Novartis AG v. Praqo / Jannik Kehlet
Claim Number: FA1302001487171
Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper, III, of Tepper & Eyster, PLLC, Raleigh, North Carolina, USA. Respondent is Praqo / Jannik Kehlet (“Respondent”), Norway.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <quickdailies.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.
Douglas M. Isenberg as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 26, 2013, naming as the respondent “WhoisGuard, WhoisGuard Protected.” The National Arbitration Forum received payment on February 26, 2013.
On February 28, 2013, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <quickdailies.com> domain name is registered with ENOM, INC. and that the current registrant of the name is “Praqo / Jannik Kehlet.” 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 February 28, 2013, the Forum sent a deficiency letter to Complainant regarding the identity of the Respondent. Complainant timely submitted an amended Complaint (referred to hereafter simply as the “Complaint”) naming as the Respondent “Praqo / Jannik Kehlet.”
On March 1, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 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@quickdailies.com. Also on March 1, 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.
A timely Response was received and determined to be complete on March 21, 2013.
On April 3, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Douglas M. Isenberg 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
In its Complaint, Complainant contends, in relevant part, as follows:
n “Complainant discovers, develops, manufactures and distributes products for, among other things, vision care and eye health. Complainant owns and uses the trademark DAILIES, and variations thereof, in connection with its contact lens products and related internet services. In that connection, Complainant owns the corresponding domain name <dailies.com> [which it registered in 1997], and uses this domain name to promote and to provide information about its contact lens products.” Complainant provides appropriate supporting documentation for same.
n “Respondent registered the Domain Name <quickdailies.com>… on or about October 9, 2012…. The Domain Name is used in connection with a website which provides hyperlinks to a variety of information, primarily contact lens and eye health information, and to websites in direct competition with Complainant.” Complainant provides appropriate supporting documentation for same.
n “Complainant owns United States Trademark Registration Number 2,167,845 for the mark DAILIES for a line of contact lenses.” Complainant has provided a copy of the relevant trademark registration certificate.
n The disputed domain name is confusingly similar to Complainant’s DAILIES trademark because it contains the trademark in its entirety plus the word “quick” – a “descriptive” word that makes an “insignificant” difference.
n Respondent has no rights or legitimate interests in the disputed domain name because “Respondent has no connection or affiliation with Complainant”; “Complainant has not consented to Respondent’s use of the Domain Name”; and “neither Respondent nor its business is known by the name ‘DAILIES.’”
n Respondent has registered and is using the disputed domain name in bad faith because, inter alia, “Respondent operates a web site at <quickdailies.com> seeking to generate ‘click-through’ revenue from users searching for information about Complainant and its contact lens products,” in violation of paragraph 4(b)(iv) of the Policy.
B. Respondent
In its Response, Respondent contends, in relevant part, as follows:
n “[D]ailies is a word used regularly within the motion picture industry” to indicate “[t]he first positive prints made from the negatives photographed on the previous day,” and Respondent’s “product in development is targeting this market with a product that distributes dailies quickly to the staff and producers.” Further, “Quickdailies is phonetically and in writing very different from Dailies, thus no immediate confusion or misspelling should be possible.”
n “[A]s a small company in development of our first product we do not have an active marketing campaign yet and the domain in dispute is therefore not yet active. We have done nothing else than to buy the domain and any content on the page I must guess is put there by the registrar. We do offer to take down any content regarding contact lenses as this is not our area of business.”
n “The domain name has been acquired as a strategic plan on future marketing of our software service for distributing dailies. The only webpage we have at the moment is praqo.com. Because this page is not finished and for strategic reasons no material has yet been put on quickdailies.com.”
n “[W]e have no interest in traffic that is looking for contact lenses and have no need to market our product and company in this direction. Novartis claims we have earnings on the webpage. That is factually wrong. We have not put any links or other material on the page. This is indicated by the text: ‘Welcome! This domain was recently registered at namecheap.com. The domain owner may currently be creating a great site for this domain. Please check back later!’ We have not changed the page yet, because of this case. We can however offer to this at any time. As we operate in another industry – business to business – we have no interest in getting traffic that are looking for contact lenses.”
