Alcon Manufacturing, Ltd. V. Ilan Hofman c/o I-MED Pharma, Inc.
Claim Number: FA0707001036692
Complainant is Alcon Manufacturing, Ltd. (“Complainant”), represented by Molly
Buck Richard, of Richard Law Group,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <viscoat.com>, registered with Schlund+Partner Ag.
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.
Honorable Paul A. Dorf, (Ret.), as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On July 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 13, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <viscoat.com> domain name is identical to Complainant’s VISCOAT mark.
2. Respondent does not have any rights or legitimate interests in the <viscoat.com> domain name.
3. Respondent registered and used the <viscoat.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a global health care company that specializes
in eye care products. The Complainant
has continuously used the VISCOAT mark in commerce since 1983 in connection
with ophthalmologic solutions.
Complainant has registered the VISCOAT mark in numerous jurisdictions
domain name was registered on
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.
Respondent’s <viscoat.com> domain name is identical to Complainant’s mark except for the addition of a generic Top Level Domain (“gTLD”). The addition of a gTLD is irrelevant in making an identical or confusingly similar analysis under Policy ¶ 4(a)(i). As such, the Panel finds the disputed domain name to be identical to Complainant’s mark, pursuant to Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that the domain name <nike.net> is identical to the complainant’s famous NIKE mark).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii),
Complainant must initially make out a prima
facie case that Respondent has no rights or legitimate interests in the
domain name at issue. See VeriSign Inc. v. VeneSign
Respondent has failed to submit a Response to the Complaint. The Panel thus presumes that Respondent has
no rights or legitimate interests in the <viscoat.com>
domain name, but will still
consider all the available evidence with respect to the factors listed in
Policy ¶ 4(c) before making this determination.
See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum
Nowhere in the record, including Respondent’s WHOIS information, does it indicate that Respondent is, or ever has been, commonly known by the <viscoat.com> domain name. Further, Respondent has not sought, nor has Complainant granted, a license or permission to Respondent to use Complainant’s mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Respondent’s disputed domain name is identical to
Complainant’s VISCOAT mark and resolves to a commercial website offering
products both in competition with those offered under Complainant’s mark and
unrelated to Complainant’s mark.
Consequently, the Panel finds that Respondent is not making either 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), and therefore has no rights or legitimate interests in the <viscoat.com> domain name. See eBay Inc. v. Hong,
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
The disputed domain name is identical to Complainant’s mark
and it resolves to a website that features products that compete with those
products offered under Complainant’s mark.
The Panel finds this to be evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See S. Exposure
v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum
Respondent’s <viscoat.com> domain name contains Complainant’s VISMARK mark in its entirety and resolves to a website sells products that compete with those products offered under Complainant’s VISCOAT mark. The Panel finds this to be further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s SAFLOK mark illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel concludes 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 <viscoat.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf, (Ret.), Panelist
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