national arbitration forum

 

DECISION

 

Novartis AG v. June MacKinnon

Claim Number: FA1308001516537

PARTIES

Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA.  Respondent is June MacKinnon (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <aqify.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.

 

Hon. Karl V. Fink (Ret.), as Panelist.

 

PROCEDURAL HISTORY

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

 

On August 26, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <aqify.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 27, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 16, 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@aqify.com.  Also on August 27, 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 27, 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.

 

Respondent submitted two emails to the National Arbitration Forum which are identified in this proceeding as “Other Correspondence” because they did not meet the requirements of a formal response.  In those documents, Respondent consents to the transfer of the <aqify.com> domain name, subject to a release of liability.  However, since there has been no request to withdraw the complaint pursuant to the National Arbitration Forum Supplemental Rule 12(b), the Panel will issue a decision.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

  1. Complainant
    1. Complainant, Novartis AG, discovers, develops, manufactures, and distributes products for, among other things, vision care and eye health.
    2. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the AQUIFY mark (e.g., Reg. No. 2,775,439, registered October 21, 2003).
    3. The domain name consists of Complainant’s entire trademark with one minor change in spelling. The fact that the domain name adds the “.com” generic top-level domain (“gTLD”) to Complainant’s trademark does not keep the domain name from being confusingly similar to Complainant’s mark.
    4. Respondent has no rights or legitimate interests in the domain name.

                                          i.    Respondent has no connection or affiliation with Complainant and Complainant has not consented to Respondent’s use of the domain name.

                                         ii.    Respondent operates a website at <aqify.com> seeking to sell contact lenses from competitors of Complainant. Respondent indicates on its website that the domain name may be for sale.

    1. Respondent has registered and is using the domain name in bad faith.

                                          i.    Respondent indicates on its website that the domain name may be for sale.

                                         ii.    Respondent operates a website at <aqify.com> seeking to sell contact lenses from competitors of Complainant.

                                        iii.    Respondent had constructive notice of Complainant’s AQUIFY mark prior to the selection of the disputed domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.

 

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.

 

Identical and/or Confusingly Similar

Complainant asserts that it discovers, develops, manufactures, and distributes products for, among other things, vision care and eye health. Complainant claims that it is the owner of trademark registrations with the USPTO for the AQUIFY mark (e.g., Reg. No. 2,775,439, registered October 21, 2003). The Panel notes that Respondent appears to reside and operate in the United States, therefore, the Panel finds that Complainant’s registration of the AQUIFY mark with the USPTO sufficiently demonstrates its rights in the mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).

 

Complainant argues that the <aqify.com> domain name consists of Complainant’s entire trademark with one minor change in spelling. Complainant contends that the omission of the letter “u” from Complainant’s AQUIFY trademark is insignificant and does not prevent the domain name from being confusingly similar to Complainant’s trademark. The Panel agrees that Respondent’s omission of a letter in Complainant’s mark does not differentiate Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Complainant further contends that the fact that the <aqify.com> domain name adds the “.com” gTLD to Complainant’s AQUIFY trademark does not keep the domain name from being confusingly similar to Complainant’s mark. The Panel holds that Respondent’s addition of a gTLD to a mark in a domain name is inconsequential pursuant to Policy ¶ 4(a)(i). See 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”). Thus, the Panel concludes that Respondent’s <aqify.com> domain name is confusingly similar to Complainant’s AQUIFY mark under Policy ¶ 4(a)(i).

 

Complainant has proven this element.

 

Rights or Legitimate Interests

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 alleges that Respondent has no connection or affiliation with Complainant, and Complainant has not consented to Respondent’s use of the domain name. The Panel notes that WHOIS identifies “June MacKinnon” as the registrant of the <aqify.com> domain name. Prior panels have held that if a respondent lacks connection or affiliation with complainant, and the WHOIS record does not show that respondent is known by the domain name, respondent is not commonly known by the disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). Therefore, the Panel finds that Respondent is not commonly known by the <aqify.com> domain name pursuant to Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent operates a website at <aqify.com> seeking to sell contact lenses from competitors of Complainant. The Panel notes that Respondent’s disputed domain name links to a webpage providing competing click-through links titled “1800CONTACTS.COM – LENSES,” “EYELASH GROWTH – WARNING,” “ACUVUE OFFICIAL SITE,” and others. The Panel finds that Respondent’s use of the <aqify.com> domain name to provide competing links is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).

 

Complainant further argues that Respondent indicates on its website that the domain name may be for sale. The Panel notes that Respondent’s webpage resolving from the <aqify.com> domain name states “BUY THIS DOMAIN. The domain <aqify.com> may be for sale by its owner!” along the top of the webpage. Therefore, the Panel concludes that Respondent’s registration and use of the <aqify.com> domain name to sell the domain name demonstrates that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).

 

Complainant has proven this element.

 

Registration and Use in Bad Faith

Complainant contends that Respondent indicates on its website that the domain name may be for sale. The Panel notes that Respondent’s website resolving from the <aqify.com> domain name states “BUY THIS DOMAIN. The domain <aqify.com> may be for sale by its owner!” along the top of the webpage. In Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), the panel concluded that “Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).” Therefore, the Panel determines that Respondent’s general offer to sell the <aqify.com> domain name demonstrates bad faith use and registration pursuant to Policy ¶ 4(b)(i).

 

Complainant claims that Respondent operates a website at <aqify.com> seeking to sell contact lenses from competitors of Complainant. Complainant contends that the website at the <aqify.com> domain name seeks to divert customers who are searching for information about Complainant and its contact lens products and to instead sell them competitive products. Complainant argues that the disputed domain name directs the user to purchase a variety of competing products and is clearly attempting to increase its own Internet sales through association with Complainant’s trademark. The Panel notes that Respondent’s disputed domain name links to a webpage providing competing click-through links titled “1800CONTACTS.COM – LENSES,” “EYELASH GROWTH – WARNING,” “ACUVUE OFFICIAL SITE,” and others. The Panel therefore holds that Respondent is using the <aqify.com> domain name to attract users to its website for commercial gain, evidencing bad faith use and registration under Policy ¶ 4(b)(iv). 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 asserts that Respondent had constructive notice of Complainant’s AQUIFY mark prior to the selection of the disputed domain name. Complainant alleges that its registrations, filed at least as early as 2001, put Respondent on constructive notice of Complainant’s use of the AQUIFY mark. Complainant further argues that its AQUIFY mark is well-known in connection with Complainant’s contact lens products. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also 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.

 

DECISION

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 <aqify.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Karl V. Fink (Ret.), Panelist

Dated:  September 30, 2013

 

 

 

 

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