Novartis AG v. Marco Nardone
Claim Number: FA1310001523332
Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is Marco Nardone (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <opendailies.com>, registered with 1&1 Internet AG.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 8, 2013; the National Arbitration Forum received payment on October 8, 2013.
On October 10, 2013, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <opendailies.com> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 October 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 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@opendailies.com. Also on October 10, 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 November 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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.
A. Complainant
a. Complainant discovers, develops, manufactures and distributes products for vision care and eye health. Complainant owns the domain name <dailies.com>, and uses the domain name to promote information about its contact lens products. Complainant has expended significant resources on the development and marking of its DAILIES line of contact lens products.
b. Complainant has rights in the DAILIES mark, used in connection with contact lens products. Complainant is the owner of a registration for the DAILIES mark with the United States Patent and Trademark Office (“USPTO”) (See Reg. No. 2,167,845 registered June 23, 1998).
c. Respondent’s <opendailies.com> domain name is confusingly similar to Complainant’s DAILIES mark. The disputed domain name includes Complainant’s mark in its entirety while adding the descriptive word “open.” The disputed domain name also includes the generic top-level domain (“gTLD”) “.com.”
d. Respondent does not have any rights or legitimate interests in the <opendailies.com> domain name.
e. Respondent is not commonly known by the disputed domain name.
f. In section I.(B.) of its Complaint, Complainant notes that the <opendailies.com> domain name resolves to a website providing hyperlinks to information regarding contact lens and eye health information, thereby directly competing with Complainant’s business. See Complainant’s Exhibit 5.
g. Respondent registered and is using the <opendailies.com> domain name in bad faith.
h. Respondent is intentionally attempting to attract and mislead internet users via a confusingly similar domain name for Respondent’s own commercial gain. The disputed domain name resolves to a website providing hyperlinks to information regarding contact lens and eye health information, resulting in direct competition with Complainant’s business. See Complainant’s Exhibit 5.
i. Respondent had constructive notice of Complainant’s mark because Complainant filed its USPTO registration for the DAILIES mark in 1994.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Novartis AG of Basel, Switzerland. Complainant is the owner of the mark DAILIES which is registered internationally including with the United States Patent and Trademark Office (1998). The registrations indicate a first use dating back to at least 1994 and the Complainant asserts that it has used the mark continuously since that time. DAILIES and its associated family of marks are used throughout the world in connection with Complainant’s goods and services for vision care and eye health. Complainant also operates its own official website located at <dailies.com> which was registered in 1997.
Respondent is Marco Nardone of London, Great Britain. Respondent’s registrar’s address is Karlsrube, Germany. Respondent registered the <opendailies.com> domain name on or about April 23, 2013.
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 contends it has rights in the DAILIES mark, used in connection with contact lens products. Complainant states it is the owner of a registration for the DAILIES mark with the USPTO (See Reg. No. 2,167,845 registered June 23, 1998). Past panels have determined that a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel finds that Complainant has proven it has rights in the DAILIES mark under Policy ¶ 4(a)(i) by providing evidence of a registration for the mark with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant next alleges that Respondent’s <opendailies.com> domain name is confusingly similar to Complainant’s DAILIES mark. Complainant notes that the disputed domain name includes Complainant’s mark in its entirety while adding the descriptive word “open.” Complainant also notes that the disputed domain name includes the gTLD “.com.” The Panel notes that the addition of a descriptive word does not sufficiently distinguish a disputed domain name from a trademark. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”). The Panel further notes that the addition of a gTLD is irrelevant for the purposes of confusing similarity analysis under Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel finds that Respondent’s <opendailies.com> domain name is confusingly similar to Complainant’s DAILIES mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant claims Respondent does not have any rights or legitimate interests in the <opendailies.com> domain name. Complainant contends Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS record for the disputed domain name lists “Marco Nardone” as the domain name registrant. Past panels have found that the WHOIS record, along with other evidence on record, is an indicator of whether a respondent is commonly known by a 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). The Panel finds that, because neither the WHOIS record nor any other evidence on record indicates to the contrary, Respondent is not commonly known by the <opendailies.com> domain name pursuant to Policy ¶ 4(c)(ii).
In section I.(B.) of its Complaint, Complainant notes that the <opendailies.com> domain name resolves to a website providing hyperlinks to information regarding contact lens and eye health information, thereby directly competing with Complainant’s business. See Complainant’s Exhibit 5. The Panel notes that a disputed domain name that displays competing hyperlinks may not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel finds that Respondent is not making 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).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet his burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant contends that Respondent registered and is using the <opendailies.com> domain name in bad faith. Complainant claims Respondent is intentionally attempting to attract and mislead Internet users via a confusingly similar domain name for Respondent’s own commercial gain. Complainant notes that the disputed domain name resolves to a website providing hyperlinks to information regarding contact lens and eye health information, resulting in direct competition with Complainant’s business. See Complainant’s Exhibit 5.
Using a confusingly similar domain name to display competing hyperlinks, presumably creating click-through revenue, has been found to constitute bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). The Panel finds that Respondent’s use of the <opendailies.com> domain name to display hyperlinks that compete with Complainant for Respondent’s own commercial gain constitutes bad faith under Policy ¶ 4(b)(iv).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <opendailies.com> domain name be TRANSFERRED from Respondents to Complainant.
Darryl C. Wilson, Panelist
Dated: November 19, 2013
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