national arbitration forum

 

DECISION

 

Novartis AG v. NURINET

Claim Number: FA1204001441333

 

PARTIES

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

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <airoptic.com>, registered with Netpia.com, 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.

 

The Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 27, 2012; the National Arbitration Forum received payment on April 27, 2012.

 

After numerous requests, the Registrar, Netpia.com, Inc., has not confirmed to the National Arbitration Forum that the <airoptic.com> domain name is registered with Netpia.com, Inc. or that Respondent is the current registrant of the name. Registar’s non-compliance has been reported to ICANN. The Forum’s standing instructions are to proceed with this dispute.

 

On May 14, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 4, 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@airoptic.com.  Also on May 14, 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 June 7, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant made the following contentions:

 

1. Complainant has registered the AIR OPTIX trademark with the United States Patent and Trademark Office (“USPTO”):

 

Reg. No. 3,490,248 registered August 19, 2008 and

Reg. No. 3,490,249 registered August 19, 2008.

 

  1. Complainant discovers, develops, manufactures, and distributes products for vision care and eye health, using its AIR OPTIX mark in connection with its contact lens products and related Internet services.

 

  1. Respondent registered the <airoptic.com> domain name on March 9, 2010.

 

 

  1. Respondent uses the disputed domain name in connection with a website that provides hyperlinks to a variety of information, primarily contact lens and eye health information, and websites in competition with Complainant.

 

 

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

 

 

  1. Respondent has no rights or legitimate interests in the disputed domain name.

 

 

  1. Respondent has no connection or affiliation with Complainant, and Complainant has not consented to Respondent’s use of the disputed domain name.

 

 

  1. Neither Respondent nor its business is commonly known by the name “AIR OPTIX.”

 

  1. Respondent has registered the disputed domain name in bad faith by seeking to generate “click-through” revenue from users searching for information about Complainant and its contact lens products by diverting Internet users to Respondent’s resolving website.

 

 

  1. Respondent had constructive notice of Complainant’s AIR OPTIX mark prior to the selection of the disputed domain name.

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

 

 

FINDINGS

 

1. Complainant is a well-known Swiss company that, among other things, discovers, develops, manufactures, and distributes products for vision care and eye health, using its AIR OPTIX mark in connection with its contact lens products and related Internet services.

 

 

2. Complainant has registered the AIR OPTIX trademark with the United States Patent and Trademark Office (“USPTO”):

 

Reg. No. 3,490,248 registered August 19, 2008 and

Reg. No. 3,490,249 registered August 19, 2008.

 

  1. Respondent registered the <airoptic.com> domain name on March 9, 2010 and uses it in connection with a website that provides hyperlinks to a variety of information, primarily contact lens and eye health information and websites in competition with Complainant.

 

 

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

 

The first question that arises is whether Complainant has rights in a trademark or service mark. In that regard, Complainant argues that it has rights in the AIR OPTIX mark because it has registered its mark with the USPTO, particulars of which are as follows:

 

Reg. No. 3,490,248 registered August 19, 2008 and

Reg. No. 3,490,249 registered August 19, 2008.

 

The Panel finds that these USPTO trademark registrations suffice to prove Complainant’s rights in the mark under Policy ¶ 4(a) (i), even though Respondent is located in Korea and not the U.S. 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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). 

 

The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s AIR OPTIX mark. Complainant asserts that Respondent’s <airoptic.com> domain name is confusingly similar to Complainant’s AIR OPTIX mark because the disputed domain name consists of Complainant’s entire mark, changing only the letter “x” to the letter “c” and adding the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. Complainant argues that neither of these minor changes prevents a finding of confusing similarity under Policy ¶ 4(a) (i) and the Panel agrees with that submission and so finds. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).

 

Complainant has thus made out the first of the three elements that it must establish.

 

 

Rights or Legitimate Interests

 

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 its domain name , making only a minor change in spelling,  thus enhancing the confusing similarity between the domain name and the trademark;

 

(b) Respondent has then decided to use the domain name in connection with a website that provides hyperlinks to a variety of information, primarily contact lens and eye health information and websites in competition with Complainant;

 

(c)  Respondent has engaged in these activities without the consent or approval of Complainant;

 

     (d) Complainant also submits that Respondent has no connection or affiliation with Complainant. Complainant submits that it has not consented to Respondent’s use of the disputed domain name and that neither Respondent nor Respondent’s business is known by the name “AIR OPTIX.” The Panel notes that the WHOIS information provided by Complainant indicates that “NURINET” is the registrant of the disputed domain name. Based on these allegations and the evidence in the record, the Panel determines that Respondent is not commonly known by the disputed domain name according to Policy ¶ 4(c) (ii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).

 

      (e) Complainant contends that Respondent uses the <airoptic.com> domain name to resolve to a website featuring links to information about contact lenses and eye health and to competing third parties selling contact lens-related products. The Panel notes that the screenshot provided by Complainant shows links with various titles, such as “Contact Care Products,” “Acuvue® Contact Lenses,” “Free Samples in Your Mail,” etc. The Panel concludes that Respondent’s use of the disputed domain name to display hyperlinks to competing third-party websites is not consistent with the Policy requirements for 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 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)). 

 

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.

 

Registration and Use in Bad Faith

 

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 asserts that Respondent registered the disputed domain name in bad faith according to Policy ¶ 4(b) (iv) because Respondent uses the disputed domain name to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark. Complainant alleges that Respondent operates a website at the disputed domain name seeking to generate “click-through” revenue from users searching for information about Complainant and its contact lens products. Complainant argues that, because its mark is so well-known in connection with contact lenses, it is clear that Respondent registered the disputed domain name with the intent to divert users to Respondent’s website. Complainant contends that Respondent’s use of the disputed domain name to display hyperlinks for its own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b) (iv). The Panel agrees with those submissions by Complainant. 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 website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).

 

Secondly, Complainant also asserts that Respondent had constructive notice of Complainant’s AIR OPTIX mark prior to the selection of the disputed domain name due to Complainant’s prior-filed federal trademark registrations. While previous panels have held that constructive notice alone is insufficient for a finding of bad faith registration,  the Panel determines that in the present case Respondent had actual notice of Complainant’s mark and the Panel therefore holds that Respondent registered the <airoptic.com> domain name in bad faith according to Policy ¶ 4(a) (iii). 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 Minicards Vennootschap Onder Firma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had “actual knowledge of Complainant’s mark when registering the disputed domain name.”).

 

Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the AIR OPTIX mark and the use of the disputed domain name by Respondent in connection with a website featuring links to information about contact lenses and eye health and to competing third parties selling contact lens-related products, 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.

 

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

 

 

The Honourable Neil Anthony Brown QC

Panelist

Dated:  June 11, 2012

 

 

 

 

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