The Panel finds that Respondent has rights or legitimate interests in the disputed domain name. As a result, and for the reasons set forth below, the Panel makes no findings with respect to whether the disputed domain name is identical or confusingly similar to the DAILIES trademark or whether the disputed domain name was registered and is being used 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 support of its claim that it “has rights” (as required by paragraph 4(a)(i) of the Policy) in the DAILIES trademark, Complainant cites only U.S. Reg. No. 2,167,845, for which it has provided a copy of the certificate of registration as an annex to the Complaint. However, the certificate identifies the owner of the registration as “CIBA-GEIGY CORPORATION” – not Complainant. Further, the Panel has independently reviewed the online records of the U.S. Patent and Trademark Office,[1] which appear to indicate that the registration has been assigned to NOVARTIS CORPORATION – yet another entity that (despite the obvious similarity in name) is not Complainant.
Accordingly, while Complainant may have rights in the DAILIES trademark (perhaps as the result of other assignments; the relationship among the variously identified entities; the existence of other registrations; or activities giving rise to common law rights), there is nothing in the record to support this, and the Panel is not inclined to go to extraordinary lengths to ascertain a basic factual matter that should have been made clear in the Complaint.
In any event, given that, as stated below, the Panel finds that Respondent has rights or legitimate interests in the disputed domain name, the Panel makes no findings with respect to whether the disputed domain name is identical or confusingly similar to the DAILIES trademark.
With respect to paragraph 4(a)(ii) of the Policy:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP…. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.
WIPO Overview 2.0, paragraph 2.1.
In this case, Complainant’s arguments as to why Respondent lacks rights or legitimate interests in the disputed domain name are conclusory, generally unsupported and rebutted by Respondent. Indeed, the Complaint does not specifically address 4(c)(i), which states that a Respondent can establish rights or legitimate interests if it successfully demonstrates the following:
before any notice to [Respondent] of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
Accordingly, it is unclear whether Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests.
Further, although Respondent has offered little evidence to support its arguments that it registered the disputed domain name for use in connection with distributing dailies in the motion picture industry, this argument is credible given the meaning of the word “dailies”; Respondent’s website at <praqo.com> (which the Panel observes states that “Praqo is in the process of developing a new software system aimed at the industry of producing motion pictures and tv series”); and Respondent’s repeated statements that it has “no interest in traffic that is looking for contact lenses” and that Respondent would (and, based on the Panel’s observation, already has) removed any references on the website to contact lenses. All of these actions are consistent with “demonstrable preparations to use… the domain name… in connection with a bona fide offering of goods or services” and are not undermined by anything else in the record. See, e.g., iLeads.com LLC v. Elec. Mktg. Sys., Inc., FA187636 (Nat. Arb. Forum Oct. 13, 2003) (finding that the respondent had rights and legitimate interests in the domain name <aleads.com> because it used the term “leads” in the generic sense to refer to the sale of leads over the Internet); and Indofil Chemicals Company v. Vakil, D2006-0792 (WIPO Aug. 14, 2006) (“the evidence satisfies the Panel that the Respondent is preparing to use the disputed domain name” where, among other things, “the Respondent has provided a credible explanation of his choice” of the domain name).
Accordingly, the Panel finds that Complainant has failed to prove that Respondent has no rights or legitimate interests in respect of the disputed domain name, as required by paragraph 4(a)(ii) of the Policy.
Given that, as stated above, the Panel finds that Respondent has rights or legitimate interests in the disputed domain name, the Panel makes no findings with respect to whether the disputed domain name was registered and is being used in bad faith.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <quickdailies.com> domain name REMAIN WITH Respondent.
Douglas M. Isenberg, Panelist
Dated: April 11, 2013
[1] “A panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.5 (available at http://www.wipo.int/amc/en/domains/search/overview2.0/index.html).
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