Novartis AG v. jules stirling
Claim Number: FA1304001495351
Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is jules stirling (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fresh-looks.com>, registered with GoDaddy.com, LLC.
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.
Hon. Karl V. Fink (Ret.), 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 <fresh-looks.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@fresh-looks.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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 22, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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
a) Complainant contends that it has rights in the FRESHLOOK mark used in connection with its contact lens products and related Internet services. Complainant owns a registration for the FRESHLOOK mark (Reg. No. 2,888,957 registered Sept. 28, 2004) with the United States Patent and Trademark Office (“USPTO”).
b) Respondent’s <fresh-looks.com> domain name inserts a hyphen between the terms “FRESH” and “LOOK” of Complainant’s mark, adds an “s,” and adds a generic top-level domain (“gTLD”). These additions are insignificant and do not negate a finding that the disputed domain name is confusingly similar to Complainant’s Mark.
c) Complainant contends that Respondent has no legitimate rights or interest with respect to the disputed domain name.
a. Neither Respondent nor its business is commonly known by the name “FRESHLOOK.” Further, Respondent has no connection or affiliation with Complainant and does not have Complainant’s consent to use the mark.
b. Respondent’s use of the disputed domain name to generate “click-through” revenue from users searching for information on Complainant and its contact lens products is not a bona fide offering of goods or services.
d) Respondent registered and is using the <fresh-looks.com> domain name in bad faith.
a. The disputed domain name creates a likelihood of confusion with Complainant’s mark, and Respondent’s website, <fresh-looks.com>, seeks to commercially gain by generating “click-through” revenue from users searching for information about Complainant and its contact lens products.
b. Respondent had constructive notice of Complainant’s FRESHLOOK mark because Complainant had the mark registered with the USPTO prior to Respondent’s selection to the disputed domain name.
c. Respondent’s disputed domain name directs consumers to competing contact lens products, thereby disrupting Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 contends that it has rights in the FRESHLOOK mark, used in connection with contact lens products. Complainant provides evidence supporting that it is the owner of a registration for the FRESHLOOK mark (Reg. No. 2,888,957 registered Sept. 28, 2004) with USPTO. Therefore, the Panel finds that Complainant has rights in the FRESHLOOK mark under Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Complainant next alleges that the disputed domain name is confusingly similar to Complainant’s FRESHLOOK mark. Complainant argues that Respondent’s insertion of a hyphen between the words “FRESH” and “LOOK” of Complainant’s mark and the addition of an “s” and the gTLD “.com” to the <fresh-looks.com> domain name do not distinguish the disputed domain name from the FRESHLOOK mark. The Panel finds that a hyphen does not differentiate a disputed domain name from a registered mark. See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”) The Panel finds that the addition of a gLTD to a domain name does not distinguish the disputed domain name from the registered mark because gLTDs are irrelevant to a Policy ¶ (4)(a)(i) analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The Panel finds that the addition of the letter “s” to the disputed domain name does not avoid confusing similarity with the registered FRESHLOOK mark. See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s <fresh-looks.com> domain name is confusingly similar to Complainant’s FRESHLOOK mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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 contends that Respondent has no legitimate rights or interest with respect to the domain name because neither Respondent nor its business is commonly known by the name “FRESHLOOK.” The Panel notes that the WHOIS record for the <fresh-looks.com> domain name lists “jules stirling” as the domain name registrant. Further, Complainant asserts that Respondent has no connection or affiliation with Complainant and does not have Complainant’s consent to use the mark. Therefore, the Panel finds the Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) because of the above WHOIS information and the lack of consent. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain name, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant asserts that Respondent’s use of the disputed domain name to generate “click-through” revenue from users searching for information on Complainant and its contact lens products is not a bona fide offering of goods or services. Complainant provides screenshots which show that the <fresh-looks.com> domain name resolves to a webpage with links to competing websites. Panels have found such links do not confer rights or legitimate interests in the disputed domain name to Respondent. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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)). Therefore, the Panel finds that Respondent’s use of the <fresh-looks.com> domain name is not a bona fide offering of goods under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant has proven this element.
Complainant argues that Respondent registered and is using the <fresh-looks.com> domain name in bad faith. Complainant first contends that Respondent’s disputed domain name directs consumers to competing contact lens products, thereby disrupting Complainant’s business. Complainant provides a screenshot of Respondent’s website, <fresh-looks.com>, which provides a list of hyperlinks to competing websites. Panels have found that respondents who display links to competing websites, just as Respondent is doing via the <fresh-looks.com> domain name, is indicative of bad faith. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)). Therefore, the Panel finds that Respondent registered and uses the <fresh-looks.com> domain name in a bad faith attempt to disrupt Complainant’s business pursuant to Policy ¶ 4(b)(iii).
Next, Complainant asserts that the disputed domain name creates a likelihood of confusion with Complainant’s mark, and Respondent’s website, <fresh-looks.com>, seeks to obtain commercial gain by generating “click-through” revenue from users searching for information about Complainant and its contact lens products. Panels have found such conduct to indicate bad faith. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Therefore, the Panel finds that Respondent intentionally attempted to create a likelihood of confusion to obtain a commercial gain in bad faith under Policy 4(b)(iv).
Complainant contends that Respondent had constructive notice of Complainant’s FRESHLOOK mark because Complainant had the mark registered with the USPTO prior to Respondent’s selection of the disputed domain name. Constructive notice is generally regarded as insufficient to support a finding of bad faith. See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."). The Panel find, based on its review of the arguments and evidence presented by Complainant, that Respondent had actual knowledge of Complainant’s rights in the FRESHLOOK mark when registering the <fresh-looks.com> domain name. Therefore, the Panel finds that Respondent registered and uses the <fresh-looks.com> domain name in bad faith in accordance with Policy ¶ 4(a)(iii). See 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).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <fresh-looks.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: May 31, 2013
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