Alcon, Inc. and Alcon Laboratories, Inc. v.
TRIESENCE.COM
Claim Number: FA0806001203219
Complainant is Alcon, Inc. and Alcon Labratories, Inc. (“Complainant”), represented by Molly
Buck Richard, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <triesence.com>, registered with Namesdirect.
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 June 9, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 10, 2008.
On June 16, 2008, Namesdirect confirmed by e-mail to the National Arbitration Forum that the <triesence.com> domain name is registered with Namesdirect and that Respondent is the current registrant of the name. Namesdirect has verified that Respondent is bound by the Namesdirect 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 June
18, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 8, 2008
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 postmaster@triesence.com by
e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 14, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
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 <triesence.com> domain name is identical to Complainant’s TRIESENCE mark.
2. Respondent does not have any rights or legitimate interests in the <triesence.com> domain name.
3. Respondent registered and used the <triesence.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Alcon, Inc. and
Alcon Laboratories, Inc., is a global health care company in the business of
researching, developing and producing eye care products. Complainant distributes these products in
over 180 countries with sales reaching approximately US $5 billion as of
2006. Complainant registered the
TRIESENCE mark in association with its business, specifically for ophthalmic
pharmaceutical preparations for the treatment of macular edema. Complainant registered its TRIESENCE mark
with the United States Patent and Trademark Office (“USPTO”) on June 3, 2008
(Reg. No. 3,443,005) with a filing date of August 23, 2006. Additionally, on December 3, 2007, the
federal Food and Drug Administration announced its approval of the TRIESENCE
product.
Respondent, TRIESENCE.COM,
registered the disputed domain name on December 6, 2007, which forwards to a
website displaying the <scalpmeds.com> domain name featuring medications
for the scalp.
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.
USPTO registration of a mark creates a presumption of its
distinctiveness. Additionally,
successful registration of a mark allows a mark holder to establish rights that
date back to the initial filing of the application for registration. Thus, the Panel finds that Complainant’s
successful registration of its TRIESENCE mark
with the USPTO establishes sufficient rights in the mark that predate
Respondent’s registration of the <triesence.com> domain
name pursuant to Policy ¶ 4(a)(i). See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
Respondent’s <triesence.com> domain name incorporates Complainant’s TRIESENCE mark in its entirety with only the addition of the generic top-level domain “.com.” Many panels have stated that generic top-level domains are irrelevant when determining if a disputed domain name is identical or confusingly similar to a mark. In Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000), the panel found the <pomellato.com> domain name identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant. Likewise, the Panel finds that Respondent’s <triesence.com> domain name is identical to Complainant’s TRIESENCE mark according to Policy ¶ 4(a)(i). See Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”).
Therefore, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001), the panel set forth the approach that parties use when dealing with Policy ¶ 4(a)(ii), namely “[p]roving 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.” Additionally, when Respondent fails to respond to the Complaint, the presumption that Respondent has no rights or legitimate interests in the disputed domain name is furthered. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). This Panel finds that Complainant has created a prima facie case but continues to evaluate all of the evidence under Policy ¶ 4(c).
Complainant alleges that Respondent is not licensed or
otherwise authorized to use its TRIESENCE mark.
Moreover, Respondent’s use of Complainant’s entire mark in the disputed
domain name makes it difficult to infer a legitimate use. See eBay Inc. v. Hong, D2000-1633
(WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s
entire mark in domain names makes it difficult to infer a legitimate use). In addition, Internet users seeking
Complainant’s products will be diverted to Respondent’s website featuring scalp
medication, which does not represent 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). See Seiko Kabushiki Kaisha v. CS
into Tech, FA 198795 (Nat. Arb. Forum Dec.
6, 2003) (“Diverting customers, who are looking for products relating to the
famous SEIKO mark, to a website unrelated to the mark is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a
noncommercial or fair use under Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent
lacks rights and legitimate interests in the <triesence.com> domain name pursuant
to Policy ¶¶ 4(c)(i) and (iii).
Furthermore, Complainant alleges that Respondent is not commonly known by the <triesence.com> domain name even though the WHOIS information only has “TRIESENCE.COM” as the contact. Additionally, the fact that the <triesence.com> domain name resolves to a website featuring the <scalpmeds.com> domain name allows the Panel to infer that Respondent is actually commonly known by the <scalpmeds.com> domain name and not the <triesence.com> domain name 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 Great S. Wood Preserving, Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that the respondent was not commonly known by the domain name <greatsouthernwood.com> where the respondent linked the domain name to <bestoftheweb.com>); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
The Panel finds that Policy ¶ 4(a)(ii)
has been met.
Respondent registered and used the <triesence.com> domain name to
attract Internet users searching for Complainant to its own website, thus
creating a likelihood of confusion with Complainant’s affiliation with the
disputed domain name and corresponding website.
Respondent is attempting to commercially benefit by diverting these
Internet users to its website to sell scalp medication. See Bank of Am. Corp. v.
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <triesence.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: July 28, 2008
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