Novartis AG v. Fresh Look Consulting, LLC
Claim Number: FA1110001413479
Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is Fresh Look Consulting, LLC (“Respondent”), represented by Katheryn A. Andresen of Hellmuth & Johnson, PLLC, Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freshlookconsulting.net>, registered with GoDaddy.com, Inc.
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.
Dr. Reinhard Schanda as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 28, 2011; the National Arbitration Forum received payment on October 28, 2011.
On November 1, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <freshlookconsulting.net> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 November 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 22, 2011 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@freshlookconsulting.net. Also on November 2, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 November 16, 2011.
On November 1, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it has registered the trademark FRESHLOOK in the United States in connection with a line of contract lenses. In that connection, Complainant owns Unites States Trademark Reg. No. 2,888,957. Complainant also owns variations of the mark, including FESHLOOK COLORS (Reg. No. 2,888,959); FRESHLOOK DEMSIONS (Reg. No. 3,149,370); FRESHLOOK COLOR STUDIO (Reg. No. 3,822,317); and FRESHLOOK COLOR BLENDS (Reg. No. 2,251,945), collectively “FESHLOOK Mark”. Complainant registered the domain name <freshlookconsulting.com> in 1999 in connection with the sale of its contact lens products, and is using the web address to date.
Complainant contends that it discovers, develops, manufactures and distributes products for, among other things, vision care and eye health. Complainant owns and uses the trademark FESHLOOK, and variations thereof, in connection with its contact lens products and related internet services. In that connection, Complainant owns the corresponding domain name <freshlookconsulting.com>, and uses this domain name to promote and to provide information about its contact lens products. Complainant has expended significant resources on the development and marketing of its FRESHLOOK line of contact lens products.
Respondent registered the Domain Name <freshlookconsulting.net> on or about October 7, 2011. According to records accessed through the GoDaddy.com WHOIS database, the Domain Name is currently registered to Domains by Proxy. The Domain Name at dispute is used in connection with a website which provides hyperlinks to a variety of information, primarily contact lens and eye health information, and to websites in direct competition with Complainant.
Complainant contends that the Domain Name at dispute is legally equivalent and confusingly similar to Complainant’s trademark. The Domain Name contains the Complainant’s entire trademark with the addition of a generic or descriptive term. Although the Domain Name differs by one word from Complainant’s trademark the differences are insignificant and do not prevent the Domain Name from being confusingly similar to Complainant’s trademark.
The fact that the Domain Name adds the “.net” top level domain name to Complainant’s trademark does not keep the Domain Name from being confusingly similar to Complainant’s mark. It has been held by a number of panels applying the Policy that the addition of a top level domain, such as .us, .com, .net, or .org, to a trademarked word does not sufficiently differentiate the resulting domain name from the trademark wholly incorporated in that domain name so that the domain name does not infringe the trademark incorporated therein.
The addition of the generic or descriptive word “consulting” to the FESHLOOK Mark is insufficient to avoid a likelihood of confusion between the Domain Name and the FRESHLOOK Mark. Indeed, since the FRESHLOOK Mark is associated with Complainant’s vision products, the addition of the word “consulting” to describe or refer to consulting services related to contact lens alternatives serves to enhance the association of the Domain Name to Complainant’s Mark, rather than to minimize it. Several panels have found that the addition of generic or descriptive words to another’s trademark creates a confusingly similar domain name and have ordered the transfer of such domain names. In this case, the Respondent’s addition of the generic word “Consulting” to Complainant’s FRESHLOOK Mark similarly crates a confusingly similar Domain Name.
Because the Domain Name at dispute consists solely of complainant’s trademark with the addition of a generic term, the Domain Name and Complainant’s mark are confusingly similar. The fact that the Domain Name has been registered in order to be confusingly similar to Complainant’s trademarks is made even more clear by the fact that the Domain Name is associated with a variety of contacts lens and eye care information.
Complainant further contends that the Respondent has no legitimate rights or interest with respect to the Domain Name. Decisions applying the Policy have found that the fact that a Respondent is not known by a mark indicates that the Respondent has no rights in the mark. Respondent has no connection or affiliation with Complainant and Complainant has not consented to Respondent’s use of the Domain Name. Further, neither Respondent nor its business is known by the name “FRESHLOOK”.
Finally, Complainant asserts that the Respondent has registered the Domain Name in bad faith. Paragraph 4(b) of the Policy sets forth a non-exclusive list of factors for determining bad faith. These factors include whether the domain name has been used to attract users to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s mark.
