Novartis AG v. karen pappas
Claim Number: FA1111001416071
Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper, III of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is karen pappas (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mynewfreshlook.com>, registered with GoDaddy.com, Inc.
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 November 17, 2011; the National Arbitration Forum received payment on November 17, 2011.
On November 17, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <mynewfreshlook.com> 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 17, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 7, 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@mynewfreshlook.com. Also on November 17, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 15, 2011, 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 (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:
1. Respondent’s <mynewfreshlook.com> domain name is confusingly similar to Complainant’s FRESHLOOK mark.
2. Respondent does not have any rights or legitimate interests in the <mynewfreshlook.com> domain name.
3. Respondent registered and used the <mynewfreshlook.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Novartis AG, develops, manufactures, and distributes products for vision care and eye health. Complainant uses its FRESHLOOK trademark in connection with its contact lens products. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its FRESHLOOK mark (e.g., Reg. No. 2,888,957 registered September 28, 2004).
Respondent, karen pappas, registered the <mynewfreshlook.com> domain name on November 1, 2011. Respondent’s disputed domain name resolves to a parked website that features various third-party links to websites and business selling contact lens products 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 has presented the Panel with evidence that it owns several trademark registrations with the USPTO for variations of its FRESHLOOK mark (e.g., Reg. No. 2,888,957 registered September 28, 2004). Under Policy ¶ 4(a)(i), such evidence has been held sufficient for a complainant to establish rights in its mark. 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 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.”). Therefore, the Panel finds that Complainant has established rights in its FRESHLOOK mark pursuant to Policy ¶ 4(a)(i).
Under the second prong of Policy ¶ 4(a)(i), a complainant must establish that the domain name in question is confusingly similar or identical to the complainant’s mark. In the instant proceeding, Complainant alleges that the <mynewfreshlook.com> domain name is confusingly similar to Complainant’s FRESHLOOK mark. Complainant argues that the additions of the terms “my” and “new” do not alleviate a finding of confusing similarity. Likewise, Complainant further asserts that the addition of a generic top-level domain (“gTLD”) such as “.com” does “not keep the Domain Name from being confusingly similar to Complainant’s mark.” The Panel notes that previous UDRP decisions have found that the addition of generic terms as well as a gTLD do not prevent a finding of confusing similarity with a 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 Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark); 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). Therefore, the Panel agrees with Complainant and finds that the <mynewfreshlook.com> domain name is confusingly similar to Complainant’s FRESHLOOK mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <mynewfreshlook.com> domain name. Complainant is required to produce a prima facie case in support of its allegations and then the burden shifts to Respondent to prove it possesses rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 2, 2002) (“Because Complainant’s submissions constitute a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its right or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). The Panel finds Complainant has adequately established a prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not possess rights or legitimate interests in the disputed domain name. See Am. Express Co. v. Fan 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.”). The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant contends that the fact that Respondent is not known by “a mark indicates that the Respondent has no rights in the mark.” Complainant goes on to state that, “Respondent has no connection or affiliation with Complainant, and Complainant has not consented to Respondent’s use of the Domain Name.” The Panel notes that the WHOIS information for the <mynewfreshlook.com> domain name identifies “karen pappas” as the registrant. Respondent has not come forward with any evidence to show that it is operating a business under its domain name or that it is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the <mynewfreshlook.com> domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also 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).
Complainant does not make a specific argument under Policy ¶¶ 4(c)(i) or (iii), but does supply the Panel with evidence of Respondent’s use of the domain names. Complainant contends in other sections of its Complaint that Respondent’s domain name resolves to a parked website that provides “hyperlinks to a variety of information, primarily contact lens and eye health information, and to websites in direct competition with Complainant.” According to Complainant’s screen-shot, such links are encased under headings such as “FreshLook Colorblends,” “Free Trial Pair Contacts,” and “Discount Contact Lenses,” among others. Complainant contends that Respondent’s website presumably results in pay-per-click or click-through fees being received by Respondent. The Panel finds that Respondent’s use of the domain name as Complainant has shown it is not 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has presented evidence and arguments indicating that Respondent’s disputed domain name resolves to a parked website featuring third-party links to competing contact lens manufacturers and distributors. Previous panels have found that the use of a domain name to host a series of hyperlinks to competing companies is evidence of an intent to disrupt Complainant’s business in bad faith. 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). In the instant dispute, Respondent has not presented any evidence to oppose or contradict Complainant’s claims. Therefore, the Panel finds that Respondent has registered and is using the domain name in bad faith under Policy ¶ 4(b)(iii).
Further, Complainant argues that Respondent is presumably collecting click-through or affiliate fees in association with the links displayed on the resolving website. Complainant argues that Internet users are led to the resolving website through a false association with Complainant’s FRESHLOOK mark contained in the domain name. The Panel finds that Respondent’s use of the domain name, presumably for profit, to create a likelihood of confusion as to Complainant’s affiliation with the website is further evidence of bad faith registration and use under 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.’”).
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 <mynewfreshlook.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 28, 2011
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