Novartis AG v. suheri ahmad / kakilangit
Claim Number: FA1203001433634
Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is suheri ahmad / kakilangit (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <airoptixaqua.info>, registered with GoDaddy.com, Inc.
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.
The Honourable Neil Anthony Brown QC 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 <airoptixaqua.info> 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 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@airoptixaqua.info. 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 12, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following submissions.
1) Complainant, Novartis AG, owns rights in the AIR OPTIX mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,490,248 registered August 19, 2008).
2) Complainant uses the AIR OPTIX mark in connection with its brand of contact lenses.
3) Respondent, Suheri Ahmad / Kakilangit, registered the <airoptixaqua.info> domain name on February 5, 2012.
4) Respondent’s domain name resolves to a website that provides information about contact lens and eye health information, as well as hyperlinks to competing businesses.
5) Respondent has no affiliation with Complainant and was not given consent to use the AIR OPTIX mark in a domain name.
6) Respondent operates the resolving website to make a profit from “click-through” hyperlinks.
7) Respondent had constructive notice of Complainant’s rights in the AIR OPTIX mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant, Novartis AG, is a Swiss company that, among other things, develops and provides products for vision care and eye health.
2. Complainant owns rights in the AIR OPTIX mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,490,248 registered August 19, 2008).
3. Complainant uses the AIR OPTIX mark in connection with its contact lens products and related internet services.
4. Respondent, Suheri Ahmad / Kakilangit, registered the <airoptixaqua.info> domain name on February 5, 2012.
5. Respondent’s domain name resolves to a website that provides information about contact lens and eye health information, as well as hyperlinks to competing businesses.
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 claims that it owns rights in the AIR OPTIX mark by its registrations with the USPTO (e.g., Reg. No. 3,490,248 registered August 19, 2008) and the Panel agrees with that submission. The Panel concludes that by registering its trademark with the USPTO, Complainant owns rights in the mark. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a) (i).”). The Panel also determines that, for the purposes of Policy ¶ 4(a) (i), Complainant need not register its mark in the country wherein Respondent resides and operates. See 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); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant then submits that, by incorporating the AIR OPTIX mark in the domain name and then adding only the descriptive term “aqua” and the generic top-level domain (“gTLD”) “.info” to the mark, Respondent’s <airoptixaqua.info> domain name is confusingly similar to the mark. The Panel agrees with that submission. In Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005), the panel found that using the complainant’s registered mark and adding a descriptive term does not sufficiently differentiate a domain name for the purposes of Policy ¶ 4(a)(i). The panel in Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005), concluded that adding a term which merely described the complainant’s product, as well as adding a gTLD, did not sufficiently distinguish the respondent’s domain name from the complainant’s mark. The Panel therefore determines that the disputed domain name is not sufficiently distinguishable from Complainant’s mark and is consequently confusingly similar for the purposes of Policy ¶ 4(a) (i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s AIR OPTIX trademark and to use it in his domain name , adding the descriptive word “aqua”, a word meaning water and naturally associated with Complainant’s contact lens products sold under the brand name AIR OPTIX, thus enhancing the confusing similarity between the domain name and the trademark;
(b) Respondent has then decided to use the domain name to lead to websites that offer goods , inter alia, that are in competition with those provided by Complainant and to do so clearly for monetary reward;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant also alleges that Respondent is not commonly known by the <airoptixaqua.info> domain name, asserting that Complainant has not consented to Respondent’s use of the mark in a domain name. The Panel notes that the WHOIS information identifies “suheri ahmad / kakilangit “as the registrant of the disputed domain name. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), the panel held that respondent was not authorized to register domain names that included the complainant’s mark, and also did not submit evidence to support the inference that it was commonly known by the domain name, thus the respondent failed to establish rights and legitimate interests in the domain name. The panel in St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) stated that, where no evidence on record indicates that respondent is commonly known by the domain name, the respondent has no rights or interests in the name. The Panel therefore finds that, based on Complainant’s allegations and the lack of other supporting evidence, Respondent is not commonly known by the disputed domain name and consequently has no rights or legitimate interests in the domain name under Policy ¶ 4(c) (ii).
(e)Complainant also contends that Respondent operates a website for his own commercial gain by seeking to generate “click-through” profits and that the website contains hyperlinks to competing businesses. The panel in ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007), concluded that the respondent’s use of a domain name to host a website with links to competing third-party entities is not a use of a domain name that constitutes a bona fide offering of goods or services or a legitimate noncommercial or fair use. Similarly, in Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007), the panel determined that failure to offer goods or services on a website other than competitors’ hyperlinks is not a use of a domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel finds that, by registering a domain name to operate a website with hyperlinks to competitors of Complainant, Respondent is not using the <airoptixaqua.info> domain name in a manner constituting 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).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent uses the disputed domain name to host a “pay-per-click” website containing hyperlinks to third-party websites which sell products similar to those sold by Complainant and alleges that such use is evidence of bad faith within the meaning of Policy ¶ 4(b) (iv). The Panel agrees and concludes that Respondent, by attracting Internet traffic by using a confusingly similar name in order to increase Internet sales, registered and is using the <airoptixaqua.info> domain name in bad faith pursuant to ¶ 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 Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (stating that the respondent attracted Internet users to its website for its own financial gain by creating a probability that users would be confused as to the complainant’s sponsorship of the website).
Secondly, Complainant asserts that Respondent had constructive knowledge of Complainant’s rights in the AIR OPTIX mark because the mark was federally registered prior to Respondent’s registration of the domain name. Whilst it is often said that constructive knowledge is not sufficient evidence of bad faith, the Panel finds that, based on Complainant’s submission that Respondent’s domain name resolves to a web page offering hyperlinks to Complainant’s competitors, Respondent had actual knowledge of Complainant’s rights in the AIR OPTIX mark. Therefore, the Panel finds that Respondent registered the <airoptixaqua.info> domain name in bad faith within the meaning of Policy ¶ 4(a) (iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not 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).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the domain name using the AIR OPTIX mark, adding to it the word “aqua” and thereby invoking the name of one of Complainant’s products and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <airoptixaqua.info> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 14, 2012
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