Novartis AG v. ashim parti / ZAK ADVISORS PVT LTD
Claim Number: FA1203001433639
Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is ashim parti / ZAK ADVISORS PVT LTD (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dailies.asia>, 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.
Sandra J. Franklin 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 <dailies.asia> 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@dailies.asia. 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 Sandra J. Franklin 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 <dailies.asia> domain name is confusingly similar to Complainant’s DAILIES mark.
2. Respondent does not have any rights or legitimate interests in the <dailies.asia> domain name.
3. Respondent registered and used the <dailies.asia> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant holds trademark registrations for its DAILIES mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,167,845 registered June 23, 1998), and with India’s Office of the Controller-General of Patents, Designs and Trademarks (“OCGPDT”) (Reg. No. 661,311 registered April 3, 1995). Complainant uses the mark to host a website, promote its products and provide information to consumers.
Respondent registered the <dailies.asia> domain name on September 9, 2009. Respondent’s domain name resolves to a website that sells vision products, including contact lenses, in direct competition with Complainant.
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.”).
The Panel finds that Complainant has rights in its DAILIES mark by registering the mark with the USPTO and the OCGPDT under Policy ¶ 4(a)(i). The panels in Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004), and Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005), similarly found that a complainant establishes rights in a mark through registration of that mark with trademark authorities internationally.
Respondent’s <dailies.asia> domain name is confusingly similar to Complainant’s DAILIES mark, as it uses the entire mark, adding only the sponsored top-level domain (“sTLD”) “.asia.” The Panel finds that Respondent’s domain name is not adequately distinguishable from the DAILIES mark. See AutoZone Parts, Inc. v. DomainBonus.com, FA 1229026 (Nat. Arb. Forum Dec. 1, 2008) (finding that the addition of the sTLD “.asia” is irrelevant in determining whether the disputed domain name is identical or confusingly similar to a mark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a top-level domain to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 asserts that Respondent is not connected or affiliated with its business and that Respondent is not known by the DAILIES mark. The panel in IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), stated that the respondent failed to demonstrate any rights and legitimate interests in the domain name because the respondent was not authorized to register a domain name using the complainant’s mark and did not submit further evidence that it is commonly known by the domain name. In St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), the panel stated that the respondent did not have rights or legitimate interests in a disputed domain name when the respondent provided no evidence to show it was commonly known by the domain name. The Panel similarly finds that the evidence in the record demonstrates that Respondent is not commonly known by the disputed domain name and has no rights or legitimate interests in the <dailies.asia> domain name under Policy ¶ 4(c)(ii).
Complainant argues that, by selling products similar to those marketed by Complainant, Respondent is not using the <dailies.asia> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant asserts that the domain name diverts Internet traffic to Respondent’s website in order to increase Respondent’s own commercial sales. The Panel finds that Respondent’s use of the disputed domain name to host a website selling competing products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent uses the <dailies.asia> domain name to divert users seeking Complainant to competitors in order to make a profit. The panel in Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000), held that the respondent’s use of a domain name to confuse the visitor into believing that the complainant is the sponsor of a website that offers similar services to those offered by the complainant demonstrates bad faith. In Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006), the panel held that attracting Internet traffic to its own website to offer competing services was a violation of Policy ¶ 4(b)(iv). The Panel finds that Respondent’s use of the disputed domain name to confuse consumers and attract Internet traffic to its own website to increase profits amounts to bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Complainant claims that, due to its USPTO and OCGPDT registrations since 1995, Respondent had actual knowledge of the DAILIES mark prior to registering the mark and that such knowledge is evidence of bad faith registration and use of the <dailies.asia> domain name. The Panel finds that, because Respondent offers the same kinds of products related to vision and eye care that Complainant’s business deals in, Respondent had actual notice of Complainant’s rights in the mark and thus registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii). 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."); see also 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.").
The Panel finds that Complainant has satisfied 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 <dailies.asia> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 19, 2012
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