Novartis AG v. Simon Abejo
Claim Number: FA1203001433594
Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is Simon Abejo (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <air-optix-for-astigmatism.com> and <air-optix-night-and-day-aqua.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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 8, 2012; the National Arbitration Forum received payment on March 8, 2012.
On March 9, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <air-optix-for-astigmatism.com> and <air-optix-night-and-day-aqua.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. 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 March 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 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@air-optix-for-astigmatism.com, postmaster@air-optix-night-and-day-aqua.com. Also on March 9, 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 April 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1) Complainant, Novartis AG, owns rights in the AIR OPTIX mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., 3,490,248 registered August 19, 2008).
2) Complainant owns rights in the NIGHT & DAY mark through its registration with the USPTO (Reg. No. 2,717,640 registered May 20, 2003).
3) Complainant manufactures and distributes products for vision care and eye health under the AIR OPTIX and NIGHT & DAY marks.
4) Respondent, Simon Abejo, registered the <air-optix-for-astigmatism.com> and <air-optix-night-and-day-aqua.com> domain names on February 17, 2012.
5) Respondent’s domain names resolve to websites that provide hyperlinks to websites in direct competition with Complainant, as well as other information related to contact lens and eye health.
6) Respondent does not have authorization to use the marks in any way.
7) Respondent had constructive knowledge of Complainant’s rights in the marks prior to registering the domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1) Complainant has rights in the AIR OPTICS and NIGHT AND DAY marks.
2) Respondent’s <air-optix-for-astigmatism.com> and <air-optix-night-and-day-aqua.com> domain names are confusingly similar to Complainant’s marks.
3) Respondent has no rights or interests in the disputed domain names.
4) Respondent registered and used the disputed domain names in bad faith.
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.
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.”).
Complainant asserts that it has rights in the AIR OPTIX mark through its multiple trademark registrations for the mark with the USPTO (e.g., 3,490,248 registered August 19, 2008) and also asserts rights in the NIGHT & DAY mark through its registration with the USPTO (Reg. No. 2,717,640 registered May 20, 2003). In Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), and Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006), the panels found that a complainant secures rights in its mark by registering the mark with the USPTO. The Panel concludes that Complainant has established its rights in the AIR OPTIX mark pursuant to Policy ¶ 4(a)(i) by having registered the marks with the USPTO.
Complainant argues that the <air-optix-for-astigmatism.com> and <air-optix-night-and-day-aqua.com> domain names are confusingly similar to its AIR OPTIX mark. Complainant states that both domain names use the entire mark, with the addition of the descriptive phrases “for-astigmatism” and “night-and-day-aqua,” which Complainant asserts relates to its products. Complainant further argues that adding the generic top-level domain (“gTLD”) “.com” to a mark does not prevent the domain names from being confusingly similar to the AIR OPTIX mark. In Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003), the panel found the domain name at issue confusingly similar to the complainant’s mark when it added the descriptive word “solutions,” which is descriptive in terms of the complainant’s business. The panel in Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007), stated that adding a hyphen between the words in a registered mark does not sufficiently alter the domain name from a mark. The panel in Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007), stated that adding a gTLD does not properly distinguish the domain name from the complainant’s mark. The Panel holds that the changes made in the disputed domain names do not adequately serve to set apart the domain names from the AIR OPTIX mark and the disputed domain names are therefore confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests 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. 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.”).
Complainant contends that Respondent is not known by either the AIR OPTIX or the NIGHT & DAY marks and that Respondent does not have authorization to use the marks to register domain names. The Panel determines that Respondent is not commonly known by the disputed domain name and consequently has no rights or legitimate interests under Policy ¶ 4(c)(ii) in the domain name based on the lack of submitted evidence. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
Complainant asserts that Respondent’s resolving websites display “click-through” hyperlinks to Complainant’s competitors in order to make a commercial gain, which is not a bona fide offering of goods or services or a legitimate noncommercial use of the domain names. The Panel determines that Respondent’s use of the disputed domain names to host a commercial website for profit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor is it a legitimate noncommercial or fair use under Policy ¶ 4(c)(ii). 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 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)).
Complainant argues that Respondent registered and uses the <air-optix-for-astigmatism.com> and <air-optix-night-and-day-aqua.com> domain names to operate websites that generate revenue from the “click-through” hyperlinks displayed. Complainant asserts that registering the domain names with the purpose of misleading consumers who search for Complainant’s products for its own profit demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panel stated that the respondent made a profit from its website, which provided links to the complainant’s competitors and that such use is evidence of bad faith under Policy ¶ 4(b)(iv). In Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006), the panel held that the respondent was engaged in bad faith registration and use when it used a confusingly similar domain name to offer third-party hyperlinks to competitors of the complainant. The Panel determines that based on Complainant’s allegation that Respondent uses the domain names to attract consumers confused by the source of the website in order to generate revenue, Respondent’s registration and use of the disputed domain names is in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent had constructive notice of Complainant’s rights in the marks when it registered the <air-optix-for-astigmatism.com> and <air-optix-night-and-day-aqua.com> domain names, because the AIR OPTIX and DAY & NIGHT marks existed prior to the domain name registrations. The Panel does not recognize constructive notice as acceptable evidence of bad faith registration and use; however, the Panel concludes that based on the information and hyperlinks contained in Respondent’s websites, Respondent had actual notice of Complainant’s rights in the marks and therefore Respondent’s registration and use of the domain names is in bad faith under Policy 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."); see also Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant's magazine covers an industry towards which Respondent's services are marketed).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <air-optix-for-astigmatism.com>, ,<air-optix-night-and-day-aqua.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: April 25, 2012
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