national arbitration forum

 

DECISION

 

Novartis AG v. Fresh Look Consulting, LLC

Claim Number: FA1110001413477

 

PARTIES

Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA.  Respondent is Fresh Look Consulting, LLC (“Respondent”), represented by Katheryn A. Andresen of Hellmuth & Johnson, PLLC, Minnesota, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <freshlookconsultingllc.net>, registered with GoDaddy.com, Inc.

 

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.

 

Héctor A. Manoff 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, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <freshlookconsultingllc.net> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 22, 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@freshlookconsultingllc.net.  Also on November 2, 2011, 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.

 

A timely Response was received and determined to be complete on November 16, 2011.

 

On November 22, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Héctor A. Manoff as Panelist.

 

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

 

1. Complainant owns and uses the trademark FRESHLOOK in connection with contact lenses and eye health information and has registered that mark in the United States in 2004. Complainant also registered variations of such mark.

2. Complainant also owns the domain name <freshlookcontacts.com>.

3.  Respondent registered the <freshlookconsultingllc.net> domain name on or about October 7, 2011.

4. The disputed domain name was registered to Domains by Proxy and is used in connection to a website that provides hyperlinks to a variety of information, primarily contact lens and eye health information, and to websites in direct competition with Complainant.

5. The disputed domain name is confusingly similar to Complainant’s trademark, since it contains Complainant’s entire trademark with the addition of a generic or descriptive term and the corporate identifier “LLC”.

6. Respondent has no rights or legitimate interests with respect to the <freshlookconsultingllc.net>  domain name since it is not known by that name.

7. Respondent has registered the disputed domain name in bad faith, because it operates the <freshlookconsultingllc.net> website to generate “click-through” revenue from users searching for information about Complainant and its contact lens product.

8. Such use is not a bona fide offering of goods or services under Policy ¶ 4 (c) (i) or a legitimate noncommercial fair use under Policy ¶ 4 (c) (iii).

9. Respondent had constructive notice of Complainant’s FRESHLOOK mark prior to the selection of the disputed domain name.

 

B. Respondent

 

1. The disputed domain name is neither identical nor confusingly similar to

Complainant’s trademarks because the test for confusing similarity is an objective one and, in this case, there is no potential for confusion because no “ordinary Internet user who is familiar with the goods” distributed under Complainant’s trademarks would believe “freshlookconsultingllc.net” has anything to do with colored contact lenses. Furthermore, consulting does not have an obvious relationship to Complainant’s business.

2. Respondent has rights and legitimate interests in the disputed domain name because the domain name is the name of Respondent’s company: Fresh Look Consulting, LLC, which was incorporated in the state of Minnesota on October 3, 2011.

3. Respondent intends to link the Domain Name to its main website <freshlookconsultingllc.com> (the “Main Website”).

4. Although the main website is still under construction, it is not necessary to show a fully operational business, for it is sufficient [to satisfy this element] if the steps taken are only preparations.

5. Respondent has performed more than merely perfunctory steps, which all took place before Respondent received a Written Notice of Complaint and Commencement of Administrative Proceeding.

6. On October 31, 2011, Respondent applied for the trademark “FRESH LOOK” in international class 35, under the description “Providing advisory and consulting services in the fields of strategic assessment, executive mentoring, business opportunity, acquisition, divestiture and turnarounds, and brand remarketing and repositioning, on behalf of individuals and businesses, including for-profit and non-profit entities.”

7. Respondent has not registered or used the domain name in bad faith.

8. Upon receipt of the complaint, Respondent investigated and determined that the disputed domain name is currently a GoDaddy standard “parking page”, which also appears to contain GoDaddy advertising.

9. Respondent was not aware of the existence of this parking page, nor did it did take any action to have the disputed domain name point to such a page.

10. Respondent does not receive any commercial gain from the advertising currently on the disputed domain name.

11. The Main Website will promote Respondent’s verifiable and legitimate consulting business and multiple panels have found that this is enough to establish that a respondent did not register or use the contested domain name in bad faith.

 

FINDINGS

Complainant owns and uses the trademark FRESHLOOK in connection with contact lenses and eye health information and has registered that mark in the United States in 2004, although it claims it has been using that mark since 1992.

 

Respondent registered the <freshlookconsultingllc.net> domain name on October 7, 2011, only three days after it had incorporated the company of the same name. Furthermore, the disputed domain name resolves to a website that provides hyperlinks to some products in direct competition with 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 has submitted to the Panel appropriate evidence (Exhibit 2) of Complainant’s registration with the USPTO for the mark FRESHLOOK and variations thereof.  Therefore, the Panel concludes that Complainant has sufficient rights in that mark for purposes of Policy paragraph 4(a)(i).  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 Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).

