Alcon, Inc., and Alcon Research, Ltd. v. I-MED Pharma Inc. c/o Ilan Hofmann
Claim Number: FA1005001323075
Complainant is Alcon, Inc., and Alcon Research, Ltd. (“Complainant”), represented by James
F. Struthers, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <duovisc.com>, registered with 1 & 1 INTERNET 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 5, 2010.
On May 7, 2010, 1 & 1 INTERNET AG confirmed by e-mail to the National Arbitration Forum that the <duovisc.com> domain name is registered with 1 & 1 INTERNET AG and that Respondent is the current registrant of the name. 1 & 1 INTERNET AG has verified that Respondent is bound by the 1 & 1 INTERNET AG 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 May 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 27, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@duovisc.com by email. Also on May 7, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 1, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <duovisc.com> domain name is identical to Complainant’s DUOVISC mark.
2. Respondent does not have any rights or legitimate interests in the <duovisc.com> domain name.
3. Respondent registered and used the <duovisc.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Alcon, Inc., is a global healthcare company, specializing in eye-care products, with annual revenues of $6.5 billion. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its DUOVISC mark (e.g., Reg. No. 1,895,532 issued May 23, 1995). Complainant also owns trademark registrations with the Canadian Intellectual Property Office (“CIPO”) for its DUOVISC mark (e.g. Reg. No. TMA449277 issued October 27, 1995).
Respondent, I-Med Pharma Inc., registered the <duovisc.com> domain name on November 22, 2000. Respondent’s disputed domain name resolves to a website that offers eye-care products for sale in competition with Complainant.
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 submits evidence to show that it owns several trademark registrations worldwide for its DUOVISC mark, including the USPTO (e.g., Reg. No. 1,895,532 issued May 23, 1995) and CIPO (e.g. Reg. No. TMA449277 issued October 27, 1995). The Panel finds that Complainant has established rights in its mark under Policy ¶ 4(a)(i) through its trademark registrations with several governmental trademark authorities worldwide. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Respondent registered the <duovisc.com>
domain name on November 22, 2000.
Complainant contends that the disputed domain name is identical to its
DUOVISC mark. In support of this,
Complainant argues that previous panels have held that a disputed domain name
that incorporates a complainant’s entire mark with the addition of a generic
top-level domain (“gTLD”) is considered identical to the mark under Policy ¶
4(a)(i). The
Panel finds that Respondent’s disputed domain name is identical to
Complainant’s DUOVISC mark under Policy ¶ 4(a)(i) because case precedent is
clear that adding a gTLD, such as “.com,” to a mark is insufficient to
distinguish the disputed domain name from Complainant’s mark. See Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant argues that Respondent does not have rights and legitimate interests in the disputed domain name. Complainant must make a prima facie case to support such allegations under Policy ¶ 4(a)(ii). Upon Complainant’s production of a prima facie case the burden of proof shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). The Panel finds that Complainant has established a prima facie case, and that that the burden of proof is properly placed on Respondent to show that it possesses rights or legitimate interests in the <duovisc.com> domain name. Respondent has failed to respond to these proceedings so the Panel finds that it may assume that Respondent lacks rights and legitimate interests in the <duovisc.com> domain name under Policy ¶ 4(a)(ii). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). However, the Panel will evaluate the evidence on record in determining whether Respondent possesses rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant contends that Respondent is not licensed or authorized by Complainant to use its DUOVISC mark, and that Respondent is not commonly known by the disputed domain name. The WHOIS information for the <duovisc.com> domain name identifies “Ilan Hoffman” as the registrant of the disputed domain name. Respondent does not offer evidence to indicate that it is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <duovisc.com> domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant further alleges that Respondent is not using the <duovisc.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant offers screen shot evidence of the website that resolves from the <duovisc.com> domain name to show that Respondent is using the <duovisc.com> domain name to offer eye-care products for sale in competition with Complainant. The Panel finds that Respondent’s use of the identical <duovisc.com> domain name to display competing eye-care products of Complainant for sale is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial use 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent has disrupted Complainant’s eye-care product business through its registration and use of the <duovisc.com> domain name. Complainant argues that Respondent’s use of the disputed domain name to market and sell the products of Complainant’s competitors result in loss of business because Internet users seeking Complainant’s products will purchase the competing products from Respondent’s website. The Panel finds that Respondent’s registration and use of the disputed domain name was done in bad faith under Policy ¶ 4(b)(iii), where Respondent is using the disputed domain name to market and sell eye-care products of Complainant’s competitors in direct competition with Complainant. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Complainant further argues that Respondent registered and used the disputed domain name to intentionally attract Internet users to its website for commercial gain by using the identical <duovisc.com> domain name. Complainant argues that Respondent has attempted to unfairly benefit from the identical disputed domain name and profit commercially, and that such use is further evidence of bad faith registration and use. The Panel agrees and finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv), where Respondent is using the disputed domain name to operate a commercial website in competition with Complainant. 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 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 TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <duovisc.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 14, 2010
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