Novartis AG v METAVISUAL LDA
Claim Number: FA1310001524254
Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is METAVISUAL LDA (“Respondent”), Portugal.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lentes-airoptix.com> and <air-optix-kontaktlinsen.com>, registered with Register.it S.p.A.
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 14, 2013; the National Arbitration Forum received payment on October 14, 2013.
On October 15, 2013, Register.it S.p.A. confirmed by e-mail to the National Arbitration Forum that the <lentes-airoptix.com> and <air-optix-kontaktlinsen.com> domain names are registered with Register.it S.p.A. and that Respondent is the current registrant of the names. Register.it S.p.A. has verified that Respondent is bound by the Register.it S.p.A. 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 15, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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@lentes-airoptix.com, postmaster@air-optix-kontaktlinsen.com. Also on October 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 7, 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 names be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
Respondent registered the <lentes-airoptix.com> domain name on September 27, 2013, and the <air-optix-kontaktlinsen.com> domain name on September 28, 2013.
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 AIR OPTIX which is registered internationally including with the United States Patent and Trademark Office (2008). The Complainant asserts that it has used the mark continuously since at least that time in connection with Complainant’s goods and services associated with contact lens products and related internet services. Complainant also operates its own official website located at <airoptix.com> which was registered in 2005.
Respondent is METAVISUAL LDA of Viseu, Portugal. Respondent’s registrar’s address is listed as Firenze, Italy. Respondent registered the <lentes-airoptix.com> domain name on September 27, 2013, and the <air-optix-kontaktlinsen.com> domain name on September 28, 2013. Respondent failed to file a proper response to the proceedings but did send a series of email correspondence. Respondent’s emails claim Respondent did no wrong in purchasing the disputed domains and was willing to allow Complainant to recover the domains in exchange for certain costs beyond their acquisition expense.
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 argues that it uses the AIR OPTIX mark in connection with contact lens products and related Internet services. Complainant explains that it has registered its AIR OPTIX mark with the USPTO (e.g., Reg. No. 3,490,248 registered on August 19, 2008). The Panel finds that Complainant’s USPTO registration is satisfactory evidence of Policy ¶ 4(a)(i) rights, even if Respondent does reside in Portugal. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant also contends that Respondent’s <lentes-airoptix.com> and <air-optix-kontaktlinsen.com> domain names are confusingly similar to the AIR OPTIX mark. Complainant first explains that the <lentes-airoptix.com> domain name includes the entire AIR OPTIX mark, a hyphen, and the term “lentes” (which Complainant suggests is Spanish for the term “lens”). Complainant next suggests that the <air-optix-kontaktlinsen.com> domain name features the entire AIR OPTIX mark, hyphens, and the term “kontaklinsen” (which Complainant claims is a German term meaning “contact lenses”). According to Complainant, the fact that both domain names include the gTLD “.com” is not relevant. The Panel notes that in regards to both domain names, the gTLDs, hyphens, and absence of spacing are not serious considerations under Policy ¶ 4(a)(i). See, e.g., Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel further notes that the only other relevant addition to the domain names are the terms “lentes” and “kontaklinsen,” both terms that merely describe the products sold under the AIR OPTIX mark, and as such these terms enhance the confusing similarity of the domain names. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel finds that the both the <lentes-airoptix.com> and <air-optix-kontaktlinsen.com> domain names are confusingly similar to the AIR OPTIX mark under Policy ¶ 4(a)(i).
Respondents make 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 argues that Respondent is not known by the AIR OPTIX mark, and has not otherwise been licensed or authorized to utilize Complainant’s mark in domain names. The Panel notes that the relevant WHOIS information lists “METAVISUAL LDA” as the registrant of record for both domain names. In the case of M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel agreed that when no evidence in the record suggested that the respondent was known by the domain names, there is no basis for finding that a respondent is commonly known by an at-issue domain name under Policy ¶ 4(c)(ii). The Panel here finds that there is nothing in the record evidencing that Respondent is commonly known by the <lentes-airoptix.com> and <air-optix-kontaktlinsen.com> domain names. The Panel finds that Respondent is not commonly known by either domain name for the purposes of Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the <lentes-airoptix.com> and <air-optix-kontaktlinsen.com> domain names to promote competing and unrelated products through web directories. The Panel notes that both domain names resolve to websites that promote an array of competing and unrelated goods such as “Free Contact Lens Trial,” “1800CONTACTS.com – Lenses,” or “Free Trial Pair Contacts.” See Compl., at Attached Ex. 5. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel determined that there was no bona fide offering made when the domain name was being used to promote commercial hyperlinks to competitive goods. The Panel here finds that Respondent’s competing commercial hyperlink directories on the disputed domain names’ websites do not establish a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Respondents make no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondents have not provided a response to this action the Respondents have failed to meet their burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent is seeking to capitalize on the likelihood that Internet users will confuse Complainant as the source or origin of the competing and unrelated hyperlink advertisements viewable through the disputed domain names’ resolving websites. The Panel again notes that both domain names resolve to websites where Internet users are confronted with hyperlink advertisements to competing contact lens products. See Compl., at Attached Ex. 5. The Panel finds that the use of these domain names for purposes of competing hyperlinks is evidence of a Policy ¶ 4(b)(iv) bad faith attempt to profit from the likelihood that Internet users will confuse Complainant as a source or endorser of the competing content. See, e.g., Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
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 <lentes-airoptix.com> and <air-optix-kontaktlinsen.com> domain names be TRANSFERRED from Respondents to Complainant.
Darryl C. Wilson, Panelist
Dated: November 21, 2013
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