Novartis AG v. Domain Names International, LLC / Kenn Palm
Claim Number: FA1212001477955
Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is Domain Names International, LLC / Kenn Palm (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <instantdailies.com>, registered with Randomain.ca Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 31, 2012; the National Arbitration Forum received payment on December 31, 2012.
On January 7, 2013, Randomain.ca Inc. confirmed by e-mail to the National Arbitration Forum that the <instantdailies.com> domain name is registered with Randomain.ca Inc. and that Respondent is the current registrant of the name. Randomain.ca Inc. has verified that Respondent is bound by the Randomain.ca 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 January 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 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@instantdailies.com. Also on January 8, 2013, 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.
On January 3, 2013, the Parties submitted a Joint Request to Stay the Administrative Proceeding. The Forum granted this request, staying the proceedings until February 22, 2013.
On February 21, 2013, Complainant submitted a Request to Remove the stay. The Forum granted this request on February 22, 2013, giving the Respondent until March 14, 2013 to submit its response.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 28, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce Meyerson 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
1. Complainant owns trademark registrations for the DAILIES mark with the United States Patent & Trademark Office (“USPTO”) for use in conjunction the promotion and sale of contact lenses. See Reg. No. 2,167,845 registered on June 23, 1998.
2. Complainant claims that Respondent registered the <instantdailies.com> domain name on November 26, 2012.
3. Respondent’s <instantdailies.com> domain name is confusingly similar to the DAILIES mark. Respondent’s addition of the generic top-level domain (“gTLD”) “.com” does nothing to distinguish a domain name from a registered trademark. The term “instant” is so generic that it is insufficient to avoid confusing similarity.
4. Respondent is not commonly known by the domain name.
5. Respondent is offering the domain name for sale. Respondent has placed this domain name to be put up for auction on its own website for $1,070.00. This amount is well in excess of Respondent’s out-of-pocket costs for the domain name.
6. Respondent has registered and used the <instantdailies.com> domain name with knowledge of Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the DAILIES mark. Respondent’s domain name is confusingly similar to Complainant’s DAILIES mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <instantdailies.com> domain name, and that Respondent registered and uses the 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.
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 claims that it owns trademark registrations for the DAILIES mark with the USPTO for use in conjunction the promotion and sale of contact lenses. See Reg. No. 2,167,845 registered on June 23, 1998. Complainant’s USPTO registration is a satisfactory showing of rights in the DAILIES mark. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant contends that Respondent’s <instantdailies.com> domain name is confusingly similar to the DAILIES mark. Complainant argues that Respondent’s addition of the gTLD “.com” does nothing to distinguish the domain name from the trademark. Complainant further argues that the term “instant” is so generic that it is insufficient to avoid confusing similarity. The Panel agrees that the gTLD “.com” is irrelevant under a Policy analysis. 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 Panel also finds that the term “instant” is a generic term that enhances the confusing similarity between the domain name and the DAILIES mark. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). Therefore the Panel finds that the <instantdailies.com> domain name is confusingly similar to the DAILIES mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent is not commonly known by the domain name. The Panel notes that the WHOIS information lists “Domain Names International, LLC / Kenn Palm” as the registrant of the domain name. The Panel agrees that in the absence of any affirmative evidence to the contrary, Respondent is not commonly known by the <instantdailies.com> domain name under Policy ¶ 4(c)(ii). 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 contends that Respondent is offering the domain name for sale, which Complainant claims is further evidence that Respondent lacks rights and legitimate interests in the domain name. Respondent appears to be openly selling the <instantdailies.com> domain name on its website for $1.070.00. The Panel agrees that when Respondent’s only shown use of the domain name is to solicit it for sale, Respondent’s actions constitute neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has put the <instantdailies.com> domain name up for auction on its website for $1,070.00. Complainant argues that this amount is well in excess of Respondent’s out-of-pocket costs for the domain name. Respondent’s decision to register this domain name for the apparent purpose auctioning it off to the highest bidder illustrates Respondent’s bad faith use and registration under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Complainant also argues that Respondent has registered and used the <instantdailies.com> domain name with knowledge of Complainant’s rights in the mark because of Complainant’s USPTO registration. The Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also 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 Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <instantdailies.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 1, 2013
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