Novartis AG v. tsuyoshi yanagi
Claim Number: FA1305001501428
Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is tsuyoshi yanagi (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <airoptix.info>, <cibavision-dailies-toric.info>, <freshlook-dailies.info>, and <dailies-aqua-comfort-plus.info>, registered with Gmo Internet, Inc. D/B/A Onamae.Com.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 23, 2013; the National Arbitration Forum received payment on May 23, 2013. The Complaint was submitted in both English and Japanese.
On May 23, 2013, Gmo Internet, Inc. D/B/A Onamae.Com confirmed by e-mail to the National Arbitration Forum that the <airoptix.info>, <cibavision-dailies-toric.info>, <freshlook-dailies.info>, and <dailies-aqua-comfort-plus.info> domain names are registered with Gmo Internet, Inc. D/B/A Onamae.Com and that Respondent is the current registrant of the names. Gmo Internet, Inc. D/B/A Onamae.Com has verified that Respondent is bound by the Gmo Internet, Inc. D/B/A Onamae.Com 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 May 29, 2013, the Forum served the Japanese language Complaint and all Annexes, including a Japanese language Written Notice of the Complaint, setting a deadline of July 30, 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@airoptix.info, postmaster@cibavision-dailies-toric.info, postmaster@freshlook-dailies.info, and postmaster@dailies-aqua-comfort-plus.info. Also on May 29, 2013, the Japanese 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 July 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Japanese language Complaint and Commencement Notification and will conduct the remainder of the proceedings in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <airoptix.info>, <cibavision-dailies-toric.info>, <freshlook-dailies.info>, and <dailies-aqua-comfort-plus.info> domain names are confusingly similar to Complainant’s PING mark.
2. Respondent does not have any rights or legitimate interests in the <airoptix.info>, <cibavision-dailies-toric.info>, <freshlook-dailies.info>, and <dailies-aqua-comfort-plus.info> domain names.
3. Respondent registered and used the <airoptix.info>, <cibavision-dailies-toric.info>, <freshlook-dailies.info>, and <dailies-aqua-comfort-plus.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the AIR OPTIX mark through its trademark registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,490,248, registered August 19, 2008), and the Japan Patent Office (“JPO”) (Reg. No. 5,287,276).
Complainant owns the CIBA VISION mark through its trademark registration with the USPTO (e.g., Reg. No. 1,611,014, registered August 28, 1990), and the JPO (e.g., Reg. No. 2,212,913).
Complainant owns the DAILIES mark through its trademark registration with the USPTO (Reg. No. 2,167,845, registered June 23, 1998), and the JPO (Reg. No. 4,137,595).
Complainant owns the DAILIES AQUACOMFORT PLUS mark through its trademark registration with the USPTO (Reg. No. 3,555,421, registered December 30, 2008).
Complainant owns the FRESHLOOK mark through its trademark registration with the USPTO (Reg. No. 2,888,957, registered on September 28, 2004), and JPO (Reg. No. 4,544,663).
Complainant uses the above marks in connection with its contact lens products and related services.
Respondent registered the disputed domain names on April 15, 2013, and uses them to redirect Internet users searching for Complainant’s products to websites linked on Respondent’s page.
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 Panel finds that Complainant’s USPTO and JPO registrations establish its rights in the AIR OPTIX, CIBA VISION, DAILIES, DAILIES AQUACOMFORT PLUS, and FRESHLOOK marks. 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)); see also Implus Footcare, LLC v. Ellison, FA 1406760 (Nat. Arb. Forum Oct. 24, 2011) (finding that trademark registrations, including those with the Japanese Patent Office, are sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i)).
Respondent’s <airoptix.info> disputed domain name consists solely of Complainant’s AIR OPTIX trademark with the addition of the generic top-level domain (“gTLD”) “.info”. Previous panels have determined that the inclusion of a gTLD, such as “.info,” is irrelevant in a Policy ¶ 4(a)(i) analysis as a top-level domain is a requirement for all domain names. 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). Previous panels have found that the elimination of spaces between a complainat’s marks is also insignficiant in a Policy ¶ 4(a)(i) analysis because spaces can not be included in domain names. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds the <airoptix.info> disputed domain confusingly similar to Complainant’s AIR OPTIX mark.
Respondent’s <cibavision-dailies-toric.info>, <freshlook-dailies.info>, and <dailies-aqua-comfort-plus.info> domain names consist of Complainant’s DAILIES trademark, combined with another of Complainant’s marks. The <cibavision-dailies-toric.info> domain name also includes the highly relevant descriptive word “toric”. Complainant points out that the term “toric” is a descriptive term for a lens used to correct both astigmatism and near or farsightedness. The inclusion of a term descriptive of Complainant’s products enhances, rather than diminishes, the confusing similarity. In Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003), the panel found that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business.
Previous panels have found confusing similarity in domain names that combine marks belonging to the complainant. See McGraw-Hill Co., Inc. v. Umbeke Membe, FA 1223759 (Nat. Arb. Forum Oct. 29, 2008) (finding confusing similarity where Respondent combined Complainant’s GLENCOE and MCGRAW-HILL marks to form the <glencoemcgrawhill.com> domain name). Prior panels have also determined that the use or non-use of hyphens and spaces does not eliminate confusion. 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.”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Likewise, the Panel finds that the alterations made to Complainant’s marks are insufficient to differentiate the resulting domain names from the marks.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 no legitimate rights or interest with respect to the disputed domain names. Complainant notes that neither Respondent nor its business is known by the domain names in dispute. The WHOIS record identifies “tsuyoshi yanagi” as the registrant of each of the domains names. Further, Complainant contends that Respondent has no connection or affiliation with Complainant, and Complainant has not authorized Respondent’s use of the marks in any way. The Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant argues that Respondent is not using the <airoptix.info>, <cibavision-dailies-toric.info>, <freshlook-dailies.info>, and <dailies-aqua-comfort-plus.info> domain names in connection with a bona fide offering of goods or services, or a legitimate or noncommercial fair use, claiming that Respondent uses the domain names to redirect users searching for Complainant’s products to websites linked on Respondent’s page. Complainant contends that Respondent receives “click-through” revenue from the linked websites, and provides supporting screenshots. The Panel finds that Respondent’s diversion of Internet users to its own website for commercial gain, through links and click-through fees, does not constitute 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent receives “click through” revenue by redirecting Internet users searching for Complainant’s products to the websites linked on Respondent’s page. Respondent’s registration and use of a confusingly similar domain name for commercial gain is evidence of bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant argues that Respondent registered the domain names in bad faith as Respondent had constructive notice of Complainant’s AIR OPTIX, CIBA VISION, DAILIES, DAILIES AQUACOMFORT PLUS, and FRESHLOOK marks prior to the selection of the domain names. The Panel finds that Respondent had actual knowledge of Complainant's marks and rights given the similarities of the marks with the domain name, further evidence of bad faith under Policy ¶ 4(a)(iii). 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."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <airoptix.info>, <cibavision-dailies-toric.info>, <freshlook-dailies.info>, and <dailies-aqua-comfort-plus.info> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 12, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page