Novartis AG v. Michael Murphy
Claim Number: FA1310001523338
Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is Michael Murphy (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dailies1.com>, registered with 1 & 1 INTERNET AG.
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.
Sandra J. Franklin 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 <dailies1.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@dailies1.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.
A timely Response was received and determined to be complete on October 14, 2013.
On October 16, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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
1. Respondent’s <dailies1.com> domain name is confusingly similar to Complainant’s DAILIES mark.
2. Respondent does not have any rights or legitimate interests in the <dailies1.com> domain name.
3. Respondent registered and uses the <dailies1.com> domain name in bad faith.
B. Respondent
1. Complainant does business as NOVARTIS and not as DAILIES1.
2. Respondent registered the <dailies1.com> domain name to prevent the unauthorized sale of contact lens products.
3. Respondent did not authorize the use of the <dailies1.com> domain name for a parked page.
Complainant has registered its DAILIES mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,167,845 registered June 23, 1998). Complainant uses its DAILIES mark and the <dailies.com> domain name to sell contact lens products.
Respondent registered the <dailies1.com> domain name on July 18, 2013 and uses it for a website selling competing contact lens products.
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.
The Panel finds that Complainant has rights in its DAILIES mark under Policy ¶ 4(a)(i) through its registration with the USPTO. Previous panels have found USPTO registrations to serve as conclusive evidence of a complainant’s rights in some mark. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Respondent’s <dailies1.com> domain name is confusingly similar to the DAILIES mark, as it merely adds the number “1,” and the gTLD “.com.” These changes do not distinguish the disputed domain name from Complainant’s mark. See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). See also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000), where the panel found that the addition of random numerals to an otherwise registered mark was not enough to establish a distinction between the mark and the domain name. Thus, the Panel finds that the <dailies1.com> domain name is confusingly similar to Complainant’s DAILIES mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 is not known by the DAILIES mark or the <dailies1.com> domain name, and is not affiliated with Complainant, nor has Complainant authorized or licensed Respondent’s use of the <dailies1.com> domain name. Respondent identifies himself as “Michael S. Murphy, O.D.” and does not claim to be known by the disputed domain name. In Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003), the panel agreed that there was no basis at all for finding that the respondent was known by the domain name, and the respondent itself failed to make such a connection. Therefore, the Panel finds that Respondent is not known by the <dailies1.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the <dailies1.com> domain name to sell contact lens products from a variety of firms competing with Complainant. The Panel notes that the <dailies1.com> domain name resolves to a hyperlink advertisement page promoting unrelated goods such as “Kansas City Steak Company,” and competing goods such as “TrueVision Eye Care,” “Rocky Mount Eye Exams,” and “Free Trial Pair Contacts.” The Panel finds that the use of the <dailies1.com> domain name for the hosting of competing and unrelated hyperlink advertisements is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. The Panel notes that it makes no difference whether Respondent specifically authorized the parked page. See Microsoft Corp. v. BARUBIN, FA 1174478 (Nat. Arb. Forum May 6, 2008) (“Respondent maintains a website at <msnmessenger2008.com> which appears to sell Complainant’s products and services and contains links to other third-party websites. Such use of the domain name 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).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent is using the <dailies1.com> domain name to create the likelihood that Internet users will associate Complainant and its DAILIES mark with this domain name, presumably for click-through revenue. This constitutes bad faith under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003), where the panel agreed that there was a Policy ¶ 4(b)(iv) likelihood of confusion amongst Internet users when a confusing similar domain name was used to promote an array of hyperlinked content, including competing advertisements, from which the respondent acquired advertising revenue.
Complainant argues that Respondent had constructive notice of the DAILIES mark when registering this <dailies1.com> domain name, as Complainant had long before registered the mark with the USPTO. The Panel notes that Respondent acknowledges that Complainant sells contacts under the name DAILIES. Thus, the Panel finds that Respondent had actual knowledge of Complainant’s mark and registered the <dailies1.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Respondent argues that he registered the <dailies1.com> domain name to keep others from using it for the unauthorized sale of contact lens products, presumably Complainant’s products. However, only Complainant has the right to control the use of its DAILIES mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dailies1.com> domain name be TRANSFERRED from Respondent to Complainant.
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Sandra J. Franklin, Panelist
Dated: October 23, 2013
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