Novartis AG v. RonLux Global
Claim Number: FA1210001468445
Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is RonLux Global (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usadailies.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Anne M. Wallace, Q.C. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 23, 2012; the National Arbitration Forum received payment on October 23, 2012.
On October 24, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <usadailies.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 October 24, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 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@usadailies.com. Also on October 24, 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.
A timely Response was received and determined to be complete on October 24, 2012.
On November 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Anne M. Wallace Q.C. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
a) Complainant submits that it has rights in the DAILIES mark. Specifically:
a. The mark is used in connection with contact lenses.
b. Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registration for the DAILIES mark (Reg. No. 2,167,845 registered June 23, 1998).
b) The <usadailies.com> domain name is confusingly similar to the DAILIES mark. Respondent’s addition of the geographic identifier “usa” and the generic top-level domain (“gTLD”) “.com” fails to distinguish the disputed domain name from Complainant’s DAILIES mark.
c) Respondent does not have rights or legitimate interests in the <usadailies.com> domain name. Specifically:
a. Respondent is not commonly known by the <usadailies.com> domain name. Respondent has no connection or affiliation with Complainant and Complainant has not consented to Respondent’s use of the <usadailies.com> domain name.
b. The <usadailies.com> domain name resolves to a website where Respondent displays click-through links to various sellers of contact lens products.
d) Respondent registered and is using the <usadailies.com> domain name in bad faith. Specifically:
a. Respondent registered the <usadailies.com> domain name with the intent to divert users seeking information about Complainant or its products to Respondent’s website. Respondent is clearly attempting to increase its own Internet sales through association with Complainant’s DAILIES mark. Respondent registered and uses the <usadailies.com> domain name for commercial gain.
b. Respondent had constructive notice of Complainant’s DAILIES mark prior to the selection, registration, and use of the <usadailies.com> domain name.
B. Respondent
Respondent submits:
a) While registering the <usadailies.com> domain name, Respondent received no warning message and merely received confirmation that the domain name was available for registration.
b) Respondent did not know of Complainant’s <dailies.com> domain name and was not intending to cause confusion with that domain name.
c) The <usadailies.com> domain name does not yet resolve to an active website.
The Panel finds as follows:
1. Complainant has rights in the DAILIES mark.
2. The <usadailies.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent does not have rights or legitimate interests in the disputed domain name.
4. Respondent registered and is using the disputed domain name in bad faith.
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.
Respondent made no submissions with respect to whether the disputed domain name is identical to or confusingly similar to a mark owned by Complainant. Complainant submits that it has rights in the DAILIES mark and that the mark is used to market contact lens products. Complainant has provided evidence of Complainant’s ownership of the USPTO registration for the DAILIES mark (Reg. No. 2,167,845 registered June 23, 1998). In Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007), the panel held that registration of a mark with a trademark authority is evidence of having rights in a mark. The panel in Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007), held that these rights stemming from a USPTO trademark registration satisfy Policy ¶ 4(a)(i) regardless of where the respondent lives and/or operates. Therefore, Complainant has established rights in the DAILIES mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that the disputed domain name is confusingly similar to its DAILIES mark. Complainant notes that Respondent merely added the geographic term “usa” and the gTLD “.com” to the DAILIES mark to create the <usadailies.com> domain name. The addition of a geographic term does not create for Internet users a real distinction between the disputed domain name and Complainant’s mark. See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark). As well, the addition of a gTLD has no impact on a determination of confusing similarity. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The <usadailies.com> domain name is therefore confusingly similar to the DAILIES mark under Policy ¶ 4(a)(i).
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.”).
Complainant alleges that Respondent is not commonly known by the <usadailies.com> domain name, that Respondent has no connection or affiliation with Complainant, and that Complainant has not consented to Respondent’s use of the <usadailies.com> domain name. The WHOIS record for the disputed domain name lists “RonLux Global” as the domain name registrant. Panels have found that the information available on the record, the WHOIS record included, is strong evidence of whether a Respondent is known by a domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). On the evidence before us, the Panel finds that Respondent is not commonly known by the <usadailies.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s use of the <usadailies.com> domain name is evidence of Respondent’s lack of rights and legitimate interests. The <usadailies.com> domain name resolves to a website where Respondent displays click-through links to various third-party websites. These links relate to contact lens products, and thus the links are competitive with Complainant’s offerings of contact lens products. While Respondent asserts that there is no website using the disputed domain name, Complainant’s Exhibit 5 is a screenshot of the <usadailies.com> domain name’s resolving website. This website says it is for sale, but also includes ten links, nine of which are websites involving contact lenses. Therefore, the Panel finds Respondent has neither rights nor legitimate interests in the <usadailies.com> domain name as the <usadailies.com> domain name is used for neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
In support of its argument that Respondent registered the <usadailies.com> domain name in bad faith, Complainant notes that the disputed domain name resolves to a website which displays click-through links to various websites. Complainant’s Exhibit 5 demonstrates all but one of these links relate to contact lens products, and thus the links are competitive with Complainant’s offerings of contact lens products. The Panel notes the links are listed under headings such as “Free Trial Contact Lens” and “Contact Lenses Online.” This evidence supports an inference that Respondent registered the <usadailies.com> domain name with the intent to divert Internet users seeking information about Complainant and its DAILIES products to Respondent’s website, thereby increasing competitors’ sales through association with Complainant’s DAILIES mark. The evidence also leads to the inference Respondent registered and is using the <usadailies.com> domain name for its own commercial gain because inferentially Respondent is commercially benefiting through click-through revenues. The Panels finds this is bad faith pursuant to Policy ¶ 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.’”).
Complainant lastly contends that Respondent had constructive notice of Complainant’s DAILIES mark prior to the selection, registration, and use of the <usadailies.com> domain name. Complainant argues that this knowledge is demonstrated because Respondent fully incorporated the DAILIES mark into the disputed domain name and as a result of the related use of the <usadailies.com> domain name to Complainant’s offerings. Panels have generally found constructive knowledge insufficient to support a holding of bad faith. See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Nat. Arb. Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."). While there is no direct evidence Respondent knew of Complainant’s mark before registering the disputed domain name, there is evidence on which an inference may be drawn that Respondent did have knowledge. The disputed domain name incorporates Complainant’s mark which is used in relation to contact lens sales. Respondent’s web site links to commercial sellers of contact lenses. This evidence leads to the inference Respondent had actual knowledge of Complainant’s mark. Respondent has provided no cogent evidence to demonstrate Respondent did not have knowledge.In the circumstances, the Panel concludes Respondent had actual knowledge of Complainant’s rights in the DAILIES mark before registering the <usadailies.com> domain name, which is bad faith registration and use under Policy ¶ 4(a)(iii). See
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 "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, the Panel Orders that the <usadailies.com> domain name be TRANSFERRED from Respondent to Complainant.
Anne M. Wallace, Q.C., Panelist
Dated: November 13, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page