Novartis AG v. Domain Administrator
Claim Number: FA1205001446629
Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is Domain Administrator (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thedailies.com>, registered with DomainTimeMachine, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 31, 2012; the National Arbitration Forum received payment on May 31, 2012.
On June 1, 2012, DomainTimeMachine, LLC confirmed by e-mail to the National Arbitration Forum that the <thedailies.com> domain name is registered with DomainTimeMachine, LLC and that Respondent is the current registrant of the name. DomainTimeMachine, LLC has verified that Respondent is bound by the DomainTimeMachine, LLC 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 June 4, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 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@thedailies.com. Also on June 4, 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 July 2, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant discovers, develops, manufactures and distributes products for, among other things, vision care and eye health.
Complainant owns a trademark registration for its DAILIES mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,167,845 registered June 23, 1998). Complainant first used its trademark in commerce on February 2, 1998.
Complainant uses the DAILIES mark in connection with promoting and providing information to customers about its contact lens products.
Respondent’s domain name, <thedailies.com>, is confusingly similar to Complainant’s DAILIES mark.
The disputed domain name resolves to a parked website that contains hyperlinks to a variety of informational sources, primarily relating to contact lens and eye health information, and to websites in direct competition with Complainant.
Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith due to commercial benefit, and had constructive notice of Complainant’s DAILIES mark prior to the selection of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO trademark registration for DAILIES.
Respondent registered the disputed domain name on or about May 9, 2012.
Respondent is not authorized to use Complainant’s DAILIES trademark.
At the time the at-issue domain name was registered, Respondent had actual knowledge of Complainant and Complainant’s rights in the DAILIES mark.
The <thedailies.com> domain name references a parked website that contains hyperlinks to a variety of informational sources, primarily relating to contact lens and eye health information, and to websites 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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant‘s trademark registration for the DAILIES mark with the USPTO demonstrates that Complainant has rights in a mark pursuant to Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
The only differences between the <thedailies.com> domain name and Complainant’s mark is the addition of the article, “the,” and the appended generic top-level domain name, “.com.” These alterations are insufficient to differentiate the domain name from Complainant’s mark for the purposes of Policy ¶4(a)(i). See Marriott Int’l, Inc. v. Stealth Commerce, FA 109746 (Nat. Arb. Forum May 28, 2002) (“[T]he addition of the [article] ‘the’ to the beginning of the domain names fails to make them separate and distinct, as distinguishable from Complainant’s marks.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Respondent’s domain name is thus confusingly similar to Complainant’s trademark.
Respondent lacks rights and legitimate interests in respect of the <thedailies.com> domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at‑issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
In light of Complainant’s uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
Respondent registered and uses the at-issue domain names in bad faith.
Respondent registered and uses the confusingly similar domain name, <thedailies.com>, to capitalize on the goodwill associated with Complainant’s DAILIES mark. As mentioned above, it appears that Respondent earns, or intends to earn, a click-through fee each time an Internet user clicks on one of the third-party hyperlinks presented on the website addressed by Respondent’s at‑issue domain name. Notably, the hyperlinks include references to Complainant’s direct competitors. Since Respondent attempts to profit from the consumer confusion it deliberately created, it is apparent that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Furthermore, in light of Complainant’s trademark registration, the notoriety of the DAILIES mark, the inclusion of Complainant’s entire mark within the domain name, and the lack of any response by Respondent showing Respondent’s registration to be made absent actual knowledge of Complainant and its DAILIES mark, the Panel concludes that Respondent must have had knowledge of Complainant and Complainant's rights in the DAILIES mark at the time it registered <thedailies.com>. Respondent’s registration of a domain name containing Complainant’s registered trademark, with actual knowledge of such trademark, further evidences bad faith under the Policy. See 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); 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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thedailies.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 2, 2012
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