Novartis AG v. George Johnson
Claim Number: FA1212001477549
Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is George Johnson (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freshlookz.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 27, 2012; the National Arbitration Forum received payment on December 27, 2012.
On December 28, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <freshlookz.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 December 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 17, 2013 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@freshlookz.com. Also on December 28, 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 January 23, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s <freshlookz.com> domain name, the domain name at issue, is confusingly similar to Complainant’s FRESHLOOK mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant discovers, develops, manufactures and distributes products for, among other things, vision care and eye health. In this connection, Complainant has registered the FRESHLOOK trademark with United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,888,957 registered Sept. 28, 2004). Respondent registered the <freshlookz.com> domain name on or about December 12, 2012. The disputed domain name contains Complainant’s entire trademark with the addition of the letter “z.” The addition of the letter “z” is insufficient to avoid a likelihood of confusion between the domain name and the trademark. The addition of the top-level domain name “.com” to the trademark does not keep the domain name from being confusingly similar to Complainant’s mark. Respondent is not commonly known by the name “FRESHLOOK” or any variation thereof and has no connection or affiliation with Complainant and Complainant has not consented to Respondent’s use of the mark. Respondent’s use of the domain name is 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). Respondent is using the domain name for its own commercial gain, by seeking to generate “click-through” revenue from users searching for information about Complainant and its contact lens products. The disputed domain name directs the user to sites selling competing contact lens products. Respondent had constructive notice of Complainant’s FRESHLOOK trademark prior to the selection of the domain name. The use of Complainant’s entire mark in the domain name serves as an indication of bad faith. No plausible explanation exists as to why Respondent would select a nearly identical version of the mark as part of the domain name.
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.”).
Complainant has rights in the FRESHLOOK trademark pursuant to Policy ¶ 4(a)(i) based on its registration of the mark with the USPTO (Reg. No. 2,888,957 registered Sept. 28, 2004). Complainant discovers, develops, manufactures and distributes products for, among other things, vision care and eye health and uses the mark in connection therewith. Complainant’s registration of a mark is sufficient to confer rights in the mark under Policy ¶ 4(a)(i). See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO). Accordingly, Complainant has established rights in the FRESHLOOK mark for the purposes of Policy ¶ 4(a)(i) through its registration of the mark with the USPTO.
Respondent’s <freshlookz.com> domain name is confusingly similar to Complainant’s FRESHLOOK mark within the meaning of Policy ¶ 4(a)(i). The disputed domain name includes Complainant’s entire mark, while adding the letter “z,” and the generic top-level domain (“gTLD”) “.com.” The addition of a single letter is insufficient to create a distinctive domain name. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)). The affixation of a gTLD does not make the domain name distinctive. 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). Accordingly, Respondent’s <freshlookz.com> domain name is confusingly similar to Complainant’s FRESHLOOK mark within the meaning of Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent has no rights or legitimate interests in the domain name because Respondent is not commonly known by the <freshlookz.com> domain name pursuant to Policy ¶ 4(c)(ii). The WHOIS information on file indicates that the registrant of the disputed domain name is “George Johnson.” This WHOIS information is evidence that a Respondent is not commonly known by the domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Complainant has no affiliation with Respondent and did not authorize the use of the mark, which the Panel notes has also been used by past panels to show a lack of legitimate interests. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Accordingly, Respondent has not been commonly known by the <freshlookz.com> domain name pursuant to Policy ¶ 4(c)(ii).
Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). The domain name leads to a website that displays links to competing contact lens sites, including <Acuvue.com> and <1800CONTACTS.com>. This use of competing hyperlinks is not a bona fide offering of goods or services or a non-commercial or fair use. 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)). As a result, Respondent’s use of the <freshlookz.com> domain name is not associated with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s efforts to attract Internet users to the resolving website located at the <freshlookz.com> domain name for commercial gain by creating confusion with the FRESHLOOK trademark and generating “click-through” revenue with competing links is evidence of bad faith under Policy ¶ 4(b)(iv). Hosting competing links is evidence of bad faith under 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.’”). Therefore, the Pane finds that Respondent registered and used the dispute domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant’s federal registrations of the FRESHLOOK mark, dating back to 2004, serve as constructive notice to Respondent of Complainant’s use in the mark. Some panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). However, Respondent’s registration of a domain name so similar to Complainant’s trademark is itself an indication of bad faith. Such similarities demonstrate bad faith and are evidence of actual knowledge. 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). Thus, the Panel finds that Respondent had actual notice demonstrating bad faith. 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).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <freshlookz.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 2, 2013
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