 

Upon examining Complainant’s trademark FRESHLOOK and the disputed domain name <freshlookconsultingllc.net>, the Panel perceives minor differences: the disputed domain name includes the entire mark, while adding the generic term “consulting,” the generic abbreviation “llc,” and the generic top-level domain “.net.”  Consequently, the Panel finds the disputed domain name to be confusingly similar to Complainant’s trademark under Policy ¶ 4(a)(i).  See 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); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).

 

Consequently, the Panel finds that Complainant has established that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights.

 

Rights or Legitimate Interests

 

Before the burden shifts to Respondent to show it does have rights or legitimate interests in the disputed domain name, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in such 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 UDRP ¶ 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) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel finds that Complainant has produced a prima facie case because it provided evidence of its trademark rights in a mark which is confusingly similar to the disputed domain name and it has also contended that Respondent is not known by such name.

 

Respondent alleges that before any notice of the dispute, it had made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Respondent provided evidence of having incorporated a company on October 3, 2011 in the state of Minnesota named FRESH LOOK CONSULTING, LLC, to provide consulting services. It also submitted copy of the Whois database which proves the registration of the disputed domain name on October 7, 2011, and also a copy of the USPTO records that proves it had filed a trademark application for FRESH LOOK CONSULTING on October 31, 2011.

 

On the other hand, Complainant has presented evidence that Respondent has used the disputed domain name instead to host a parking page that has click-through links to some products in direct competition with Complainant’s products.  In its Response, Respondent does not dispute such use, but dismisses it as an action by a third party (GoDaddy), who would not have warned Respondent of such use.

 

The Panel is presented therefore with competing claims on this issue.  UDRP proceedings provide for only limited evidentiary presentations, and it is difficult for the Panel to make fine assessments as to veracity.  One tool it can employ in this regard is to examine each party’s contentions for consistency.  On this issue, the Panel finds no inconsistency in Complainant’s assertions, whereas there is marked inconsistency with respect to those made by Respondent.

 

While Respondent claims to be known by the disputed domain name since it is their company name, this Panel finds it difficult to be true since the company was incorporated only three days before the registration of the domain name. And Respondent’s trademark application was filed almost after one month from the domain name registration. Apart from that evidence, Respondent does not provide further elements that prove it is known by the disputed domain name.

 

After assessing this competing evidence, the Panel is inclined to believe Complainant and to conclude that Respondent is not engaged in, or demonstrably prepared to engage in, a “bona fide offering of goods or services” as required under paragraph 4(c)(i).  See Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company v. Wu Wenbing, FA 1294944 (December 31, 2009) (“The [disputed] domain name resolves to a website that promotes a…product by using Complainant’s logo and imitates Complainant’s trade dress…The Panel finds this competing use is not a bona fide offering of goods or services under Policy ¶4(c)(i)…”); see also Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Telephone Island, D2004-0711 (WIPO Nov. 15, 2004) (“Rights or legitimate interests are not established when reselling or promoting genuine goods by reference to the mark, but without the authorization of the mark’s owner.”); see also Abbott Laboratories v. United Worldwide Express Co., Ltd., D2004-0088 (WIPO Apr. 7, 2004) (“The Panel finds that Respondent's registration and use of the Domain Name without Complainant's permission for a website selling…Complainant's products…does not constitute a bona fide offering of goods pursuant to paragraph 4(c)(i) of the Policy.”). 

 

Thus, the Panel determines that Respondent has failed to furnish sufficient evidence to rebut Complainant’s prima facie case.

 

As reasoned above, the Panel finds that Complainant has proven that Respondent has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

 

Complainant posits that Respondent’s disputed domain name is disrupting its business because it resolves to a website offering links to Complainant’s competitors in the vision and health care field. The Panel finds that this use disrupts Complainant’s business and provides affirmative evidence of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii).  See 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)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).

 

Complainant alleges that Respondent is gaining commercially from the confusion created by the disputed domain name and its apparent relation to Complainant’s marks.  Presumably, Respondent collects click through fees for each Internet user diverted to the linked sites.  Even if the Panel finds that the website is merely a parked site not under Respondent’s control, that finding does not necessarily inhibit a finding of bad faith registration and use.  Therefore, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).  See 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.’”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent.”).

 

Therefore, the Panel rules that Complainant has established that the disputed domain name was registered and is being used in bad faith.

 

 

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 <freshlookconsultingllc.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Héctor A. Manoff, Panelist

Dated:  December 6, 2011

 

 

 

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