Novartis AG v. A David / Aeroptix
Claim Number: FA1210001468450
Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is A David / Aeroptix (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aeroptix.info> and <aeroptix.com>, registered with GoDaddy.com, LLC.
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.
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 <aeroptix.info> and <aeroptix.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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@aeroptix.info, postmaster@aeroptix.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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 28, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
(a) Both of the domain names <aeroptix.info> and <aeroptix.com> merely substitute the first “i” in Complainant’s AIR OPTIX mark with an “e.” In each case, the vowels are pronounced the same, making the disputed domain names visually and phonetically similar to Complainant’s mark.
(b) The confusing similarity between the disputed domain names and Complainant’s mark is made more clear by the fact Respondent is using the domain names to sell a variety of products similar to those sold by Complainant under the AIR OPTIX mark.
(c) Respondent’s addition of the respective generic top-level domains (“gTLDs”) “.info” and “.com” to the disputed domain names does not prevent a confusing similarity. Past panels have found that gTLDs do not sufficiently differentiate the disputed domain name from a mark.
(a) Decisions applying the Policy have found that the fact that a Respondent is not known by a mark indicates that the Respondent has no rights in the mark.
(b) Respondent is not providing a bona fide offering of goods and/or services, nor a legitimate noncommercial or fair use because Respondent is using the disputed domain names to divert Internet users into buying products that compete with those sold by Complainant under the AIR OPTIX mark.
(c) Respondent has no connection or affiliation with Complainant, and Complainant has not consented to Respondent’s use of the Domain Names.
(a) Policy ¶ 4(b) (iv): Confusing internet users to attract them for commercial gain.
i. Respondent is generating “click-through” revenue from users searching for information about Complainant and its contact lens products.
ii. Respondent is also confusing Internet users so that the users associate Complainant’s AIR OPTIX mark with the competing products Respondent is selling on the disputed domain names’ resolving websites.
(b) Constructive notice: Respondent has constructive notice because Complainant has registered the AIR OPTIX mark since as early as 2005.
(c) Respondent’s registration of domain names which contain Complainant’s entire trademark with only a single letter difference in spelling serves as an indication of bad faith. No plausible explanation exists as to why Respondent selected an identical version of this mark for the domain names, particularly Domain Names used to direct consumers to competing contact lens products, other than to trade on the goodwill of Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent international company that discovers, develops, manufactures and distributes products for, among other things, vision care and eye health.
2. Complainant is the registered owner of the trademarks AIR OPTIX, registered on August 19, 2008 with the United States Patent and Trademark Office (“USPTO”) in the United States, Reg. Nos. 3,490,248 and 3,490,249, in connection with contact lenses products and related internet services.
3. Respondent registered the Domain Names <aeroptix.info> and <aeroptix.com> (the “Domain Names”) on or about September 30, 2012. The Domain Names are used in connection with websites which provide hyperlinks to a variety of information, primarily 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.”).
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant argues generally that the WHOIS information illustrates that both domain names are controlled by the same registrant, and that said registrant is Respondent. The Panel notes that while the WHOIS information for the disputed domains list different registrants (“A David / Aeroptix Ltd” and “Aeroptix / Aeroptix Ltd”), the WHOIS information for both <aeroptix.info> and <aeroptix.com> list “A David” as the only contact, and said “A David” is affiliated with “Aeroptix Ltd” in both of the disputed domains’ WHOIS information. Further, the Panel notes that the WHOIS information contains identical mailing address, e-mail address, telephone information, and Domain servers. Lastly, the Panel also notes that the disputed domain names were registered on the same day, September 30, 2012.The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant argues that it owns and uses the trademark AIR OPTIX, and has used its <airoptix.com> domain name since at least as early as 2005, and variations thereof in connection with its contact lens products and related internet services. The Panel notes that the evidence provided establishes Complainant’s rights in the AIR OPTIX mark as early as 2008, as Complainant has registered its mark with the USPTO twice (Reg. Nos. 3,490,248 and 3,490,249, registered Aug. 19, 2008). The Panel finds that these registrations with the USPTO satisfactorily establish Complainant’s rights, even though Respondent does not list the United States as its country of origin. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a) (i));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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The second question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s registered AIR OPTIX marks.
Complainant argues that both the <aeroptix.info> and <aeroptix.com> domain names are confusingly similar to the AIR OPTIX marks. Complainant notes that both the <aeroptix.info> and <aeroptix.com> domain names merely substitute the first “i” in Complainant’s AIR OPTIX mark with an “e.” Complainant asserts that both vowels are pronounced the same, making the disputed domain names visually and phonetically the same as Complainant’s marks. Complainant concludes by stating that Respondent’s addition of the respective gTLDs “.info” and “.com” to the disputed domain names does not prevent a confusing similarity. The Panel finds the deletion of the space between AIR OPTIX, as well as the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The Panel agrees with Complainant’s argument in regards to the pronunciation similarities, and finds that the similar pronounciation adds to confusing similarity. See Pfizer Inc. v. Phizer's Antiques, D2002-0410 (WIPO July 3, 2002) (finding the <phizer.com> domain name phonetically equivalent and confusingly similar to the PFIZER mark). Finally, the Panel finds that the fact the only change Respondent made to the disputed domain names was swapping the first “i” in AIR OPTIX mark to an “e” adds to confusing similarity. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). For these reasons, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s AIR OPTIX marks under Policy ¶ 4(a) (i).
