Novartis AG v. Park hyunju
Claim Number: FA1407001568032
Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is Park hyunju (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <airoptix.net>, registered with Megazone Corp., dba HOSTING.KR..
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 July 2, 2014; the National Arbitration Forum received payment on July 2, 2014. The Complaint was submitted in both English and Korean.
On Jul 06, 2014, Megazone Corp., dba HOSTING.KR confirmed by e-mail to the National Arbitration Forum that the <airoptix.net> domain name is registered with Megazone Corp., dba HOSTING.KR and that Respondent is the current registrant of the name. Megazone Corp., dba HOSTING.KR has verified that Respondent is bound by the Megazone Corp., dba HOSTING.KR 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 July 8, 2014, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of July 28, 2014 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@airoptix.net. Also on July 8, 2014, the Korean language 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 July 31, 2014, 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. Policy ¶ 4(a)(i)
i. Complainant, Novartis AG, has used the AIR OPTIX mark in commerce since 2008 in connection with the sale of products for vision care and eye health.
ii. Complainant has a valid trademark with the United States Patent and Trademark Office (“USPTO”) for the AIR OPTIX mark (Reg. No. 3,490,248, registered August 19 2008).
iii. The disputed domain name is identical to the mark that Complainant has rights in.
b. Policy ¶ 4(a)(ii)
i. Respondent is not commonly known by the disputed domain name.
c. Policy ¶ 4(a)(iii)
i. Respondent had constructive notice of Complainant’s rights in the mark.
ii. Respondent is using the disputed domain name for commercial gain through reliance on mistake and confusion by linking potential Complainant customers to direct competitors of Complainant and by collecting click-through revenue from the site.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Korean, thereby making the language of the proceedings Korean. Pursuant to Rule 11(a), the Panel finds that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant Novartis AG of Basel, Switzerland, is the owner of domestic and international registrations for the mark AIR OPTIX. Complainant has continuously used the mark since at least as early as 2008 in connection with its contact lens products and related internet services. Complainant also owns a corresponding domain name registration, specifically <airoptix.com>.
Respondent is Park hyunju of South Korea. Respondent’s registrar’s address is listed as Seoul, South Korea. Respondent registered the <airoptix.net> domain name on or about May 12, 2010.
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 alleges that it has used the AIR OPTIX mark in commerce since 2008 in connection with the sale of products for vision care and eye health. Complainant asserts that it has a valid trademark with the USPTO for the AIR OPTIX mark (Reg. No. 3,490,248, registered August 19, 2008) as well as Korean and international registrations for the mark. The Panel finds that Complainant’s registration of the AIR OPTIX mark with the USPTO shows that it has the rights in the mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant contends that the disputed domain name is identical to the mark in which Complainant has rights. The Panel notes that the disputed domain name <airoptix.net> encompasses Complainant’s entire mark, merely deleting the space from Complainant’s mark and adding the generic top-level domain “.net” to the mark. The Panel further notes that neither of these minor changes to the mark adequately distinguish the disputed domain name from Complainant’s trademark. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The Panel here finds that the disputed domain name <airoptix.net> is confusingly similar to the AIR OPTIX trademark under 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 commonly known by the disputed domain name. The Panel notes that the registrant of the disputed domain name is listed as “Park hyunju”. In Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) the panel found that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute. The Panel here finds that Respondent is not commonly known by the disputed domain name <airoptix.net> since he is not listed as such in the WHOIS information and there is no other evidence to support such a contention.
Complainant notes Respondent uses the domain name to host click-through advertisements. The Panel finds that these hyperlink advertisements are evidence Respondent has neither a Policy ¶ 4(c)(i) bona fide offering, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain name. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
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 its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant submits that Respondent is using the disputed domain name for commercial gain through reliance on mistake and confusion by linking potential Complainant customers to direct competitors of Complainant and by collecting click-through revenue from the site. The Panel notes that the disputed domain name resolves to a webpage that features links that lead Internet users to direct competitors of Complainant. The Panel further notes that the links featured at the disputed domain name include “1 800 Contacts”, “Professional Eye Exams”, and “America’s Best Contacts”. Complainant presumes that Respondent receives compensation for featuring these links. The Panel finds that Respondent is attempting to mislead consumers as to Complainant’s affiliation with the disputed domain name, and that Respondent likely profits from the resulting confusion. The Panel finds that the above actions of Respondent evidence bad faith 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 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 <airoptix.net> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: August 14, 2014
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