Novartis AG v. Laura Cabrera
Claim Number: FA1301001481412
Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is Laura Cabrera (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freshlookforever.com>, registered with eNom, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 22, 2013; the National Arbitration Forum received payment on January 22, 2013.
On January 23, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <freshlookforever.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 24, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 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@freshlookforever.com. Also on January 24, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 18, 2013, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1. Complainant discovers, develops, manufactures, and distributes products for, among other things, vision care and eye health.
2. Complainant has registered the FRESHLOOK mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,888,957 registered September 28, 2004).
3. Respondent registered the <freshlookforever.com> domain name on December 1, 2012.
4. Respondent’s <freshlookforever.com> domain name is confusingly similar to Complainant’s FRESHLOOK mark.
5. Neither Respondent nor its business is commonly known by the FRESHLOOK mark.
6. Respondent has no connection or affiliation with Complainant, and Complainant has not consented to Respondent’s use of the disputed domain name.
7. Respondent uses the <freshlookforever.com> domain name in connection with a website that provides a hyperlinks to a variety of information, primarily information about contact lenses and eye health, as well as hyperlinks to websites that directly compete with Complainant’s business.
8. Respondent generates click-through revenue from the operation of its website.
9. Respondent registered the <freshlookforever.com> domain name with constructive notice of Complainant’s rights in the FRESHLOOK mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a well-known Swiss company that discovers, develops, manufactures, and distributes products for, among other things, vision care and eye health.
2. Complainant has registered the FRESHLOOK mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,888,957 registered September 28, 2004).
3. Respondent registered the <freshlookforever.com> domain name on December 1, 2012. It resolves to a website that provides a hyperlinks to a variety of information, primarily information about contact lenses and eye health, as well as hyperlinks to websites that directly compete with Complainant’s business.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant claims rights in the FRESHLOOK mark based on its registration of the mark with the USPTO (Reg. No. 2,888,957 registered September 28, 2004). The Panel finds that Complainant’s federal trademark registration is sufficient to confer rights in the mark to Complainant pursuant to Policy ¶ 4(a)(i). 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)).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s FRESHLOOK mark. Complainant urges that the Panel find Respondent’s <freshlookforever.com> domain name confusingly similar to Complainant’s FRESHLOOK mark within the meaning of Policy ¶ 4(a)(i). Complainant notes that the disputed domain wholly contains Complainant’s mark, while adding the term “forever” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that neither the addition of a generic term nor the affixation of a gTLD can distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). The Panel therefore concludes that Respondent’s <freshlookforever.com> domain name is confusingly similar to Complainant’s FRESHLOOK mark within the meaning of 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 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.”).
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 FRESHLOOK trademark and to use it in its domain name, adding only the generic word “forever” which adds to the confusing similarity between the trademark and the domain name as the objective internet user would assume that the domain name was an official domain name invoking the long life and quality of the products produced under the trademark;
(b) Respondent registered the domain name on December 1, 2012. The domain name resolves to a website provides hyperlinks to a variety of information, primarily information about contact lenses and eye health, as well as hyperlinks to websites which directly compete with Complainant’s business;
(c)Respondent has engaged in these activities without the consent or approval
of Complainant;
(d)Complainant alleges that neither Respondent nor its business is commonly known by the FRESHLOOK mark. Complainant maintains that Respondent has no connection or affiliation with Complainant and that Complainant has not consented to Respondent’s use of the <freshlookforever.com> domain name. The Panel notes that Respondent, who is identified as “Laura Cabrera” in the relevant WHOIS information, has failed to present a Response in this proceeding. The Panel finds that given the lack of evidence to the contrary, Respondent is not commonly known by the <freshlookforever.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected);
(e)Under the “Bad Faith” section of its Complaint, Complainant alleges that Respondent’s use of the <freshlookforever.com> domain name cannot properly be considered 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). Complainant states that Respondent uses the <freshlookforever.com> domain name in connection with a website that provides a hyperlinks to a variety of information, primarily information about contact lenses and eye health, as well as hyperlinks to websites which directly compete with Complainant’s business. The Panel finds that Respondent’s use of the disputed domain name to host competing hyperlinks does not qualify as 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). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate 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 name.
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 name was registered in bad faith and has 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 name was registered and used in bad faith. That is so for the following reasons.
First, Complainant alleges that Respondent registered and uses the <freshlookforever.com> domain name both for Respondent’s own commercial gain and in bad faith under Policy ¶ 4(b)(iv). Complainant reasons that given the notoriety of Complainant’s FRESHLOOK mark and the products and services Complainant provides thereunder, Respondent sought to divert Internet users searching for information about Complainant to Respondent’s own site by registering a confusingly similar domain name. Complainant asserts that Respondent receives click-through fees through the operation of its website and is attempting to increase its own gains through a wrongful association with Complainant and its mark. The Panel considers Respondent’s operation “attraction for commercial gain,” which constitutes registration and use in 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.’”).
Secondly, Complainant also alleges that, based on Complainant’s registration of the mark with the USPTO, Respondent registered the <freshlookforever.com> domain name with constructive notice of Complainant’s rights in the FRESHLOOK mark. Past panels have generally held that constructive knowledge is not sufficient to establish 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."). The Panel determines, however, that Respondent had actual knowledge of Complainant’s rights in the FRESHLOOK mark at the time Respondent registered the <freshlookforever.com> domain name and the Panel therefore finds that Respondent registered the <freshlookforever.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
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 name using the FRESHLOOK mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name 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 <freshlookforever.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 19, 2013
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