Respondent operates a web site at <freshlookconsulting.net> seeking to generate “click-through” revenue from users searching for information about Complainant and its contact lens products. Because the FRESHLOOK Mark is well-known in connection with Complainant’s contact lenses, it is clear that the Respondent registered the Domain Name with the intent to divert users seeking information about Complainant or its products to Respondent’s website. Because the Domain Name directs the user to sites selling a variety of competing products, the Respondent is clearly attempting to increase its own Internet sales through association with Complainant’s trademark. Such use for Respondent’s own commercial gain is additional evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Further, such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or faire use under Policy ¶ 4(c)(iii).
Further, Respondent had constructive notice of Complainants FRESHLOOK Mark prior to the selection of the Domain Name. Complainant’s federal registrations, dating back to at least as early as 2004, serve as constructive notice of its use of the FRESLOOK Mark.
Respondent has registered domain name which contains Complainant’s entire trademark in connection with a generic or descriptive term. Respondent’s use of Complainant’s entire mark, with one minor change, in the Domain Name serves as an indication of bad faith. The use by Respondent of Complainant’s entire mark makes it difficult to infer a legitimate use of the Domain Name by Respondent. Respondent’s Domain Name uses the entirety of Complainant’s FRESHLOOK mark with the addition of one generic or descriptive term. No plausible explanation exists as to why Respondent selected an almost identical version of this mark as part of the Domain Name, particularly a Domain Name used to direct consumers to competing contact lens products, other than to trade on the goodwill of Complainant.
B. Respondent
Respondent contends that the test for confusing similarity is an objective one. The test is met where the domain name misappropriates sufficient textual components from the mark such that an ordinary Internet user who is familiar with the goods or services distributed under the mark would upon seeing the domain name likely think that owing to the visual and/or phonetic similarity between the mark and the domain name that an affiliation exists between the site identified by that domain name and the owner or licensed user of the mark.
Here, there is no potential for confusion because no “ordinary Internet user who is familiar with the goods” distributed under Complainant’s trademarks would believe <freshlookconsulting.net> has anything to do with colored contact lenses. An ordinary person would find it hard to imagine why consulting services would be related to the production and sale of these lenses.
It is true that “the mere addition of a generic or descriptive term does not exclude the likelihood of confusion.” However, consulting is the essence of Respondent’s business; it provides advisory and consulting services in a number of fields on behalf of individuals and businesses. Further, consulting does not have an obvious relationship to Complainant’s business.
According to Respondent the Domain Name is neither identical nor confusingly similar to Complainant’s trademarks.
Complainant argues that Respondent has no legitimate rights or interests in the Domain Name. Further, Complainant misstates that “neither Respondent nor its business is known by the name ‘FRESHLOOK.’” The Domain Name is the name of Respondent’s company—Fresh Look Consulting, LLC. Respondent’s articles of organization were filed with the Minnesota Secretary of State on October 3, 2011.
Numerous panels have concluded that if a domain name corresponds to the name of the respondent’s actual company, the respondent has legitimate rights and interests in such domain name.
Respondent intends to link the Domain Name to its main website <freshlookconsultingllc.com>. Then, Respondent will advertise its consulting services to customers through the Main Website. As of the date of this Response, the Main Website is still under construction. However, as noted by a previous panel, “Clearly, it is not necessary to show a fully operational business, for it is sufficient [to satisfy this element] if the steps taken are only preparations.”
Respondent has performed more than merely perfunctory steps. It has consulted in great detail with its representative law firm, filed its articles of organization with the Minnesota Secretary of State, registered domain names which correspond to its name, hired a website developer, opened a bank account, and sent an invoice to a customer. These steps all took place before Respondent received a Written Notice of Complaint and Commencement of Administrative Proceeding.
Additionally, on October 31, 2011, Respondent applied for the trademark “FRESH LOOK” in international class 35, under the description “Providing advisory and consulting services in the fields of strategic assessment, executive mentoring, business opportunity, acquisition, divestiture and turnarounds, and brand remarketing and repositioning, on behalf of individuals and businesses, including for-profit and non-profit entities.” As a specimen, Respondent used its business card. This specimen was received by Respondent’s counsel on October 24, 2011. This filing is further evidence of Respondent’s legitimate rights and interests in and to the Domain Name.
Accordingly Respondent has rights and legitimate interests in the Domain Name at dispute.
Complainant contends that Respondent registered and uses the Domain Name in bad faith. For support, Complainant points to the fact that the Domain Name currently contains advertising which is related to, or potentially in competition with, Complainant’s contact lenses.
