national arbitration forum

 

DECISION

 

Novartis AG v. ICS INC.

Claim Number: FA1206001448748

 

PARTIES

Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA.  Respondent is ICS INC. (“Respondent”), Cayman Islands.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <freshlookcontact.net>, registered with TUCOWS, INC.

 

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electron-ically on June 14, 2012; the National Arbitration Forum received payment on June 14, 2012.

 

On June 15, 2012, TUCOWS, INC. confirmed by e-mail to the National Arbitra-tion Forum that the <freshlookcontact.net> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name.  TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 June 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 2012 by which Re-spondent 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@freshlookcontact.net.  Also on June 18, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion 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 17, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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 discovers, develops, manufactures and distributes products for vision care and eye health under the FRESHLOOK mark.

 

Complainant has registered the FRESHLOOK trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,888,957, registered Sep-tember 28, 2004).

 

Respondent registered the disputed <freshlookcontact.net> domain name on May 29, 2012.

 

Respondent’s <freshlookcontact.net> domain name is confusingly similar to Complainant’s FRESHLOOK mark.

 

Respondent has not been commonly known by the <freshlookcontact.net> domain name.

 

Respondent is not connected or affiliated with Complainant, and Complainant has never consented to Respondent’s registration of the <freshlookcontact.net> domain name.

 

Respondent uses the disputed domain name to generate click-through revenue by hosting hyperlinks resolving to the websites of Complainant’s competitors in the contact lens industry.

 

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

 

Respondent attempts to divert Internet users seeking information about Com-plainant to the websites of Complainant’s business competitors.

 

Respondent both registered and uses the disputed domain name in bad faith.

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)  the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and

(2)  Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)  the same domain name was registered and is being used by Respondent in bad faith.

 

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 can-celled or transferred:

 

i.      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.     Respondent has no rights or legitimate interests in respect of the domain name; and

iii.    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 represent-ations 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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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 has rights in the FRESHLOOK trademark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO.  See, for example, AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006), in which a panel determined that a trademark registration with the USPTO sufficiently demonstrated a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i). 

 

This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction other than that of Respondent’s residence or principal place of business.  See Renaissance Hotel Holdings, Inc. v. Ren-aissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007), in which a panel found that a complainant was not required to register its mark in the country where a respondent resides or operates in order to meet the requirements of Policy ¶ 4(a)(i).

 

Turning then to the central question under this head of the Policy, we conclude from our review of the record that Respondent’s <freshlookcontact.net> domain name is confusingly similar to Complainant’s FRESHLOOK trademark.  The domain name combines Complainant’s entire FRESHLOOK mark with the descriptive term “contact” and the generic top level domain (“gTLD”) “.net.”  These alterations of the mark, made in forming the domain name, do not remove the domain name from the realm of confusing similarity under the standards of the Policy.  See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005), in which a panel held that the additions of a descriptive term and a gTLD failed to distinguish a disputed domain name from the mark of another from which it was derived. 

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):

 

Complainant must first make a prima facie showing that Respond-ent 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 has made a sufficient prima facie showing under this head of the Policy.  Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name.  See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name.  Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.

 

We begin by noting that Complainant alleges, and Respondent does not deny,

that Respondent has not been known by the <freshlookcontact.net> domain name, that Respondent is not affiliated with Complainant, and that Complainant has not consented to Respondent’s registration of the <freshlookcontact.net> domain name.  Moreover, the pertinent WHOIS information identifies the regis-trant of the disputed domain name only as “ICS INC.,” which does not resemble the contested domain name.  On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have dem-onstrated that it has rights to or legitimate interests in the domain under Policy ¶ 4(c)(ii).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), where a panel determined that a respondent was not commonly known by a disputed domain name, and so had no rights to or legitimate interests in that domain within the meaning of Policy ¶ 4(c)(ii), based on the relevant WHOIS information and the lack of authorization to use a complainant’s mark.   

 

We next observe that Complainant asserts, without objection from Respondent, that Respondent has no rights to or legitimate interests in the disputed domain name, in that Respondent uses the domain to generate click-through revenue by hosting hyperlinks resolving to the websites of Complainant’s competitors in the contact lens industry.  Our review of the record persuades us that this employ-ment of the contested domain name is neither a bona fide offering of goods or services under Policy ¶ 4(a)(i) nor a legitimate noncommercial or fair use of the domain under Policy ¶ 4(a)(iii).  See, for example, United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007), where a panel held that a respondent’s use of a domain name, which was confusingly similar to the mark of another, to host hyperlinks to websites operating in competition with the business of a UDRP complainant showed an absence of rights to or legitimate interests in a contested domain name under Policy ¶¶ 4(c)(i) and (iii).  

 

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

 

Registration and Use in Bad Faith

 

In the circumstances here presented, we may comfortably presume, as alleged in the Complaint, that Respondent uses the <freshlookcontact.net> domain name to generate click-through revenue by hosting hyperlinks resolving to the websites of Complainant’s competitors in the contact lens industry.  By this means Respond-ent attempts to divert Internet users seeking information about Complainant to the websites of Complainant’s commercial competitors, which is evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iv).  On the point, see, for example, Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006).

 

We are also convinced from the record that Respondent knew of Complainant and of its rights in the FRESHLOOK trademark when it registered the contested <freshlookcontact.net> domain name.  This is independent evidence that Re-spondent both registered, and now uses, the disputed domain name in bad faith under Policy ¶ 4(a)(iii).  See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith under the Policy where a respondent was "well-aware of” a complainant's YAHOO! mark at the time of an offending domain name’s registration).

 

For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.

 

Accordingly, it is Ordered that the <freshlookcontact.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  July 30, 2012

 

 

 

 

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