national arbitration forum

 

DECISION

 

Novartis AG v. Yura Skripak

Claim Number: FA1202001428970

 

PARTIES

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

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tobradexeyedrop.com>, 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.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 10, 2012; the National Arbitration Forum received payment on February 10, 2012.

 

On February 10, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <tobradexeyedrop.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 February 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 5, 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@tobradexeyedrop.com.  Also on February 13, 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 March 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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

Complainant has rights in the TOBRADEX mark (Reg. No. 1,897,276, registered June 6, 1995) through the United States Patent and Trademark Office.

Complainant uses its mark in connection with the treatment of eye inflammation and infections as well as general vision care and eye health.

Respondent’s <tobradexeyedrop.com> domain name is confusingly similar to Complainant’s mark.

Respondent is not commonly known by the disputed domain name.

The disputed domain name resolves to a website which displays links to divert Internet users to online pharmacy websites purporting to sell Complainant’s products.

Respondent registered and is using the disputed domain name in order to take commercial advantage of Internet users’ mistakes as to the source of the <tobradexeyedrop.com> domain name.

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has rights in the TOBRADEX mark

Respondent’s domain name is confusingly similar to Complainant’s mark.

Respondent has no rights to, nor legitimate interests in the disputed domain name.

The disputed domain name was registered and used in bad faith.

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 Complainant 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 Complainant.”).

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  to 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 a registration for the TOBRADEX mark (Reg. No 1,897,276 registered June 6, 1995) with the USPTO.  Registration of a mark with a federal trademark authority is sufficient to establish rights in a mark.  See Miller Brewing Co. v. Millar 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 Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations were adequate to establish its rights pursuant to Policy ¶ 4(a)(i)).  Complainant has rights in the TOBRADEX mark pursuant to Policy ¶ 4(a)(i).

Respondent’s addition of the descriptive term “eyedrop” to Complainant’s mark fails to distinguish the mark and the domain name.  See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark;  see also Am. Online, Inc., v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i).  Respondent’s addition of the generic top level domain (“gTLD”) “.com” is irrelevant.  See Isleworth Land Co. v. Lost in Space, SA.  FA 117330 (Nat. Arb. Forum Sept. 27, 2002).  Respondent’s domain name is confusingly similar to Complainant’s mark.

Complainant prevails under Policy ¶ 4.

 

Rights or Legitimate Interests

 

Complainant must make a prima facie case that Respondent lacks rights and legitimate interest in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate

 

interests.  See Hanna-Barbera Prods., Inc. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). 

Complainant argues that Respondent is not commonly known by the disputed domain name.  Complainant states that Complainant has not consented to Respondent’s use of the TOBRADEX mark in the disputed domain name and that Respondent is in no way affiliated with Complainant.  Complainant contends that Respondent’s business name does not reflect the disputed domain name in any way.  The WHOIS record lists “Yura Skripak” as the registrant.  Respondent is not commonly known by the disputed domain name. 

Complainant contends that Respondent is using the disputed domain name to provide information about Complainant’s products and links to online pharmacies purporting to sell Complainant’s products.  Such use does not provide the Respondent with rights or legitimate interests.  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> 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 TM Acquisions Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002).

Complainant prevails under Policy ¶ 4.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent registered and is using the disputed domain name in order to create confusion as to the source of the <tobradexeyedrop.com> domain name and to take advantage of mistakes that occur as a result of this confusion.  Complainant also asserts that Respondent’s direction of Internet users to online pharmacies which sell a variety of competing

 

products is evidence of Respondent’s attempt to trade on the goodwill associated with Complainant in order to draw Internet users to its website so that they click through the displayed links.  The Panel makes the inference that Respondent receives compensation from its use of the disputed domain name. 

Respondent’s use of a domain name which is confusingly similar to Complainant’s mark to draw Internet users to its website caused by the confusion as to the apparent affiliation of the websites is bad faith use of the disputed domain name. 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 web site 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).

The Panel finds that Respondent had actual notice of Complainant’s mark at the time of registration. The finding is based upon the highly unusual term TOBRADEX, the combination of the term “eyedrop” with the term, which is the use for which TROBADEX is formulated, and the links on Respondent’s website to pharmacies which sell TOBRADEX and competing products.  Actual knowledge of Complainant’s mark at the time of registration constitutes registration in bad faith. See Deep Foods, Inc. V. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006 (holding that where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when the domain name was registered, the Panel is authorizes to find bad faith.)

Complainant prevails under Policy ¶ 4.

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 <tobradexeyedrop.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  March 20, 2012