national arbitration forum

 

DECISION

 

Novartis AG v. Hilman T.  Rahman

Claim Number: FA1203001433607

 

PARTIES

Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA.  Respondent is Hilman T.  Rahman (“Respondent”), Indonesia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cibavisioncontactlenses.info>, registered with eNom, 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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

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, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <cibavisioncontactlenses.info> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name.  eNom, Inc. has verified that Respondent is bound by the eNom, 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 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 2, 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@cibavisioncontactlenses.info.  Also on March 12, 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 Bruce E. Meyerson 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

Complainant

    1. Complainant has registered the CIBA VISION mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,611,014 registered August 28, 1990);
    2. Respondent’s disputed domain name, registered on or about February 15, 2012, is confusingly similar to Complainant’s CIBA VISION mark;
    3. Respondent’s disputed domain name resolves to a website offering a variety of products for sale;
    4. Respondent lacks rights or legitimate interests in the disputed domain name;
    5. Respondent registered and is using the disputed domain name in bad faith;
    6. Respondent had notice of Complainant’s rights in the CIBA VISION mark prior to registering the disputed domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

Complainant has established its rights in the CIBA VISION mark by registering it with the USPTO (e.g., Reg. No. 1,611,014 registered August 28, 1990).  Respondent failed to submit a Response in this proceeding.

 

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."

 

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.”).

 

Identical and/or Confusingly Similar

 

Complainant contends that it has established its rights in the CIBA VISION mark by registering it with the USPTO (e.g., Reg. No. 1,611,014 registered August 28, 1990).  Complainant submits multiple trademark certificates issued by the USPTO to verify its contentions.  Registering a mark with the USPTO confers upon the registrant defendable rights in the registered mark under Policy ¶ 4(a)(i).  See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)); 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 established its rights in the CIBA VISION mark under Policy ¶ 4(a)(i). 

 

Complainant also contends that Respondent’s <cibavisioncontactlenses.info> domain name is confusingly similar to Complainant’s CIBA VISION mark.  Complainant states that the disputed domain name includes the entire mark, while also adding the descriptive terms “contract” and “lenses,” and the generic top-level domain (“gTLD”) “.info.”  The disputed domain name also removes the spaces between the terms of the mark.  The Panel therefore determines that the disputed domain name is confusingly similar to Complainant’s CIBA VISION mark under Policy ¶ 4(a)(i).  See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity  with regard to Policy ¶ 4(a)(i).”).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.

 

Complainant argues that Respondent is not commonly known by the disputed domain name.  Complainant states that the WHOIS information identifies the registrant of the disputed domain name as “Hilman T.  Rahman.”   Respondent has not offered any evidence that contradicts Complainant’s argument.  Thus, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).  

 

Complainant also argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.  Complainant states that the disputed domain name resolves to a website offering a variety of products for sale.  The products offered appear to be unrelated to Complainant’s business and do not compete with the goods Complainant legitimately sells.  This use of the domain name does not constitute  a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.  See Wells Fargo & Co. v. Nadim, FA 127720 (Nat. Arb. Forum Nov. 29, 2002) (finding that the respondent’s use of the complainant’s WELLS FARGO mark to redirect Internet users to a domain name featuring magazine subscriptions was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); see also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant asserts that Respondent registered and is using the disputed domain name for its own commercial gain.  Complainant states that the disputed domain name resolves to a website offering products for sale that are unrelated to Complainant’s own goods.  The Panel presumes that Respondent generates revenue by charging Internet users to purchase these goods.  Therefore, the Panel finds that Respondent is attempting to divert Internet users to its own website and gain commercially off of the disputed domain name, which the Panel  also finds demonstrates bad faith registration and use under Policy ¶ 4(b)(iv).  See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).

 

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 <cibavisioncontactlenses.info> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  April 23, 2012

 

 

 

 

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