Novartis AG v. Telos CHAMIR
Claim Number: FA1302001485033
Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is Telos CHAMIR (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <the-best-dailies.info>, registered with RegistryGate GmbH.
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.
Darryl C. Wilson, as Panelist.
On February 14, 2013, RegistryGate GmbH confirmed by e-mail to the National Arbitration Forum that the <the-best-dailies.info> domain name is registered with RegistryGate GmbH and that Respondent is the current registrant of the names. RegistryGate GmbH has verified that Respondent is bound by the RegistryGate GmbH 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 February 19, 2013, the Forum served the German language Complaint and all Annexes, including a German language Written Notice of the Complaint, setting a deadline of March 11, 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@the-best-dailies.info. Also on February 19, 2013, the German language 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 March 25, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
i. Neither Respondent nor its business is known by the name DAILIES or any variation thereof.
ii. Respondent’s disputed domain name directs the user to sites selling a variety of competing products.
i. Respondent owns a website at <the-best-dailies.info> seeking to generate “click-through” revenue from users searching for information about Complainant and its contact lens products.
ii. Respondent has constructive notice of Complainant’s DAILIES mark prior to the selection of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Novartis AG who list its address as Basel, Switzerland. Complainant is the owner of the mark DAILIES which is registered internationally including with the United States Patent and Trademark Office (1998) and Hong Kong Intellectual Property Department (2010). The registrations indicate a first use dating back to at least 1994 and the Complainant asserts that it has used the mark continuously since that time. DAILIES and its associated family of marks are used throughout the world in connection with Complainant’s goods and services for vision care and eye health. Complainant also operates its own official website located at <dailies.com> which was registered in 1997.
Respondent is Telos CHAMIR who list its address as Wanchai, Hong Kong. Respondent’s registrar list its address as Munich, Germany. Respondent registered the domain name <the-best-dailies.info> on or about January 31, 2013.
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.”).
Language of the Proceedings
The Panel notes that the Registration Agreement is written in German, thereby making the language of the proceedings in German. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the German language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant, Novartis AG, contends that it discovers, develops, manufactures, and distributes products for, among other things, vision care and eye health. Complainant argues that it owns and uses the trademark DAILIES in connection with its contact lens products and related Internet services. Complainant claims that it owns the corresponding domain name <dailies.com>, and uses this domain name to promote and to provide information about its contact lens products. Complainant asserts that it is the owner of trademark registrations with the USPTO for the DAILIES mark (Reg. No. 2,167,845, registered June 23, 1998). See Complainant’s Exhibit 2. Complainant also asserts that it owns trademark registrations in Hong Kong for DAILIES AIR140 (Reg. No. 301772082, registered November 24, 2010), DAILIES TOTAL1 (Reg. No. 301319094, registered April 6, 2009), DAILIES FRESHLOOK ILLUMINATE (Reg. No. 301294696, registered February 27, 2009), DAILIES FRESHLOOK IMPAX (Reg. No. 301294704, registered February 27, 2009), DAILIES AQUACOMFORT PLUS (Reg. No. 300666711, registered June 26, 2006), FOCUS DAILIES (Reg. No. 2004B01913, registered February 2, 2001), and CIBA VISION DAILIES (Reg. No. 200104121, registered May 9, 1996). See Complainant’s Exhibit 2. The Panel finds that Complainant’s registrations of the trademarks with the USPTO and in Hong Kong sufficiently demonstrate its rights in the marks under Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s <the-best-dailies.info> domain name is confusingly similar to Complainant’s trademark because the domain name consists solely of Complainant’s trademark with the addition of descriptive and laudatory words. Complainant asserts that the domain name contains Complainant’s entire trademark with the addition of the descriptive words “the” and “best” separated by hyphens. The Panel notes that the terms “the” and “best” may be considered generic terms. The Panel finds that Respondent’s addition of generic terms and hyphens does not distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark); see also Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"). Complainant contends that the domain name adds the “.info” top level domain name to Complainant’s trademark. The Panel finds that the addition of a generic top-level domain (“gTLD”) does not differentiate Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). 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 finds that Respondent’s <the-best-dailies.info> domain name is confusingly similar to Complainant’s DAILIES trademark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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). The Complainant has met this burden.
Complainant argues that neither Respondent nor its business is known by the name DAILIES or any variation thereof. The Panel notes that the WHOIS information provides that “Telos CHAMIR” is the registrant of the disputed domain name. See Complainant’s Exhibit 3. The Panel also notes that Respondent does not produce additional evidence showing that it is commonly known by the disputed domain name. Accordingly, the Panel finds that Respondent is not commonly known by the disputed 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 claims that Respondent’s disputed domain name directs the user to sites selling a variety of competing products. The Panel notes that Respondent’s disputed domain name resolves to a web directory website, featuring hyperlinks to competing websites, such as “Free Trial Contact Lenses,” “ACUVUE Official Site,” “1800CONTACTS.com – Lenses,” and others. See Complainant’s Exhibit 5. Complainant argues that such use 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). The Panel finds that Respondent’s use of the disputed domain name to host a web directory that lists competing websites 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). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant contends that Respondent owns a website at <the-best-dailies.info> seeking to generate “click-through” revenue from users searching for information about Complainant and its contact lens products. The Panel notes that Respondent’s disputed domain name links to a web directory website, featuring hyperlinks to competing websites, such as “Free Trial Contact Lenses,” “ACUVUE Official Site,” “1800CONTACTS.com – Lenses,” and others. See Complainant’s Exhibit 5. Complainant asserts that because the DAILIES mark is well-known in connection with Complainant’s contact lenses, it is clear that Respondent registered the domain name with the intent to divert users seeking information about Complainant or its products to Respondent’s website. The Panel finds that Complainant has shown that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). 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).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <the-best-dailies.info> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: April 8, 2013
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