SUISSEALIGN") together with the graphic elements is identical with Swiss trademark Reg. No. 722889, to which Respondent has contractual rights of use.
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 claims rights in the ALIGN mark through its registration of the mark with the USPTO (e.g., Reg. No. 3,181,043, registered Dec. 5, 2006). Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has rights in the ALIGN mark under Policy ¶ 4(a)(i).
Complainant argues the disputed domain name is confusingly similar to Complainant’s mark as Respondent merely adds the descriptive term “suisse” to Complainant’s fully incorporated mark. The Panel notes the dispute domain name also includes the “.com” generic top-level domain(“gTLD”). Adding a descriptive term and a gTLD to a complainant’s mark may not sufficiently distinguish a disputed domain name from the mark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as Respondent is no longer commonly known by the disputed domain name. Relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The Panel notes the WHOIS of record identifies the Respondent as “faktor plus communications.” Additionally, Complainant asserts that Respondent is no longer operating a business under the disputed domain name, as Respondent’s business has shut down and filed for bankruptcy.
Next, Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is attempting to pass off as Complainant. Using a disputed domain name to deceive Internet users into believing a respondent and complainant are affiliated in some manner may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).”). Here, Complainant provides screenshots of the disputed domain name’s resolving webpage, which displays Complainant’s mark and pictures of people with invisible braces.
Given the considerations above, the Panel finds that Complainant has made out a prima facie case. As the onus thus shifts to Respondent, the Panel must now see if Respondent has rebutted the prima face case and shown that it has a right or legitimate interest in the disputed domain name.
Respondent argues Respondent has trademark rights to the SWISS INSIDE SUISSEALIGN mark and Respondent uses the disputed domain name in connection medical and dental technology. A respondent may be found to be commonly known as the disputed domain name when evidence is provided that the respondent is doing business under the domain name. See Navigant Consulting, Inc. v Bradley Shive / Navigant Technologies, FA 1587953 (Forum Dec. 17, 2014) (finding that respondent had rights and legitimate interests in the <naviganttechnologies.com> and <naviganttech.com> domain names because respondent had provided evidence of doing business as “Navigant Technologies” “before Complainant’s registration of its NAVIGANT marks and before receiving a notice of [the domain] dispute”). Here, Respondent provides a lengthy explanation to the business mark up of Respondent’s business, which involve different registered companies under Swiss law, a trademark for the SWISS INSIDE SUISSEALIGN mark, and asserts that Respondent has not stopped using the domain name for these business ventures.
Respondent asserts that it has rights and legitimate interests in the disputed domain name because:
i) Respondent has contractual rights to use the Swiss trademark No. 722889 SWISS INSIDE SUISSALIGN (fig.), the International trademark No. 018005114 SWISS INSIDE SUISSALIGN (fig.), the EU trademark No. 018005114 SWISS INSIDE SUISSALIGN (fig.);
ii) The disputed domain name is on the Swiss trademarks No. 722889 (SUISSE INSIDE SUISSEALIGN) to which Respondent has contractual rights of use.
iii) SUISSALIGN operation has never been discontinued. Following the bankruptcy of factorplus Mosimann the disputed domain was transferred to Respondent under Swiss law. That is, to the sole proprietorship Suissealign, Patrice Mosimann (Suissealign for short), which is managed by Respondent.
iv) The website of the disputed domain name is not a sham website, as Suissealign is commercially active and the trademark applications were filed in connection with the business activities of Respondent. Respondent conducts its Suissalign business as a sole proprietorship Suissealign, Patrice Mosimann, in short Suissalign, which is why there is a legitimate interest in the disputed domain name.
v) The statement of Complainant that all business of SUISSALIGN has ceased is simply false. Since its foundation, there has always been business activity. Suissealign has always been present in the market, whether by placing advertisements, participating in health fairs, or attending annual conferences of the Swiss Society for Aligner Orthodontics (photo exhibition stand Suissealign GmbH, Screenshot Website of the Swiss Society for Aligner concerning annual conference SGAO, excerpt “Dental Tribune” are submitted as Exhibits). The current screenshot of orders shows that Suissealign is still active today. (Excerpt from the website of Suissealign concerning the selection of orders is submitted as Exhibits).
vi) Mr. Moser has registered the trademark SWISS INSIDE SUISSALIGN (fig.) in Switzerland, the EU, for Austria, Benelux, Germany, France, Italy, and Liechtenstein. Respondent has contractual rights to use the trademarks. Complainant's assertion that the trademark applications are only sham applications is a serious allegation against Mr. Moser, which is why he reserves the right to take legal action; and
vii) The fact that Mr. Mosimann is the entitled party to the above-mentioned trademarks additionally confirms Respondent's legitimate interest in the disputed domain name.
As the Panel finds that Respondent has successfully rebutted the prima facie case against it, it concludes that Respondent has rights or legitimate interests in the disputed domain name.
As the Panel concludes that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (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 Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).
Respondent argues that the settlement offer was done to protect Respondent’s trademark and the suggested amount did not include the disputed domain name. Prior panels have found that settlement discussions are inadmissible as evidence of bad faith. See Collegetown Relocation, L.L.C. v. Concept Software & Techs. Inc., FA 96555 (Forum Mar. 14, 2001) (finding that offers to sell a domain name made during settlement discussions are inadmissible). Additionally, an offer to sell a disputed domain name may be approprate when a respondent has rights and legitimate interest in the disputed domain name. See Etam, plc v. Alberta Hot Rods, D2000-1654 (WIPO Jan. 31, 2001) (“Respondent’s offer to sell the domain name does not constitute bad faith, in light of the fact that it has a legitimate interest in the domain name”). Here, Respondent argues that the intentions of the offer was an effort protect Respondent’s intellectual property, and that the offer does not include the disputed domain name. Therefore, the Panel finds Respondent did not register or use the disputed domain name in bad faith
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 <suissealign.com> domain name REMAIN WITH Respondent.
Ho Hyun Nahm, Esq., Panelist
Dated: August 1, 2020
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