CooperVision, Inc. v. Texas International Property Associates
Claim Number: FA1008001343277
Complainant is CooperVision, Inc. ("Complainant"), represented by Alica Del Valle of Owen, Wickershamm & Erickson, P.C., California, USA. Respondent is Texas International Property Associates ("Respondent"), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mycoopervision.com>, registered with COMPANA, LLC.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 25, 2010; the National Arbitration Forum received payment on August 26, 2010.
On August 26, 2010, COMPANA, LLC confirmed by e-mail to the National Arbitration Forum that the mycoopervision.com domain name is registered with COMPANA, LLC and that Respondent is the current registrant of the name. COMPANA, LLC has verified that Respondent is bound by the COMPANA, LLC 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 September 1, 2010, COMPANA, LLC confirmed by e-mail to the National Arbitration Forum that the mycoopervision.com domain name is registered with COMPANA, LLC and that Respondent is the current registrant of the name. COMPANA, LLC has verified that Respondent is bound by the COMPANA, LLC 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 September 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 22, 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@mycoopervision.com. Also on September 2, 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 October 7, 2010, pursuant to Complainant's request to have the dispute decided by a 1-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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:
Complainant develops, manufactures and markets a broad range of contact lenses and related products.
Complainant holds trademark registrations for its COOPERVISION mark with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 1,464,141, issued November 10, 1987) in connection with its marketing of these products.
Additionally, Complainant has registered the <coopervision.com> domain name, which resolves to Complainant’s official website that includes information on Complainant’s specialized practitioner service known as MyCooperVision.
Respondent registered the disputed domain name on November 8, 2005.
The disputed domain name resolves to a website displaying hyperlinks both to Complainant’s website and to websites of Complainant’s business competitors.
Respondent has been a respondent in multiple prior UDRP proceedings which resulted in the domain names at issue in those cases being transferred to the respective complainants. See ServiceMaster Brands, LLC v. Tex. Int’l Prop. Assocs., D2009-1108 (WIPO Sept. 27, 2009); see also La Quinta Worldwide, LLC v. Tex. Int’l Prop. Assocs., D2009-1436 (WIPO Dec. 16, 2009).
Respondent’s <mycoopervision.com> domain name is confusingly similar to Complainant’s COOPERVISION mark.
Respondent does not have any rights to or legitimate interests in the domain name <mycoopervision.com>.
Respondent registered and uses the <mycoopervision.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s registration of its mark with the USPTO is sufficient evidence of its rights in the mark for purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As the [complainant’s] mark is registered with the USPTO, complainant has met the requirements of Policy ¶ 4(a)(i).
See also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that a complainant’s trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Respondent’s <mycoopervision.com> domain name is confusingly similar to Complainant’s COOPERVISION mark. In forming the domain name, Respondent merely adds the generic term “my” and the generic top-level domain (“gTLD”) “.com” to the mark. These alterations are not sufficient to distinguish the domain name from Complainant’s mark. See NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”); 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).
Accordingly, the Panel finds that Respondent’s <mycoopervision.com> domain name is confusingly similar to Complainant’s COOPERVISION mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights to or legitimate interests in the disputed domain name. Once Complainant has made out a prima facie case in support of its allegations on this point, the burden shifts to Respondent to prove that it has rights to or legitimate interests in the disputed domain name. 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.
Complainant has established a prima facie case in support of its contentions under this head of the Complaint, while Respondent has failed to submit a Response to these proceedings. We are therefore free to conclude that Respondent lacks rights to or legitimate interests in the contested domain name which would satisfy the Policy.
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.
Nevertheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by observing that Complainant asserts, and Respondent does not deny, that Respondent lacks rights to and legitimate interests in the disputed domain name. Moreover, the WHOIS information for the disputed domain name lists the registrant only as “Texas International Property Associates,” which does not resemble the domain name. On this record, we must conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated rights to or legitimate interests in the contested 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 a respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the pertinent WHOIS information, suggesting that that respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name where there was no evidence in the record indicating that it did).
We also note that Complainant alleges, without objection from Respondent, that Respondent’s domain name resolves to a website displaying hyperlinks both to Complainant’s website and to the websites of Complainant’s business competitors. In the circumstances here presented, we presume that Respondent receives profits from the visits of Internet users to the displayed links. Therefore, Respondent is not using the disputed domain name in connection with 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 Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that a respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with links to a complainant’s competitors in the financial services industry); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using a domain name which was identical or confusingly similar to a competing mark to earn click-through fees via sponsored links to the websites of a complainant’s competitors does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain under Policy ¶ 4(c)(iii)).
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(ii).
There is no dispute on the record of this proceeding as to Complainant’s allegation that Respondent has been a respondent in multiple prior UDRP proceedings which resulted in the domain names at issue in those cases being transferred to the respective complainants. See ServiceMaster Brands, LLC v. Tex. Int’l Prop. Assocs., D2009-1108 (WIPO Sept. 27, 2009); see also La Quinta Worldwide, LLC v. Tex. Int’l Prop. Assocs., D2009-1436 (WIPO Dec. 16, 2009). These adverse UDRP proceedings establish that Respondent is a serial cybersquatter and that Respondent has therefore demonstrated bad faith registration and use of the instant domain name pursuant to Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use of a contested domain name pursuant to Policy ¶ 4(b)(ii) where a respondent had been subject to numerous UDRP proceedings in which panels ordered the transfer of disputed domain names containing the trademarks of various complainants); to the same effect, see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005).
Respondent’s registration and use of the disputed domain name as alleged in the Complaint disrupts Complainant’s business. By displaying links to both the website of Complainant and to those of third-parties offering competing contact lenses and related products, Respondent has demonstrated bad faith registration and use of the contested domain name under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of disputed domain names pursuant to Policy ¶ 4(b)(iii) by using them to operate a commercial search engine with links to the products of a complainant and to the websites of that complainant’s competitors); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because that respondent used the disputed domain to advertise goods and services of a complainant’s commercial competitors, thereby disrupting that complainant’s business).
Respondent has been using the <mycoopervision.com> domain name to attract Internet users to Respondent’s website, there to offer links to products and services that compete with the business of Complainant, presumably for Respondent’s financial gain. This is evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iv)).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <mycoopervision.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 14, 2010
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