national arbitration forum

DECISION

 

Novartis AG v dwayne walker

Claim Number: FA1306001506961

PARTIES

Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA.  Respondent is dwayne walker (“Respondent”), Washington, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dailiesplus.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 26, 2013; the National Arbitration Forum received payment on June 26, 2013.

 

On June 26, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <dailiesplus.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 June 28, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 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@dailiesplus.com.  Also on June 28, 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 July 24, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

Complainant owns a USPTO registration for DAILIES in connection with contact lenses (see United States Patent and Trademark Office ("USPTO") Reg. No. 2,167,845 registered on June 23, 1998).

 

Respondent registered the <dailiesplus.com> domain name, which merely adds the descriptive term “plus” and the generic top-level domain (“gTLD”) “.com” to the DAILIES mark.

 

Respondent is not known as DAILIES. Respondent has no connection or affiliations with Complainant. Respondent uses the <dailiesplus.com> domain name to promote various hyperlinks.

 

Respondent’s use of this confusingly similar <dailiesplus.com> domain name to promote hyperlinks for competing vision-improving products is evidence that Respondent seeks to confuse Internet users into associating the content of the domain name’s website with Complainant.

 

Respondent has constructive knowledge of the DAILIES mark through Complainant’s USPTO trademark registration.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

 

FINDINGS

Complainant Novartis was created from the merger of Ciba-Geigy and Sandoz Laboratories. See <http://en.wikipedia.org/wiki/Ciba-Geigy> (July 25, 2012). Complainant therefore owns the USPTO registered trademark for DAILIES which is nominally held by Ciba-Geigy.

 

Respondent is not affiliated with Complainant and had not been authorized to use the DAILIES mark in any capacity.

 

Respondent registered the at‑issue domain name after Complainant acquired trademark rights in DAILIES.

 

Respondent uses the at-issue domain name to address a website that displays hyperlinks for vision-improving products that compete with Complainant’s similar products.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant’s registration of the DAILIES mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i)”).

 

Respondent’s <dailiesplus.com> domain name is confusingly similar to Complainant’s DAILIES mark within the meaning of Policy ¶ 4(a)(i). The <dailiesplus.com> domain name incorporates Complainant’s DAILIES mark in its entirety, simply adding the descriptive term “plus” and the generic top-level domain, “.com” to form the domain name. These differences do nothing, under the Policy, to distinguish the at-issue domain name from Complainant’s trademark. See Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”).

 

Rights or Legitimate Interests

Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Respondent is not authorized to use Complainant’s trademark in a domain name or otherwise. Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.

 

Furthermore, the WHOIS record for the <dailiesplus.com> domain name lists “dwayne walker / dwaynewalker@me.com” as the domain name’s registrant and there is no evidence in the record which otherwise suggests that Respondent is commonly known by the at-issue domain name. Therefore, the Panel concludes that Policy ¶ 4(c)(ii) is inapplicable regarding the instant dispute. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).

 

Likewise, Respondent’s rights or interests in respect of the domain name are not demonstrated under Policy ¶¶ 4(c)(i) or 4(c)(iii). Respondent fails to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the <dailiesplus.com> domain name because the website addressed by the domain name displays links which are for products that compete with Complainant’s own products.  The hyperlinks also appear to be pay-per-click links whereby Respondent is compensated each time a website visitor navigates via one of the links. Respondent’s use of the at‑issue domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent 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 also 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)).

 

In light of the uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name under Policy ¶4(a)(ii).

 

Registration and Use in Bad Faith

The at‑issue domain name was registered and is being used in bad faith. As discussed below Policy ¶ 4(b) circumstances, as well as non-Policy ¶ 4(b) circumstance, are present and compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

 

As mentioned above, Respondent uses the confusingly similar <dailiesplus.com> domain name to promote hyperlinks for competing vision-improvement products. Using the domain name in this manner shows that Respondent seeks to confound Internet users so that they might associate the content of the confusingly similar domain name’s <dailiesplus.com> website with Complainant. Such use of the domain name demonstrates bad faith under Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that promoting the products of a complainant’s competitors through hyperlink advertisements is sufficient evidence for finding Policy ¶ 4(b)(iv) bad faith).

 

Finally, Respondent had actual knowledge of Complainant’s rights in DAILIES trademark prior to registering the at-issue domain name.  Respondent’s prior knowledge is clear not only from the general notoriety of Complainant’s trademark, but also from the fact that the <dailiesplus.com>  domain name is used by Respondent to promote products which directly compete with those offered by Complainant. Registering a domain name that one knows is confusingly similar to the trademark of another indicates bad faith registration and use under Policy ¶4(a)(iii). See 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 had "actual knowledge of Complainant's mark when registering the disputed domain name").

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <dailiesplus.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated:  July 25, 2013

 

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page