Upon receipt of the Complaint, Respondent investigated and determined that the Domain Name is currently a GoDaddy standard “parking page;” not an “under construction” page as Respondent expected since Respondent is still developing its Main Website. The parking page also appears to contain GoDaddy advertising—of which at least one advertisement is for Complainant’s own products. But, Respondent was not aware of the existence of this parking page. It did not take any action to have the Domain Name point to such a page. GoDaddy did so without Respondent’s knowledge or consent. In fact, Respondent anticipated that the Domain name would point to the Main Website which does not include advertising.
Unlike Complainant’s contentions, Respondent does not receive any commercial gain from the advertising currently on the Domain Name. Respondent has at all times intended that the Domain Name link to the Main Website, which is still under construction.
Complainant asserts that “[n]o plausible explanation exists as to why Respondent selected an almost identical version of [Complainant’s] mark as part of the Domain Name . . . .” However, again Complainant misses the fact that the Domain Name is the name of Respondent’s company. The Domain Name will point to the Main Website after this dispute is resolved. The Main Website will promote Respondent’s verifiable and legitimate consulting business. Multiple
panels have found that this is enough to establish that a respondent did not register or use the contested domain name in bad faith.
As a result Respondent has not registered or used the Domain Name in bad faith.
The Panel finds that:
1. the Domain Name <freshlookconsulting.net>, is confusingly similar to Complainant’s marks,
2. the Respondent has not established any right or legitimate interest in the Domain Name <freshlookconsulting.net>, and
3. the Respondent has registered and is using the Domain Name <freshlookconsulting.net>, 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.
Complainant, Novartis AG, alleges that it “discovers, develops, manufactures and distributes products for . . . vision care and eye health.” Complainant contends that it uses its FRESHLOOK mark in connection with its contact lens products. Complainant asserts that it owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its FRESHLOOK mark (e.g., Reg. No. 2,888,957 registered September 28, 2004). Complainant provides evidence of its trademark registrations in its Annex. Based on this evidence, the Panel concludes that Complainant has established rights in its FRESHLOOK mark pursuant to Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also 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 contends that Respondent’s <freshlookconsulting.net> domain name is confusingly similar to Complainant’s FRESHLOOK mark. Complainant claims that Respondent attaches the generic term “consulting” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. The Panel determines that such additions fail to adequately distinguish the disputed domain name from Complainant’s mark. As a result the Panel holds that Respondent’s <freshlookconsulting.net> domain name is confusingly similar to Complainant’s FRESHLOOK mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Techs., Inc. v. Int’l Elec. Commc’n, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corp. v. Khaled Ali Soussi, D2000-0252 (WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant argues that Respondent is not commonly known by the <freshlookconsulting.net> 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. Complainant does not address the WHOIS information, which identifies the registrant of the <freshlookconsulting.net> domain name as “Fresh Look Consulting, LLC.” While Respondent may appear to be commonly known by the disputed domain name, the Panel still determines that Respondent is not commonly known by the <freshlookconsulting.net> domain name under Policy ¶ 4(c)(ii) if Respondent does not offer further evidence. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).
Complainant asserts that Respondent uses the <freshlookconsulting.net> domain name to resolve to a website that contains hyperlinks that resolve to Complainant’s competitors in the contact lens business. The Panel is of the view that such a use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)). While Respondent argues that it did not know that competing hyperlinks were hosted on the resolving website, the Panel concludes that Respondent is responsible for any content found on the resolving website. See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”); see also Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.”).
Complainant does not make any allegations under Policy ¶ 4(b)(iii). However, Complainant does claim that Respondent registered and uses the disputed domain name to host competing hyperlinks. Therefore, the Panel holds that Respondent registered and uses the <freshlookconsulting.net> domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Complainant does argue that Respondent is attempting to commercially gain by creating confusion as to Complainant’s affiliation with the disputed domain name. Complainant contends that Respondent commercially benefits by receiving click-through fees from the competing hyperlinks. Since the Panel concludes that Respondent is attempting to create confusion as to Complainant’s affiliation with the domain name and that Respondent is attempting to profit from that confusion, the Panel further concludes that Respondent registered and uses the <freshlookconsulting.net> domain name in bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also 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.’”).
While Respondent alleges that it is not responsible for the content of the resolving website, the Panel concludes that Respondent in responsible for any content found on the website resolving from the <freshlookconsulting.net> domain name. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent.”); see also Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (finding that it makes no difference that a respondent contends that the advertisements in this case were “generated by the parking company,” the respondent still registered and used the disputed domain name in bad faith).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the FRESHLOOK mark. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel nonetheless finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <freshlookconsulting.net> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: December 1, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page