Bausch & Lomb Incorporated v. Gene Gracey
Claim Number: FA0708001058782
Complainant is Bausch & Lomb Incorporated (“Complainant”), represented by Kristen
M. Walsh, of Nixon Peabody LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sightsavers.com>, registered with the Name It Corporation d/b/a Nameservices.net.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On August 9, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 29, 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 firstname.lastname@example.org 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 <sightsavers.com> domain name is identical to Complainant’s SIGHT SAVERS mark.
2. Respondent does not have any rights or legitimate interests in the <sightsavers.com> domain name.
3. Respondent registered and used the <sightsavers.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bausch & Lomb Incorporated, holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the SIGHT SAVERS mark (Reg. No. 441,107 issued October 19, 1948). The SIGHT SAVERS mark was originally registered by the Dow Corning Corporation, but was assigned to Complainant in 1986. Complainant, and its predecessor in interest, have continuously used the SIGHT SAVERS mark since 1947 in connection with silicone treated polishing tissues used in the polishing of glass and other vitreous surfaces. Beginning in 1970, Complainant began to use the SIGHT SAVERS mark in connection with eyeglass care products, namely nose and temple pads and hinge rings.
Respondent registered the <sightsavers.com> domain name on April 28, 1999. The disputed domain name does not resolve to an active website. Additionally, on January 22, 2007, Respondent sent an e-mail to Complainant offering to sell the disputed domain name registration to Complainant for $995.
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.
Complainant asserts rights in the SIGHT SAVERS mark through
registration with the USPTO. The Panel
finds that Complainant’s timely registration and subsequent extensive use of
the mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum
The disputed domain name that Respondent registered is identical to Complainant’s SIGHT SAVERS mark, save the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that such a minor addition to Complainant’s registered mark fails to sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii) places the burden upon Complainant to make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant’s allegation that Respondent lacks rights and legitimate interests is sufficient and shifts the burden to Respondent to show that rights or legitimate interests in the disputed domain name exist under Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent failed to submit a Response to the Complaint which allows the Panel to presume that it holds no rights or legitimate interests in the disputed domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). Although no further analysis is required, the Panel will now review the evidence to determine if Respondent can establish rights or legitimate interests under Policy ¶ 4(c).
Nothing in the record, including the WHOIS information, leads the Panel to conclude that Respondent, “Gene Gracey,” is commonly known by the <sightsavers.com> domain name. Further, Complainant has not authorized Respondent to use its mark. Accordingly, the Panel finds that Respondent has failed to establish rights or legitimate interests under Policy ¶ 4(c)(ii). See 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); see also 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).
Respondent has failed to make an active use of the disputed domain name which it registered in April of 1999. Thus, the Panel finds that Respondent’s inactivity does not represent a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's passive holding of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
Respondent’s lack of rights and legitimate interests in the disputed domain name is further evidenced by Respondent’s offer to sell it to Complainant for an amount in excess of its out-of-pocket costs. See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent’s registration and failure to make active use of the disputed domain name in combination with its attempt to sell the disputed domain name to Complainant for an amount in excess of its out of pocket expenses is demonstrative of bad faith registration and use. See Cruzeiro Licenciamentos Ltda. v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that no active use of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale); see also Am. Online, Inc. v. Netsbest, FA 93563 (Nat. Arb. Forum Mar. 29, 2000) (finding bad faith where the respondent made no use of the domain name <icqguide.com> other than offering it for sale for $99,000).
The Panel finds that Complainant 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 <sightsavers.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 18, 2007
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