Novartis AG v. Domain Privacy Service
Claim Number: FA1307001512535
Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is Domain Privacy Service (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freshlooksites.com>, registered with FastDomain Inc..
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 31, 2013; the National Arbitration Forum received payment on July 31, 2013.
On July 31, 2013, FastDomain Inc. confirmed by e-mail to the National Arbitration Forum that the <freshlooksites.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain 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 August 2, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 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@freshlooksites.com. Also on August 2, 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 September 4, 2013, John J. Upchurch, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
i. Complainant owns the FRESHLOOK mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,888,957, registered September 28, 2004). See Complainant’s Exhibit 2.
ii. Complainant discovers, develops, manufactures, and distributes products for in the field of vision care and eye health, as well as other industries.
iii. Complainant uses the FRESHLOOK mark in connection with its contact lens products and related services.
iv. Complainant owns and uses the domain name <freshlookcontacts.com> to promote its contact lens products.
i. Policy ¶ 4(a)(i)
1. The <freshlooksites.com> domain name is confusingly similar to Complainant’s FRESHLOOK mark because the domain name contains Complainant’s entire trademark with the mere addition of a generic or descriptive term “sites,” and the generic top-level domain (“gTLD”) “.com.”
ii. Policy ¶ 4(a)(ii)
1. Respondent has no rights or legitimate interests in the domain name. Respondent has no connection or affiliation with Complainant, and Complainant has not authorized Respondent’s use of the mark. Further, neither Respondent nor its business is known by the FRESHLOOK name.
2. Respondent is not using the dispute domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use as the disputed domain name directs users to sites selling a variety of competing products, and likely generates click-through revenue.
iii. Policy ¶ 4(a)(iii)
1. Respondent’s registration and use of the domain name constitutes bad faith because the disputed domain name directs users to linked sites, which sell a variety of competing products.
2. Respondent registered and is using the domain name with the intent to divert users seeking information about Complainant or its products to Respondent’s own site. Respondent is attempting to commercially benefit, likely through click-through revenue, from the association with the FRESHLOOK mark, which is further evidence of Respondent’s bad faith.
3. Respondent’s bad faith is also demonstrated by Respondent’s constructive knowledge of Complainant’s rights in the FRESHLOOK mark prior to registration of the disputed domain name.
1. Respondent’s <freshlooksites.com> domain name is confusingly similar to Complainant’s FRESHLOOK mark.
2. Respondent does not have any rights or legitimate interests in the < freshlooksites.com> domain name.
3. Respondent registered or used the <freshlooksites.com> 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.
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 claims to own the FRESHLOOK mark through its trademark registration with the USPTO (Reg. No. 2,888,957, registered September 28, 2004). See Complainant’s Exhibit 2. The Panel notes that the WHOIS record indicates that Respondent resides in the United States. Previous panels have held that a USPTO registration is sufficient to establish the complainant’s rights in the mark where the respondent resides in the same country as the mark is registered. 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)). The Panel finds that Complainant’s USPTO registration is adequate to establish its right in the FRESHLOOK mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <freshlooksites.com> domain name is confusingly similar to Complainant’s FRESHLOOK mark because the domain name contains Complainant’s entire trademark with the mere addition of a generic or descriptive term “sites,” and gTLD “.com.” Previous panels have found that the mere addition of a generic word to a complainant’s mark does not sufficiently distinguish the resulting domain name from the incorporated mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Further, previous panels have consistently held that the affixation of the gTLD “.com” is irrelevant for the purposes of the Policy ¶ 4(a)(i) analysis. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Therefore, the Panel finds that the <freshlooksites.com> domain name is confusingly similar to Complainant’s FRESHLOOK mark pursuant to 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 no rights or legitimate interests in the domain name. Complainant asserts that Respondent has no connection or affiliation with Complainant, and Complainant has not authorized Respondent’s use of the mark. Further, Complainant contends that neither Respondent or its business is known by the FRESHLOOK name. The Panel notes that the WHOIS record indicates that “Domain Privacy Service” is the registrant of the disputed domain name. Respondent did not submit a response to refute Complainant’s contentions. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii), based on Complainant’s contention that Respondent has no permission to use the mark, as well as the WHOIS information. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complainant asserts, albeit in its bad faith section, that Respondent is not using the dispute domain name in connection a bona fide offering of goods or services, or a legitimate noncommercial or fair use as the disputed domain name directs users to sites selling a variety of competing products, and likely generates click-through revenue. The Panel observes that Complainant has included a screenshot of the page resolving from <freshlooksites.com>. See Complainant’s Exhibit 5. The screenshot includes links to related searches including “Acuvue True Eye Contact Lenses,” “Pure Vision Contact Lenses,” and “Freshlook Colorblends.” In Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007), the panel held, “Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name 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).” In line with precedent, the Panel finds that Respondent is not using the domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii), respectively.
Though not expressly alleged, the Panel construes Complainant’s argument to include the contention that Respondent’s registration and use of the domain name constitutes bad faith because the disputed domain name directs users to linked sites, which sell a variety of competing products. The Panel again recalls that Complainant included, in Exhibit 5, a screenshot of the page resolving from <freshlooksites.com>. The screenshot displays links including “Acuvue True Eye Contact Lenses” and “Pure Vision Contact Lenses,” which are offerings from competing providers in the eye care field. Previous panels have found evidence of bad faith where a respondent provides links to competitors of the complainant through the confusingly similar domain name. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel finds evidence of bad faith under Policy ¶ 4(b)(iii) because Complainant has provided the Panel with evidence showing Respondent provides links to Complainant’s competitors.
Complainant asserts that Respondent registered and is using the domain name with the intent to divert users seeking information about Complainant or its products to Respondent’s own site. Complainant further asserts that Respondent is attempting to commercially benefit, likely through click-through revenue, from the association with the FRESHLOOK mark, which Complainant argues is further evidence of Respondent’s bad faith. The Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the resolving page provides links to Complainant’s competitors, including Acuvue (see Complainant’s Ex. 5), and Respondent likely receives click-through fees by misleading Internet users into associating Complainant with the domain name. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant claims that Respondent’s bad faith is also demonstrated by Respondent’s constructive knowledge of Complainant’s rights in the FRESHLOOK mark prior to registration of the disputed domain name. Although previous panels have generally not regarded constructive notice to be sufficient for a finding of bad faith, the Panel extrapolates from Complainant’s assertion and determine that Respondent had actual knowledge of Complainant's mark and rights; and therefore, find that Respondent registered the disputed domain name in 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 had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <freshlooksites.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 13, 2013
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