Novartis AG v. David McNerney
Claim Number: FA1308001514306
Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper, III, of Tepper & Eyster, PLLC, Raleigh, North Carolina, USA. Respondent is David McNerney (“Respondent”), Woodbridge, Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dailiestotal1contacts.com> (the “Disputed Domain Name”), 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.
Douglas M. Isenberg as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 12, 2013; the National Arbitration Forum received payment on August 12, 2013.
On August 12, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <dailiestotal1contacts.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 August 15, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 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@dailiestotal1contacts.com. Also on August 15, 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 September 3, 2013.
On September 13, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Douglas M. Isenberg 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
In its Complaint, Complainant contends, in relevant part, as follows:
· “Complainant discovers, develops, manufactures and distributes products for, among other things, vision care and eye health.”
· Complainant is the owner of U.S. Reg. No. 4,156,124 for the mark DAILIES TOTAL1 for use in connection with “contact lenses” (registered June 12, 2012) (the “DAILIES TOTAL1 Mark”).
· Complainant is the registrant of the domain name <dailies.com>, which it uses “to promote and provide information about its contact lens products.”
· The Disputed Domain Name was created on July 29, 2013, and “is used in connection with a website [that] sells contact lens products from a variety of manufacturers in direct competition with Complainant.”
· The Disputed Domain Name is confusingly similar to the DAILIES TOTAL1 Mark because the domain name “consists of Complainant’s entire trademark, with the addition of the descriptive word ‘contacts’”, which is “insignificant” because it is “highly relevant and descriptive.”
· Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “Respondent has no connection or affiliation with Complainant, and Complainant has not consented to Respondent’s use of the [Disputed] Domain Name… [and] neither Respondent nor its business is known by the name ‘DAILIES TOTAL1’ or ‘DAILIES.’”
· The Disputed Domain Name was registered and is being used in bad faith because Respondent’s website using the Disputed Domain Name “seek[s] to divert customers who are searching for information about Complainant and its contact lens products and… instead sell[s] them competitive products.” Consequently, “Respondent is clearly attempting to increase its own Internet sales through association with Complainant’s trademarks.”
B. Respondent
In its Response, Respondent contends, in full, as follows:
We would take issue with the complaint as this is a bad faith domain name. This is simply a vehicle to sell contacts manufactured by Alcon (contact lens division of Novartis). Consider something as simple as kitchen knobs manufactured by Amerock and sold by numerous websites with the searchable name Amerock for example, Amerock for Less, Amerock Cheaper, etc. (file attached). Does this web domain financially hurt Alcon in any way, the answer is “No”. Anyone with a valid prescription for Dailies Total 1 contact lenses is going to purchase that brand of contacts. They are not going to purchase a different brand on my website. And whether they purchase the contacts from me or another re-seller, Alcon is going to make the same profit. This is because this is the only contact lens sold by Alcon that is sold to re-sellers at the same price, and with discount to none. By agreement, all re-sellers must sell this contact lens at the MSRP minimum price of no less than $95.00. If Novartis or Alcon is displeased with using their product name in my listing all they need do is send me an email asking me remain or take down the domain, I would have no problem with that. I look forward to a succinct and speedy resolution to this filing.
The Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s DAILIES TOTAL1 Mark, that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name was registered and is being used 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.
Based upon the trademark registration cited by Complainant described above, it is apparent that Complainant has rights in the DAILIES TOTAL1 Mark. As to whether the Disputed Domain Name is identical or confusingly similar to the DAILIES TOTAL1 Mark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “dailiestotal1contacts”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose.
The addition of certain words, as here (that is, “contacts”), can “exacerbate[] the confusing similarity between the [Complainant’s] trademark and the Domain Name and increase[] the risk of confusion between the Domain Name and the… trademarks.” Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Kenneth Terrill, WIPO Case No. D2010-2124 (citing Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561 (citing Yellow Corporation v. MIC, WIPO Case No. D2003-0748 (“when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity”)).
Here, because the word “contacts” is associated with the DAILIES TOTAL1 Mark, this word increases the confusing similarity between the Disputed Domain Name and Complainant’s trademark. See, e.g., Gateway Inc. v. Domaincar, WIPO Case No. D2006-0604 (finding the domain name <gatewaycomputers.com> confusingly similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY Marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”).
Accordingly, the Panel finds that Complainant has proven the first element of the UDRP.
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “Respondent has no connection or affiliation with Complainant, and Complainant has not consented to Respondent’s use of the [Disputed] Domain Name… [and] neither Respondent nor its business is known by the name ‘DAILIES TOTAL1’ or ‘DAILIES.’”
Under the UDRP, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1. Here, although Respondent has submitted a response, it does not substantively address the merits of Complainant’s legal arguments and has offered no “appropriate allegations or evidence.”
Accordingly, the Panel is satisfied that Complainant has proven the second element of the UDRP.
Whether a domain name is registered and used in bad faith for purposes of the UDRP may be determined by evaluating four (non-exhaustive) factors set forth in the UDRP: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. UDRP, paragraph 4(b).
Here, it appears that Complainant has argued that bad faith exists pursuant to paragraph 4(b)(iv) of the UDRP. Indeed, a printout of Respondent’s website using the Disputed Domain Name appears to show that Respondent is offering for sale contact lenses other than those using the DAILIES TOTAL1 Mark, such as “Acuvue,” “Air Optix,” “Avaira,” “Bio True,” “Biofinity” and “Biomedics.” Respondent does not deny this but instead appears to argue that this does not amount to bad faith in part because it is a reseller of Complainant’s products.
Under the frequently cited decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, a reseller cannot establish rights or legitimate interests unless, among other things, it “sell[s] only the trademarked goods” and “accurately disclose[s] the registrant’s relationship with the trademark owner.” Neither of these requirements appears to be present here, and this panel finds that these requirements are applicable to paragraph 4(a)(iii) of the UDRP as well as paragraph 4(a)(ii).
Accordingly, the Panel is satisfied that Complainant has proven the third element of the UDRP.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dailiestotal1contacts.com> domain name be TRANSFERRED from Respondent to Complainant.
Douglas M. Isenberg, Panelist
Dated: September 24, 2013
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