Novartis AG v. Chris Ogden
Claim Number: FA1202001427676
Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is Chris Ogden (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freshlookcolorblends.net>, registered with GoDaddy.com, LLC.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 1, 2012; the National Arbitration Forum received payment on February 1, 2012.
On February 1, 2012, GoDaddy.com, LLC. confirmed by e-mail to the National Arbitration Forum that the <freshlookcolorblends.net> domain name is registered with GoDaddy.com, LLC. and that Respondent is the current registrant of the name. GoDaddy.com, LLC. has verified that Respondent is bound by the GoDaddy.com, LLC. 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 February 1, 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@freshlookcolorblends.net. Also on February 1, 2012, 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 February 28, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 <freshlookcolorblends.net> domain name is identical to Complainant’s FRESHLOOK COLOR BLENDS mark.
2. Respondent does not have any rights or legitimate interests in the <freshlookcolorblends.net> domain name.
3. Respondent registered and used the <freshlookcolorblends.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Novartis AG, holds a trademark registration for the FRESHLOOK COLOR BLENDS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,251,945 registered June 8, 1999). Complainant uses its FRESHLOOK COLOR BLENDS mark in connection with its contact lens products and related services.
Respondent, Chris Ogden, registered the <freshlookcolorblends.net> domain name on January 15, 2012. The disputed domain name resolves to a website that provides information about contact lens and eye health and contains hyperlinks that resolve to Complainant’s competitors in the contact lens industry.
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.
Policy ¶ 4(a)(i) requires a complainant to demonstrate that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
First, Complainant claims that it owns rights in its FRESHLOOK COLOR BLENDS mark. Complainant owns a trademark registration with the USPTO for its FRESHLOOK COLOR BLENDS mark (Reg. No. 2,251,945 registered June 8, 1999). After examining the USPTO trademark registration and determining that Complainant owns the trademark registration, the Panel concludes that Complainant owns rights in its FRESHLOOK COLOR BLENDS mark for the purposes of Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Second, Complainant argues that Respondent’s <freshlookcolorblends.net> domain name is identical to Complainant’s FRESHLOOK COLOR BLENDS mark. Complainant notes that the only changes to Complainant’s mark that Respondent makes in the disputed domain name are the removal of the spaces separating the terms of Complainant’s mark and the addition of the generic top-level domain (“gTLD”) “.net.” The Panel agrees with Complainant’s description of the alterations to Complainant’s mark. Therefore, the Panel finds that Respondent’s <freshlookcolorblends.net> domain name is identical to Complainant’s FRESHLOOK COLOR BLENDS mark pursuant to Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark).
The Panel determines that both prongs of Policy ¶ 4(a)(i) have been satisfied.
Policy ¶ 4(a)(ii) requires a complainant to demonstrate that a respondent lacks rights and legitimate interests the disputed domain name. In order to demonstrate rights and legitimate interests, Policy ¶ 4(c) provides three elements that a respondent may satisfy: (i) a respondent is making a bona fide offering of goods or services; (ii) a respondent is commonly known by the disputed domain name; or (iii) a respondent is making a legitimate noncommercial or fair use of the disputed domain name.
Complainant alleges that Respondent does not have any rights or legitimate interests in the <freshlookcolorblends.net> domain name. Previous panels held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds Complainant made a sufficient prima facie case. Past panels have also held that a respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
First, Complainant argues that Respondent is not commonly known by the <freshlookcolorblends.net> domain name. Complainant claims that Respondent is not connected to or affiliated with Complainant and Complainant did not consent to Respondent’s use of Complainant’s FRESHLOOK COLOR BLENDS mark. Complainant asserts that Respondent and Respondent’s business are not known by the <freshlookcolorblends.net> domain name or Complainant’s mark. Complainant provides the Panel with the WHOIS information, which identifies “Chris Ogden” as the registrant of the disputed domain name. Based on all of this evidence, in light of the fact that Respondent did not respond to this case, the Panel holds that Respondent is not commonly known by the <freshlookcolorblends.net> domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Next, Complainant argues that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant contends that Respondent’s <freshlookcolorblends.net> domain name resolves to a website that provides information relating to contact lens and eye health. Complainant claims that Respondent’s resolving website also features hyperlinks that resolve to Complainant’s competitors’ websites that sell competing contact lens and related services. Complainant presents a screen shot of the resolving website and, after reviewing the screen shot, the Panel determines that Complainant’s description of Respondent’s use is accurate. Consequently, the Panel holds that Respondent makes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <freshlookcolorblends.net> domain name. 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 Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
As the Panel concludes that Respondent has failed to meet any of the Policy ¶ 4(c) elements, the Panel holds that Complainant has satisfied Policy ¶ 4(a)(ii).
Policy ¶ 4(a)(iii) requires a complainant to demonstrate that a respondent registered and uses a disputed domain name in bad faith. Policy ¶ 4(b) establishes four different avenues for a complainant to demonstrate bad faith registration and use: (i) the respondent registered the domain name for the purpose of selling the disputed domain name for more than the respondent’s out-of-pocket costs; (ii) the respondent registered and uses the disputed domain name as a part of a pattern to prevent the complainant from reflecting its mark in a corresponding domain name; (iii) the respondent registered and uses the disputed domain name for the purpose of disrupting the complainant’s business; or (iv) the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website.
Complainant presents no evidence or allegations under Policy ¶¶ 4(b)(i) and (ii) so the Panel elects to ignore analyzing Respondent’s registration and use under Policy ¶¶ 4(b)(i) and (ii).
While Complainant does not specifically argue bad faith registration and use under Policy ¶ 4(b)(iii), Complainant claims that Respondent registered and uses the <freshlookcolorblends.net> domain name to offer hyperlinks that resolve to Complainant’s competitors’ websites that offer competing contact lens and related services. Complainant avers that Internet users interested in Complainant’s products may be diverted to Complainant’s competitors based on Respondent’s registration and use of the disputed domain name. As the Panel determines that such a use likely disrupts Complainant’s business, the Panel holds that Respondent registered and uses the <freshlookcolorblends.net> domain name in bad faith 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).
Additionally, Complainant asserts that Respondent registered and uses the <freshlookcolorblends.net> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). Complainant claims that Respondent commercially benefits from the hyperlinks found on the resolving website by receiving click-through fees. Complainant further argues that Respondent attempts to take advantage of Internet user confusion as to Complainant’s affiliation with the disputed domain name by registering the identical disputed domain name and providing information relating to contact lens and eye health. The Panel agrees with Complainant and finds that Respondent registered and uses the <freshlookcolorblends.net> domain name in bad faith pursuant to 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 Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
While not a specific provision of Policy ¶ 4(b), Complainant also contends that in light of the fame and notoriety of Complainant's FRESHLOOK COLOR BLENDS mark, it is inconceivable that Respondent could have registered the <freshlookcolorblends.net> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel does agree with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel determines that Complainant has sufficiently demonstrated Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <freshlookcolorblends.net> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: March 13, 2012
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