Bausch & Lomb Incorporated and Eyeonics, Inc. v. Steven A. Shanbom
Claim Number: FA0910001292318
Complainant is Bausch
& Lomb Incorporated and
Eyeonics, Inc. (“Complainant”), represented by Kristen M. Walsh, of Nixon Peabody LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <crystalenshd.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 30, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 2, 2009.
On November 1, 2009, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <crystalenshd.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 November 6, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 26, 2009 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@crystalenshd.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 4, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <crystalenshd.com> domain name is confusingly similar to Complainant’s CRYSTALENS mark.
2. Respondent does not have any rights or legitimate interests in the <crystalenshd.com> domain name.
3. Respondent registered and used the <crystalenshd.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bausch & Lomb Incorporated and Eyeonics, Inc., develops, markets, and sells intraocular lenses. Complainant uses the CRYSTALENS mark to market its intraocular lenses. Complainant’s most recent product line is the CRYSTALENS high definition intraocular lenses. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its CRYSTALENS mark (e.g., Reg. No. 2,521,196 issued December 18, 2001).
Respondent, Steven A. Shanbo, registered the <crystalenshd.com> domain name April 19, 2008. The disputed domain name resolves to Respondent’s website that offers ophthalmology services related to Complainant’s intraocular lenses and offers some competing intraocular lenses products. In addition, after Complainant offered Respondent $10,000 worth of CRYSTALENS high definition intraocular lenses, Respondent counter offered with a demand for $50,000.
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 has registered the CRYSTALENS mark with the USPTO (e.g., Reg. No.
2,521,196 issued December 18, 2001). The Panel finds that Complainant has
established rights in the CRYSTALENS mark pursuant to Policy ¶ 4(a)(i) through its USPTO registration. See
Intel Corp. v. Macare, FA 660685 (Nat.
Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights
in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with
the USPTO); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007)
(finding that a trademark registration adequately demonstrates a complainant’s
rights in a mark under Policy ¶ 4(a)(i)).
Complainant contends Respondent’s <crystalenshd.com> domain name is confusingly similar to Complainant’s CRYSTALENS mark. The disputed domain name simply adds the descriptive term “hd,” which relates to Complainant’s CRYSTALENS high definition line of intraocular lenses, and adds the generic top-level domain (“gTLD”) “.com” to Complainant’s CRYSTALENS mark. The Panel finds the additions of a descriptive term and a gTLD are insufficient to adequately distinguish the disputed domain name from Complainant’s mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds Respondent’s <crystalenshd.com> domain name is confusingly similar to Complainant’s CRYSTALENS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <crystalenshd.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); 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).
Complainant asserts that Respondent is not authorized to use the CRYSTALENS mark. Respondent failed to offer evidence showing Respondent is commonly known by the <crystalenshd.com> domain name. The WHOIS information on the record lists Respondent as “Steven A. Shanbom” and there is no other evidence on the record showing Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
The <crystalenshd.com> domain name resolves to Respondent’s commercial website that offers ophthalmology services related to Complainant’s intraocular lenses and offers some competing intraocular lenses products. The Panel finds Respondent’s use of the confusingly similar disputed domain name for this purpose does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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 also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).
In addition, after Complainant offered Respondent $10,000 worth of CRYSTALENS high definition lenses in exchange for the disputed domain name, Respondent counter offered with a demand for $50,000. Previous panels have found that a respondent, offering a disputed domain name for sale for more than its out-of-pocket costs, has not made a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); 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 Policy ¶ 4(a)(ii) has been satisfied.
Respondent counter-offered Complainant’s offer of $10,000 worth of CRYSTALENS high definition lenses with a demand for $50,000 for the <crystalenshd.com> domain name. Previous panels have found that it does not matter that a complainant initiated the offer. Therefore, the Panel finds Respondent’s offer to sell the disputed domain name for sale for more than its out-of-pocket costs constitutes bad faith registration and use under Policy ¶ 4(b)(i). See Marrow v. iceT.com, D2000-1234 (WIPO Nov. 22, 2000) (stating that a panel should not “put much weight on the fact that it was the Complainant who contacted Respondent to see if it was interested in selling the domain name”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Respondent uses the <crystalenshd.com> domain name to resolve to its own commercial website. While Respondent is not strictly a competitor of Complainant in the intraocular lenses industry, Respondent does offer products from Complainant and Complainant’s competitors while offering its services. Internet users searching for Complainant or Complainant’s intraocular lenses may instead use Respondent’s services and purchase lenses from a competitor of Complainant. The Panel finds Respondent’s use of the disputed domain name disrupts Complainant’s intraocular lenses business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”).
Moreover, Respondent commercially benefits from its use of the confusingly similar disputed domain name. Respondent offers products and services likely of interest to Internet users interested in Complainant and Complainant’s intraocular lenses. The Internet users may become confused as to Complainant’s association with and sponsorship of the disputed domain name and resolving website. Respondent attempts to profit from this confusion. Therefore, the Panel finds Respondent’s use of the confusingly similar disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
The Panel finds 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 <crystalenshd.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 18, 2009
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