national arbitration forum

 

DECISION

 

Novartis AG v. Fresh Look Landscape / Bret DeCapito

Claim Number: FA1110001413468

 

PARTIES

Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA.  Respondent is Fresh Look Landscape / Bret DeCapito (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <freshlooklandscape.com>, registered with Register.com.

 

PANEL

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.

 

R. Glen Ayers served as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 28, 2011; the National Arbitration Forum received payment on October 28, 2011.

 

On October 31, 2011, Register.com confirmed by e-mail to the National Arbitration Forum that the <freshlooklandscape.com> domain name is registered with Register.com and that Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On November 3, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 2011 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@freshlooklandscape.com.  Also on November 3, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.

 

A timely Response was received and determined to be complete on November 21, 2011.

 

On November 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed R. Glen Ayers as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant asserted and proved that it holds the trademark FRESHLOOK, properly registered in the United States Patent and Trademark Office and several variants on that mark.  These marks are used for various vision and health care products, specifically contact lenses and related products.

 

Complainant asserts that Respondent has registered the domain name <freshlooklandscape.com> which, Complainant asserts, is “legally equivalent and confusingly similar” to its mark.  The addition of the generic word “landscape” is not enough to differentiate the domain name from the mark.

 

Complainant asserts that Respondent has no rights in the name; Respondent is not known by the name, has not received Complainant’s consent to use the mark and domain name, and has no connection with Complainant.

 

The registration of the domain name is asserted to be in bad faith.  The domain name resolves to a web site which makes competing contact lenses and related products available, thus generating “click-through” revenue for Respondent.  This alone, says Complainant, is evidence of bad faith.  In addition, Complainant asserts that Respondent had constructive notice of the mark, which is has been registered since 2004.  Complainant points out that the domain name uses “Complaint’s entire mark, with one minor change, in the Domain Name…;” this “serves as an indication of bad faith.”

 

B. Respondent

 

Respondent, appearing pro se, asserts that “I don’t have money for a [sic] attorney ….”

 

Respondent states that he has held the domain name for three years; that he bought it when it came up for sale on “Register.com;” and that he has “done NOTHING with it ….”

 

He asserts that he was “only looking to have my small business grow.”  He did not describe that business.

 

C. Additional Submissions

 

There were no additional submissions.

 

FINDINGS

Complainant has stated a prima facie case for each of the elements of Paragraph 4(a) of the ICANN Policy.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).  First, it has shown that it holds a registered mark and that the domain name is potentially confusingly similar. 

 

It has shown that Respondent has no rights in the name; in fact, Respondent admits that he has “done NOTHING with” the domain name.

 

Complainant has also set out a prima facie case for bad faith filing.   It is difficult to believe that Respondent did not have knowledge of the mark.  The mark relates to contact lenses, and the site is set up to filch customers looking for contact lenses, redirecting those persons to competitors.

 

Respondent has not done much to rebut the allegations and certainly has not addressed the fact that the site operates as a “click through” site for those seeking contact lenses and related products produced under the Complaint’s label or mark.

 

Also, Respondent makes no attempt to explain exactly what his “small business” is; what business does he want to “grow?”

 

Factually, the Respondent has done nothing to rebut the allegations made by Complainant.

 

DISCUSSION

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."

 

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.

 

Identical and/or Confusingly Similar

 

Complainant’s trademark registrations with USPTO are sufficient to grant Complainant rights in the marks under Policy ¶ 4(a)(i).  See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)); see also 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).

 

The <freshlooklandscape.com> domain name is confusingly similar to Complainant’s FRESHLOOK trademark.  The domain name contains Complainant’s entire FRESHLOOK mark while adding the generic term “landscape” and the generic top-level domain (“gTLD”) “.com.”  Both additions to Complainant’s mark do not keep the domain name from being confusingly similar to that mark.  The domain name in question is confusingly similar to the FRESHLOOK mark under Policy ¶ 4(a)(i).  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

 

Rights or Legitimate Interests

 

Respondent is not commonly known by the disputed domain name.   Respondent is not connected to, or affiliated with, Complainant and neither Respondent nor its business is known by the name “FRESHLOOK.”  Despite the WHOIS information which identifies the domain name registrant as “Fresh Look Landscape / Bret De Capito,” Respondent has not been commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).

 

Respondent’s domain name resolves to a website that features hyperlinks to a variety of information, primarily contact lens and eye health information, as well as websites that sell competing contact lens products.  Complainant’s screen shot evidence clearly shows that the links on Respondent’s website are situated under headings such as “Cheap Contact Lens,” “Freshlook Color Contact Lens,” “Freshlook Color Blend,” and many others.  The second screen shot displays the second level of third-party links available to an Internet user when the user clicks on one of the headings.  The links available in this second level are for competing contact lens companies, such as “Acuvue,” “1 800 Contacts,” and “Contact Lens King,” among others.  Respondent does not have rights or legitimate interests in the <freshlooklandscape.com> domain name, where its use of the domain name does not appear to amount to 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 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use 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)).

 

Registration and Use in Bad Faith

 

Complainant does make an express argument under Policy ¶ 4(b)(iii), and it’s submitted evidence and arguments show that Respondent is using the domain name to host various third-party links to competing contact lens companies.  Such use inherently disrupts Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii).  See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).

 

As Complainant argues, Respondent’s use of the website must result in commercial gain because Respondent presumably collects click-through or affiliate fees in relation to the links displayed on its website.  Respondent’s commercial gain through its use of the domain name containing Complainant’s trademark is evidence of bad faith registration and use.  Respondent registered and uses the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).

 

Respondent would not have purchased and used the disputed domain name without constructive knowledge of Complainant and its rights in the FRESHLOOK mark.  While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, here, the Panel finds (and believes) that Respondent purchased and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii); Respondent must have had actual notice of Complainant’s trademark rights, for otherwise the “click through” arrangement would not make sense.  See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).

 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <freshlooklandscape.com> domain name be TRANSFERRED from Respondent to Complainant .

 

 

 

R. Glen Ayers, Panelist

Dated:  December 7, 2011

 

 

 

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