national arbitration forum

 

DECISION

 

Novartis AG v. Noorinet

Claim Number: FA1201001425715

 

PARTIES

Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA.  Respondent is Noorinet (“Respondent”), Korea.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <focus-dailies.com>, registered with Netpia.com, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 20, 2012; the National Arbitration Forum received payment on January 20, 2012.

 

On January 29, 2012, Netpia.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <focus-dailies.com> domain name is registered with Netpia.com, Inc. and that Respondent is the current registrant of the name.  Netpia.com, Inc. has verified that Respondent is bound by the Netpia.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 January 31, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 2012 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@focus-dailies.com.  Also on January 31, 2012, 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 February 27, 2012, 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 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <focus-dailies.com> domain name is confusingly similar to Complainant’s DAILIES mark.

 

2.    Respondent does not have any rights or legitimate interests in the <focus-dailies.com> domain name.

 

3.    Respondent registered and used the <focus-dailies.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Novartis AG, is the owner of the DAILIES mark which it uses in connection with contact lens products and related Internet services. Complainant also owns the FOCUS mark which is used in connection with contact lens products. Complainant has registered the DAILIES mark (Reg. No. 2,167,845 registered June 23, 1998) with the United States Patent and Trademark Office (“USPTO”). Complainant has also registered the FOCUS mark (Reg. No. 1,665,417 registered November 19, 1991) with the USPTO.

 

Respondent, Noorinet, registered the disputed domain name on November 6, 2008. The <focus-dailies.com> domain name resolves to a website which displays links to competing goods and services under heading such as “Daily Disposable Lenses” and “Cheapest Contact Lenses.”

 

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."

 

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.

 

Identical and/or Confusingly Similar

 

Complainant contends that it has rights in the DAILIES and FOCUS marks. Complainant argues that it has registered the DAILIES (Reg. No. 2,167,845 registered June 23, 1998) and FOCUS marks (Reg. No. 1,665,417 registered November 19, 1991) with the USPTO. Panels have previously held that the registration of a mark with a federal trademark authority, regardless of the location of the parties to a dispute, sufficiently establishes rights in the mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel finds that Complainant has rights in the DAILIES and FOCUS marks under Policy ¶ 4(a)(i).

 

Complainant alleges that the focus-dailies.com> domain name is confusingly similar to the DAILIES mark. Respondent makes the following changes to Complainant’s mark in the disputed domain name: the addition of a generic top-level domain (“gTLD”), the addition of a hyphen, and the addition of Complainant’s FOCUS mark. The Panel finds that the addition of the gTLD “.com” is irrelevant to a confusing similarity analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel also finds that Respondent’s addition of a hyphen fails to make the disputed domain name distinct from Complainant’s mark. See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); see also Teleplace, Inc. v. De Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000) (finding that the domain names <teleplace.org>, <tele-place.com>, and <theteleplace.com> are confusingly similar to the complainant’s TELEPLACE trademark). Additionally, the Panel finds that Respondent’s addition of a second mark of Complainant’s increases confusing similarity rather than reducing it. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”). The Panel therefore finds that Respondent’s focus-dailies.com> domain name is confusingly similar to the DAILIES mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) is met.

 

Rights or Legitimate Interests

 

Complainant argues that Respondent has neither rights nor legitimate interests in the disputed domain name. Once a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to provide evidence to the contrary. 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.”); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech. Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name.  The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement.  Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one.  These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”). The Panel finds that Complainant has made a prima facie case in support of its assertions. Respondent thus bears the burden of disproving the claims which Complainant has made against it. Respondent, however, has failed to submit a Response to the Complaint. Given this, the Panel will proceed making all reasonable inferences from the available information. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). As such, the Panel will review the record for any circumstances which may confer rights or legitimate interests on Respondent.

 

Complainant argues that Respondent is not commonly known by the <focus-dailies.com> domain name. Complainant contends that Respondent has no connection or affiliation with Complainant and Complainant has not consented to Respondent’s use of the DAILIES mark. Additionally, the WHOIS record lists “Noorinet” as the domain name registrant. Previous panels have held that the information available, including the WHOIS record, determines whether a respondent is commonly known by the disputed domain name. 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). The Panel finds that Respondent is not commonly known by the <focus-dailies.com> domain name pursuant to Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent has not used the disputed domain name in a way which provides Respondent with rights or legitimate interests in the focus-dailies.com> domain name. The disputed domain name resolves to a website which displays links to goods and services which compete with those that Complainant provides in the vision assistance industry. These links are displayed under titles like “Need Contact Lenses?” and “$9.99 Color Contact Lens.” Panels have found that the use of a disputed domain name to display competing links is not a protected use. See 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)); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)). Therefore, the Panel finds that Respondent’ use of the <focus-dailies.com> domain name to display links to goods and services which are competitive with those that Complainant offers is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

 

The Panel finds that Policy ¶ 4(a)(ii) is met.

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent’s registration and use of the <focus-dailies.com> domain name is meant to be disruptive to Complainant’s business. The disputed domain name resolves to a website which displays links to competing vision assistance goods and services, similar to those that Complainant provides to its customers. The panels in Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), and Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007), held that the display of links to competing goods was disruptive and demonstrated bad faith. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith as it is disruptive to Complainant's business pursuant to Policy ¶ 4(b)(iii).

 

Complainant also argues that the disputed domain name was registered and is being used in order to take commercial advantage of Internet users’ confusion as to the source of the <focus-dailies.com> domain name. The <focus-dailies.com> domain name is confusingly similar to the DAILIES mark and the content displayed on the resolving website, links to contact lens products, is similar to the content that the DAILIES mark is concerned with: contact lenses and related products. The Panel infers that Respondent is compensated for the display of these links. The Panel therefore finds that Respondent intentionally creates confusion as to the source of the <focus-dailies.com> domain name so that it may profit from Internet users’ mistakes demonstrating bad faith registration and use 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 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.’”).

 

Complainant asserts that, due to its trademark filing for the DAILIES mark and Respondent’s use of the DAILIES mark in the disputed domain name, Respondent must have had constructive knowledge of Complainant's rights in the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the inclusion of the mark in the disputed domain name and the similarity of the links featured on the disputed domain name, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Meredith Corp. v. CityHome, Inc., D2000-0223 (WIPO May 18, 2000) (finding that the respondent’s constructive notice of the complainant’s registered mark was insufficient to support a finding of bad faith registration); 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).

 

The Panel finds that Policy ¶ 4(a)(iii) is met.

 

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 <focus-dailies.com> domain name be TRANSFERRED from Respondent to Complainant.

 

James A. Carmody, Esq., Panelist

Dated:  February 28, 2012

 

 

 

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