Bausch & Lomb, Inc. v. AWIN a/k/a JL Hasanudin
Claim Number: FA0206000114711
Complainant is Bausch & Lomb, Inc., Rochester, NY, USA (“Complainant”) represented by James D. Kole, of Nixon Peabody LLP. Respondent is AWIN a/k/a Jl. Hasanudin, Jakarta, INDIA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bauschlomb.com>, registered with GKG.net, Inc.
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.
David P. Miranda, Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 26, 2002; the Forum received a hard copy of the Complaint on June 27, 2002.
On June 28, 2002, GKG.net, Inc. confirmed by e-mail to the Forum that the domain name <bauschlomb.com> is registered with GKG.net, Inc. and that the Respondent is the current registrant of the name. GKG.net, Inc. has verified that Respondent is bound by the GKG.net, Inc. 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 July 3, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 23, 2002 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.
A timely Response was received and determined to be complete on July 17, 2002.
On July 29, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed David P. Miranda as Panelist.
Complainant requests that the domain name <bauschlomb.com> be transferred from Respondent to Complainant.
Complainant Bausch & Lomb claims that it has used the mark BAUSCH & LOMB for optical and other products since 1876, is the owner of several trademark registrations with the United States Patent and Trademark Office first registered as early as April 23, 1968, and these registrations remain in full force and effect. Complainant contends that the domain name <bauschlomb.com> is confusingly similar to its registered trademark Bausch & Lomb because it contains the mark absent the “&” (ampersand) element. Complainant further contends that Respondent has no rights or legitimate interest in the domain name <bauschlomb.com> because Respondent is in no way connected with the Complainant, has no authority to use Complainant’s marks and prior to notice of this dispute, Respondent has not established use of the domain name or any name corresponding to the domain name in connection with the bonafide offering of goods or services, the Respondent is not commonly known by the domain name and is not making a legitimate non-commercial or fair use of the domain name without intent for commercial gain. Complainant contends that Respondent has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration for valuable consideration in excess of out -of -pocket costs and attaches an e-mail in which the Respondent seeks to transfer the domain name for a fee. Complainant contends Respondent has no rights or legitimate interest in the domain name, but rather is engaged in trademark infringement, cybersquatting and violation of United States Trademark Laws.
Respondent contends that it chose the name <bauschlomb.com> because it is an abbreviation of its stockholders names and that it currently has in development a website under this domain name expected to be online in October of 2002 . Respondent is in the creative design business not the business of Complainant. Respondent provides one page from its website currently under development, that appears to be dated July 10, 2002. Respondent also states that it is seeking compensation for its registration fees as well as the cost of its website development in exchange for the domain name.
Panel finds that Complainant is the owner of Trademarks to BAUSCH & LOMB registered with the U.S. Patent and Trademark Office. The domain name <bauschlomb.com> is confusingly similar to Complainant’s trademark. The Respondent has no rights or legitimate interests in the domain name and the domain name has been registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 asserts that it has continuously used the mark BAUSCH & LOMB since 1876. Complainant provides proof, in the form of printouts from the United States Patent and Trademark Office’s online database, of 10 trademark registrations for the mark. The Complainant asserts that the <bauschlomb.com> domain name is confusingly similar to its BAUSCH & LOMB marks because it contains the BAUSCH & LOMB mark but for the “ampersand” symbol. Complainant satisfies the requirements of ICANN Policy paragraph 4(a)(i), and establishes confusing similarity to its trademark because ampersands are not allowed in domain names.See Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to Complainant”s WRIGHT & LATO mark, because the ampersand symbol is not reproducible in a URL); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (noting that PG&E’s home web page is found at <pge.com> because the ampersand symbol is not reproducible in a domain name); see also McKinsey Holdings, Inc. v. Indidom, D2000-1616 (WIPO Jan. 31, 2001) (finding that the removal of the ampersand from “McKinsey & Company” does not affect the user’s understanding of the domain name, and therefore the domain name <mckinseycompany.com> is identical and/or confusingly similar to the mark “McKinsey & Company”).
Rights or Legitimate Interests
Complainant contends Respondent has no rights or legitimate interest to the domain name, and that Respondent has no relationship to Complainant or the mark which has been used by Complainant for over 100 years. Respondent claims that the domain name was selected because it is an abbreviation of its stockholders names. Respondent further contends that it is preparing to launch its creative design business using the domain name in October of 2002. Respondent fails to submit any affidavits or other proof in support of its claim that the bauschlomb name is an abbreviation of its stockholders names. While a domain registrant may establish rights or legitimate interest in a domain name with proof that it is their personal name, the Respondent has failed to submit proof sufficient to establish this. With respect to Respondent’s intended use of the domain name for its creative design business the Respondent may establish rights or legitimate interest in a domain name by providing substantial evidence of its demonstrable preparations to use the domain name prior to receiving notice of the dispute. ICANN Policy paragraph 4(c)(i); see also, David J. Joseph Co. v. Barry, D2000-1418 (WIPO Jan. 2, 2001). Respondent received notification of this Complaint on July 3, 2002 and appears to be aware of the dispute as early as June 1, 2002 when it sent an e-mail to Complainant regarding transfer of ownership of the domain name. The print out of Respondent’s web page which is under development appears to be dated July 10, 2002. Respondent has failed to provide proof of, or even allege, use or demonstrable preparations to use the domain name prior to notice of the dispute. Respondent has failed to establish any rights or legitimate interest in the domain name.
Registration and Use in Bad Faith
The Complainant contends, that Respondent has registered and used the domain name in bad faith by incorporating Complainant’s mark primarily for the purpose of selling, renting or otherwise transferring the domain name registration for valuable consideration in excess of Respondent’s out of pocket costs. Complainant submits Respondent’s e-mail in which Respondent offers to transfer the domain name for a fee. Respondent does not dispute sending this e-mail. Respondent further states that in return for the transfer of the domain name it expects to be paid the cost of the registration fee for the domain name as well as unspecified “web site development” costs. General offers to sell a domain name, even if no specific price is demanded can be evidence of bad faith. See Am. Anti-Vivisection Soc’y v. “Infadot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000); see also Little Six, Inc. v. Domain For Sale, FA96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent”s offer to sell the domain names at issue to Complainant was evidence of bad faith). Although Respondent has failed to demand a specific price for the domain name, it is clear that it seeks a fee in excess of its out of pocket costs for purchase of the domain name. Thus, Respondent has acted in bad faith under the Policy.
The Panel determines that the domain name <bauschlomb.com> shall be transferred to Complainant. The registrar GKG.net, Inc. also known as GK Group, LLC is ordered to transfer <bauschlomb.com> to Complainant Bausch & Lomb.
David P. Miranda, Panelist
Dated: August 12, 2002
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