Bausch & Lomb Incorporated v. Yukio Hatoyama / www.SecureNames.org
Claim Number: FA1008001340435
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 <bauschlomb.org>, registered with Name.com, LLC (R1288-LROR).
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 August 11, 2010.
On August 12, 2010, Name.com, LLC (R1288-LROR) confirmed by e-mail to the National Arbitration Forum that the <bauschlomb.org> domain name is registered with Name.com, LLC (R1288-LROR) and that Respondent is the current registrant of the name. Name.com, LLC (R1288-LROR) has verified that Respondent is bound by the Name.com, LLC (R1288-LROR) 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 August 17, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 7, 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@bauschlomb.org by e-mail. Also on August 17, 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 September 16, 2010, 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" 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 <bauschlomb.org> domain name is identical to Complainant’s BAUSCH & LOMB mark.
2. Respondent does not have any rights or legitimate interests in the <bauschlomb.org> domain name.
3. Respondent registered and used the <bauschlomb.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bausch & Lomb Incorporated, is an international eye healthcare company. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BAUSCH & LOMB mark (e.g., Reg. No. 1,692,386 registered June 9, 1992).
Respondent registered the <bauschlomb.org> domain name on November 18, 2009. The disputed domain name resolves to a website that provides links to discussion or comment pages relating to Complainant or its goods and services. Respondent offered to sell the disputed domain name for “at least $1900” to Complainant after Complainant sent Respondent a cease-and-desist letter.
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 BAUSCH & LOMB mark
through its numerous registrations of the mark with the USPTO (e.g., Reg. No. 1,692,386 registered June
9, 1992). The Panel finds these
trademark registrations sufficiently establish Complainant’s rights in the
BAUSCH & LOMB mark pursuant to Policy ¶ 4(a)(i). See
Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006)
(finding that the complainant’s registration of the DISNEY trademark with the USPTO
prior to the respondent’s registration of the disputed domain name is
sufficient to prove that the complainant has rights in the mark pursuant to
Policy ¶ 4(a)(i)); see also Reebok
Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21,
2005) (finding trademark registration with the USPTO was adequate to establish
rights pursuant to Policy ¶ 4(a)(i)). The Panel also finds it is irrelevant whether
Complainant holds a registration with the trademark authority in the country in
which Respondent resides. See Renaissance Hotel Holdings, Inc. v. Renaissance
Complainant argues that Respondent’s <bauschlomb.org>
domain name is confusingly similar to its BAUSCH & LOMB mark. Respondent fully incorporates Complainant’s
mark in the disputed domain name.
Respondent then deletes the spaces between the words in Complainant’s
mark and omits the ampersand (“&”) symbol from the mark. Finally, Respondent affixes the generic
top-level domain (“gTLD”) “.org” to Complainant’s mark. The Panel finds the deletion of spaces,
omission of an ampersand, and addition of a gTLD do not distinguish a domain
name from a mark. See Bond & Co. Jewelers, Inc. v.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first establish a prima facie case establishing that Respondent has no rights and legitimate interests in the <bauschlomb.org> domain name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to show it has rights or legitimate interests in the disputed domain name pursuant to the guidelines in Policy ¶ 4(c). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel may presume Respondent has no rights or legitimate interests in the disputed domain name if Respondent fails to submit a Response. 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.”). Although Respondent failed to respond, the Panel will analyze the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant avers it has not licensed, authorized, or given permission to Respondent to use its BAUSCH & LOMB mark. Additionally, the WHOIS information lists “Yukio Hatoyama / www.SecureNames.org” as the registrant of the disputed domain name, which the Panel finds is not similar to the <bauschlomb.org> domain name. The Panel finds, based on Complainant’s assertions and the WHOIS information, that Respondent is not commonly known by the <bauschlomb.org> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant asserts Respondent’s disputed domain name resolves to a website that provides links to discussion or comment pages relating to Complainant or its goods and services. Complainant alleges that Respondent offered to sell the disputed domain name for “at least $1900” to Complainant after it sent Respondent a cease-and-desist letter. Complainant claims that Respondent’s offer is more than Respondent’s out-of-pocket costs. The Panel agrees. Therefore, the Panel finds Respondent’s offer to sell the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <bauschlomb.org> domain name under Policy ¶ 4(c)(iii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also 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.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds Respondent’s offer to sell the disputed domain name to Complainant for more than its out-of-pocket costs constitutes registration and use in bad faith under Policy ¶ 4(b)(i). See 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); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)).
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 <bauschlomb.org> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 23, 2010
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