Complainant has thus made out the first of the three elements that it must establish.
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 names 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 registered marks
and to use them in its domain names, making only one minor spelling change before embodying them in the respective domain names;
(b) Respondent has then linked the domain names to websites providing hyperlinks to a variety of information, primarily contact lens and eye health information and to websites promoting products in direct competition with Complainant.
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d)Complainant alleges that Respondent lacks rights and legitimate interests in respect to the <aeroptix.info> and <aeroptix.com> domain names as decisions applying the Policy have found that the fact that a Respondent is not known by a mark indicates that the Respondent has no rights in the domain name. Complainant also submits that Respondent has no connection or affiliation with Complainant and that Complainant has not consented to Respondent’s use of the domain names. The Panel notes that, as referenced in the above preliminary issue section, the WHOIS information illustrates that both the <aeroptix.info> and <aeroptix.com> domain names appear to be registered by an “Aeroptix Ltd” or an agent of said company named “A David.” However, in the absence of an affirmative response by a respondent, there is no way to be sure whether a respondent was commonly known by the disputed domain name prior to registering the disputed domain and there are prior decisions to that effect. See Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”). The Panel agrees and finds that the equivocal nature of the WHOIS information combined with Complainant’s assertion that it did not authorize Respondent’s use of the AIR OPTIX mark shows on the balance of probabilities that Respondent was not commonly known by the disputed domain names under Policy ¶4(c)(ii).
(e)Complainant further argues that Respondent is not providing a bona fide offering of goods and/or services, nor a legitimate noncommercial or fair use because Respondent is using the disputed domain names to divert Internet users into buying products that compete with those sold by Complainant under the AIR OPTIX mark. The Panel notes that the <aeroptix.info> domain name resolves to a website featuring hyperlinks to third-party sites that solicit contact lens products and services as well as the ability for Internet users to buy the domain name. See Complainant’s Exhibit 5. In regards to the <aeroptix.com> domain name, the Panel notes that it resolves to a website that appears exclusively to sell contact lenses and related products. Id. The Panel finds that the <aeroptix.info> domain name fails to provide 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), because it merely redirects Internet users to websites that sell products and services that compete with the products and services sold by Complainant under the AIR OPTIX mark. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). The Panel also finds that the <aeroptix.com> domain name fails to constitute 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), because Respondent is using the resolving website to directly sell products that compete with Complainant’s business under the AIR OPTIX mark. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to 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 names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have 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 names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and is using the <aeroptix.info> and <aeroptix.com> domain names in bad faith because Respondent is confusing Internet users in order to attract more users to Respondent’s website for commercial gain. In regards to both domain names, Complainant asserts that Respondent is generating “click-through” revenue from Internet users who mistakenly use the links on the disputed domain names when the users were searching for information about Complainant and its AIR OPTIX contact lens products. In regards to the <aeroptix.com> domain name particularly, the Panel notes that the resolving website features products that are similar to those products sold under Complainant’s AIR OPTIX mark. See Complainant’s Exhibit 5. The Panel finds, in regards to Respondent’s profits gained through “click-through” revenues, that Respondent registered and uses the disputed domain names in bad faith by redirecting confused or mistaken Internet users to third-party websites that sell products that compete with the goods/services sold under Complainant’s AIR OPTIX mark. 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). The Panel also agrees that the fact that the website to which the <aeroptix.com> domain name resolves offers products that compete directly with those sold under the AIR OPTIX mark is evidence of bad faith use and registration in regards to that mark. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site). For these reasons, the Panel finds that both the <aeroptix.info> and <aeroptix.com> domain names were registered by Respondent in bad faith and that Respondent is continuing to use them in bad faith under Policy ¶ 4(b) (iv).
Secondly, Complainant maintains that Respondent’s bad faith use and registration is evident because Respondent has constructive notice of Complainant’s rights through its registration of the AIR OPTIX marks. It is now generally accepted that constructive notice in itself does not establish Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). 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."). However, the Panel finds, from the evidence and arguments submitted by Complainant, that Respondent had actual knowledge of Complainant’s rights in the AIR OPTIX mark prior to registering the disputed domain names and the Panel therefore finds that Respondent has registered the disputed domain names in bad faith under Policy ¶ 4(a) (iii). 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).
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 names using Complainant’s registered AIR OPTIX marks and in view of the conduct that Respondent engaged in when using them, Respondent registered and used the disputed domain names 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.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aeroptix.info> and <aeroptix.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: November 29, 2012
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