Novartis AG v. Sanjeev Daddarwal
Claim Number: FA1304001495350
Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is Sanjeev Daddarwal (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freshlookworks.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 18, 2013; the National Arbitration Forum received payment on April 18, 2013.
On April 19, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <freshlookworks.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 April 22, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 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@freshlookworks.com. Also on April 22, 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 May 6, 2013.
On May 13, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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
Policy ¶ 4(a)(i): Complainant’s Rights / Confusing Similarity
Policy ¶ 4(a)(ii): Respondent Lacks Rights & Legitimate Interests
Policy ¶ 4(a)(iii): Respondent’s Bad Faith Use & Registration
B. Respondent
Policy ¶ 4(a)(ii): Respondent’s Rights & Legitimate Interests
Policy ¶ 4(a)(iii): Lack of Bad Faith
1. Complainant has rights in its FRESHLOOK mark.
2. Respondent’s <freshlookworks.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used 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.
Complainant claims that it has registered the FRESHLOOK mark in the USPTO (Reg. No. 2,888,957 registered Sept. 28, 2004) and uses this mark in connection with a line of optical contact lenses. The Panel agrees that USPTO trademark registration is a sufficient showing of Complainant’s Policy ¶ 4(a)(i) rights in the FRESHLOOK mark, despite the fact that Respondent resides in India. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (Stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant also argues that Respondent’s <freshlookworks.com> domain name is confusingly similar to the FRESHLOOK mark. Complainant argues that Respondent’s domain name contains the entire FRESHLOOK mark with the addition of the descriptive term “works”—a term implying that FRESHLOOK products do in fact work to correct vision—as well as the gTLD “.com.” The Panel agrees that the addition of a gTLD is never considered as a relevant alteration under the Policy. 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 further agrees that the addition of the term “works” does nothing more than enhance the confusing similarity of the domain name, as it tends to amplify the effect of the FRESHLOOK mark. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). Therefore the Panel concludes that the <freshlookworks.com> domain name is confusingly similar to the FRESHLOOK mark under Policy ¶4(a)(i).
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.”).
Complainant argues that Respondent has not been known by the FRESHLOOK mark. Complainant attests that Respondent is not affiliated with Complainant. Complainant declares that it has neither consented to nor authorized Respondent’s use of the FRESHLOOK mark. Complainant asserts that neither Respondent nor its purported business is commonly known by the name FRESHLOOK. The Panel notes that Respondent self-identified itself as “Sanjeev” in the Response, and that the WHOIS information further verifies that the domain name’s registrant is “Sanjeev Daddarwal.” The Panel agrees that when Respondent fails to provide any evidence to prove a connection with the <freshlookworks.com> domain name, and no other evidence establishes such a connection, Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also claims that Respondent is using the domain name in connection with the hosting of hyperlinks to other competing contact lens products and services. The Panel notes that Complainant has provided evidence that the <freshlookworks.com> domain name resolves to a website that is parked by the registrar, wherein a list of competing and other third-party hyperlinks are offered to Internet users. See Complainant’s Ex. 5. The Panel agrees that the solicitation of competing hyperlinks on this domain name’s website is not a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. 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”).
Complainant argues that Respondent operates the <freshlookworks.com> domain name primarily to obtain click-through revenue from Internet users. Complainant asserts that Respondent clearly intended to divert Internet users seeking information about Complainant to this domain name. Complainant believes that Respondent diverted Internet users so that Respondent could accrue revenues each time that an Internet user clicks on a hyperlink. The Panel agrees that the use of the confusingly similar <freshlookworks.com> domain name to post competing hyperlink advertisements is evidence of a Policy ¶ 4(b)(iv) bad faith attempt to reap commercial gains through the likelihood that Internet users will believe the sponsored hyperlinks have the support of Complainant. 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).
Complainant further argues that Respondent is on constructive notice of Complainant’s rights in the FRESHLOOK mark due to Respondent’s federal trademark registrations. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel may find 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <freshlookworks.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: May 27, 2013
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