Allergan Sales, LLC v. ELLIOT ALDERSON
Claim Number: FA2207002005050
Complainant is Allergan Sales, LLC (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is ELLIOT ALDERSON (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vuityoptic.net>, registered with Google LLC.
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.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 20, 2022; the Forum received payment on July 20, 2022.
On July 21, 2022, Google LLC confirmed by e-mail to the Forum that the <vuityoptic.net> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google LLC 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 July 22, 2022, the Forum served the Complaint and all Annexes, including a Turkish and English language Written Notice of the Complaint, setting a deadline of August 11, 2022 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@vuityoptic.net. Also on July 22, 2022, the Turkish and English language 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 Forum transmitted to the parties a Notification of Respondent Default.
On August 16, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
The Panel notes that the Registration Agreement is written in the Turkish language, thereby prima facie making Turkish the language of the proceedings.
However, Complainant submits that because Respondent is conversant and proficient in the English language, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English).
Complainant contends Respondent’s website available at the disputed domain name uses English characters and words therein, with sentences such as “That Improves Age-Related Blurry Near Vision (Presbyopia) in Adults”, that the domain name contains the trademark VUITY with the added English word “optic” and that it also uses the additional English language generic or descriptive term “net”. This suggests that Respondent has sufficient facility in the English language to enable it to take part in the proceedings in English.
Pursuant to UDRP Rule 11(a), the Panel therefore finds that persuasive evidence has been adduced by Complainant to show that the Respondent is conversant and proficient in the English language. After considering all the circumstance of the case, the Panel determines that the proceeding will be conducted in English.
A. Complainant
Complainant made the following contentions.
Complainant, Allergan Sales, LLC, is a pharmaceutical company in the field of eye care. Complainant has rights in the VUITY mark through its registration with multiple trademark agencies including the Mexican Institute of Industrial Property (“IMPI”) (e.g., Reg. No. 2,317,237, registered on August 10, 2021). See Compl. Ex. C. Respondent’s <vuityoptic.net> domain name is identical or confusingly similar to Complainant’s VUITY mark as it incorporates the mark in its entirety while adding the generic or descriptive word “optic” and the “.net” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <vuityoptic.net> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its mark in the disputed domain name. Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead passes off as Complainant while purporting to sell Complainant’s products.
Respondent registered and uses the <vuityoptic.net> domain name in bad faith. Respondent disrupts Complainant’s business while passing off as Complainant and creating a false sense of affiliation with Complainant. Additionally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States pharmaceutical company in the field of eye care.
2. Complainant has established its rights in the VUITY mark through its registration of the mark with multiple trademark agencies including the Mexican Institute of Industrial Property (“IMPI”) (e.g., Reg. No. 2,317,237, registered on August 10, 2021).
3. Respondent registered the <vuityoptic.net> domain name on July 18, 2022.
4. Respondent has caused the disputed domain name to be used to pass itself off as Complainant while purporting to sell Complainant’s products.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s VUITY mark. Complainant argues that Respondent’s <vuityoptic.net> domain name is identical or confusingly similar to Complainant’s VUITY mark. Under Policy ¶ 4(a)(i), a domain name is generally considered confusingly similar to a mark it incorporates where it adds a generic or descriptive term and the “.net” gTLD. See Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”). The disputed domain name incorporates the mark in its entirety while adding the generic or descriptive word “optic” and the “.net” gTLD. Therefore, as the Panel agrees, it finds Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
(a) Respondent has chosen to take Complainant’s VUITY mark and to use it in its domain name adding the generic or descriptive word “optic” to the mark;
(b) Respondent registered the domain name on July 18, 2022;
(c) Respondent has caused the disputed domain name to be used to pass itself off as Complainant while purporting to sell Complainant’s products;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent is not commonly known by the <vuityoptic.net> domain name, nor has Complainant authorized or licensed Respondent to use its mark in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of evidence demonstrating otherwise may affirm a complainant’s submission that it never authorized or licensed respondent to use its mark in the disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sept. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). Here, the WHOIS information identifies Respondent as “Elliot Alderson and nothing in the record rebuts Complainant’s submission that it never authorized or licensed Respondent to use its mark in the disputed domain name. See Registrar Verification Email. Thus, as the Panel agrees, it finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant submits that Respondent is not using the <vuityoptic.net> domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead is using it to pass itself off as Complainant. Under Policy ¶¶ 4(c)(i) and (iii), passing off as a complainant does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Complainant provides screenshots of the disputed domain name’s resolving website, which displays Complainant’s mark and logo and offers its products for sale without a prescription, even though a prescription is required for consumers to obtain Complainant’s legitimate product. See Compl. Ex. F. Thus, as the Panel agrees, it finds Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant argues that Respondent is not using the <vuityoptic.net> domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use by purporting to offer Complainant’s products for sale. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to sell a complainant’s products while unauthorized to do so is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See The Lincoln Electric Company v. Privacy protection service - whoisproxy.ru, FA 1651493 (Forum Jan. 13, 2016) (noting that, as Respondent used the disputed domain to promote Complainant’s distributor without license to do so, Respondent did not demonstrate any bona fide offering of goods or services or any legitimate noncommercial or fair use). The Panel notes Complainant’s screenshots of the resolving website, where it offers Complainant’s products for sale without a prescription, even though a prescription is required for consumers to obtain Complainant’s legitimate product. See Compl. Ex. F. As the Panel agrees, it finds Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <vuityoptic.net> domain name in bad faith by disrupting Complainant’s business. Under Policy ¶ 4(b)(iii), using a disputed domain name to offer a complainant’s products for sale may be a disruption of its business and thus evidence of bad faith registration and use. See Lambros v. Brown, FA 198963 (Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”). The Panel notes that the domain name’s resolving website offers Complainant’s products for sale without authorization and without requiring a prescription, as required for Complainant’s legitimate products. See Compl. Ex. F. Therefore, as the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant contends that Respondent registered and uses the <vuityoptic.net> domain name in bad faith by passing itself off as Complainant and creating a false sense of affiliation with Complainant. Under Policy ¶ 4(b)(iv), passing off as a complainant and creating a false sense of affiliation is evidence of bad faith registration and use. See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).The Panel notes that the domain name includes the mark in its entirety and its resolving website displays Complainant’s mark and products for sale. See Compl. Ex. F. As the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Thirdly, Complainant argues that Respondent registered the <vuityoptic.net> domain name with bad faith actual knowledge of Complainant’s rights in the VUITY mark. Under Policy ¶ 4(a)(iii), actual knowledge may be demonstrated by incorporation of a mark into a disputed domain name, and where a website uses the mark and logo and hosts content related to the complainant’s business. See WordPress Foundation v. mich delorme / mich d dots tlds, FA1410001584295 (Forum Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”). The Panel again notes that the resolving website displays Complainant’s mark, logo, and purports to offer its products for sale. See Compl. Ex. F. Therefore, as the Panel agrees, it finds Respondent had actual knowledge of Complainant’s rights in the VUITY mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the VUITY mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vuityoptic.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: August 17, 2022
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