Novartis AG v. boggs, william
Claim Number: FA1407001570988
Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is boggs, william (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freshlook2.com>, registered with Network Solutions, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 22, 2014; the National Arbitration Forum received payment on July 22, 2014.
On July 22, 2014, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <freshlook2.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 23, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 12, 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@freshlook2.com. Also on July 23, 2014, 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 August 15, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Complainant has registered the trademark FRESHLOOK in the United States in connection with a line of contact lenses. In that connection, Complainant owns United States Trademark Reg. No. 2,888,957. Complainant also owns variations of the mark, including FRESHLOOK COLORS (Reg. No. 2,888,959); FRESHLOOK DIMENSIONS (Reg. No. 3,149,370); FRESHLOOK COLOR STUDIO (Reg. No. 3,822,317) and FRESHLOOK COLOR BLENDS (Reg. No. 2,251,945), collectively the “FRESHLOOK Mark”. Complainant registered the domain name <freshlookcontacts.com> in 1999 in connection with the sale of its contact lens products, and is using that web address to date.
FACTUAL AND LEGAL GROUNDS
I. FACTUAL BACKGROUND
This Complaint is based on the following factual and legal grounds:
A. Complainant and Its FRESHLOOK Mark
Complainant discovers, develops, manufactures and distributes products for, among other things, vision care and eye health. Complainant owns and uses the trademark FRESHLOOK, and variations thereof, in connection with its contact lens products and related internet services. In that connection, Complainant owns the corresponding domain names ˂freshlook.com˃ and <freshlookcontacts.com>, and uses these domain names 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.
B. Respondent’s Activities
Respondent registered the Domain Name <freshlook2.com> (the “Domain Name”) on or about July 6, 2014. According to records accessed through Network Solutions WHOIS database, the Domain Name is currently registered to Respondent. The Domain Name is parked but provides hyperlinks to a variety of information, primarily related to contact lenses and to websites in direct competition with Complainant.
II. ARGUMENTS
A. The Domain Name is Confusingly Similar to Complainant’s Trademark
Complainant respectfully asserts that the Domain Name is legally equivalent and confusingly similar to Complainant’s trademark. The Domain Name contains the Complainant's entire trademark with the mere addition of the number “2.” Although the Domain Name adds one number to 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 “.com” 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. See e.g., Actelion Pharmaceuticals Ltd. v. Kumar Bhatt dba Bosentan.com (Nat. Arb. Forum Oct. 31, 2001) (finding respondent’s domain name bosentan.com to be identical to complainant’s BOSENTAN mark); see also Boehringer Ingelheim Corp. v. Bhatt, FA 560011 (Nat. Arb. Forum Aug. 11, 2000) (finding meloxicam.com and telmisartan.com identical to drugs MELOXICAM and TELMISARTAN).
The addition of the number “2” to the FRESHLOOK Mark is insufficient to avoid a likelihood of confusion between the Domain Name and the FRESHLOOK Mark. Several panels have found that the addition of letters, numbers and/or generic or descriptive words to another's trademark creates a confusingly similar domain name and have ordered the transfer of such domain names. See Google Inc. v. Smith Smithers (Nat. Arb. Forum Dec. 7, 2006 (finding googleforums.com confusingly similar to the trademark Google); see also Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark). In this case, the Respondent’s addition of one number to Complainant’s FRESHLOOK Mark does nothing to decrease the confusing similarity of the Domain Name.
Because the Domain Name consists solely of Complainant’s trademark with the mere addition of one number, 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 contact lens information.
B. Respondent Has No Rights or Legitimate Interests in the Domain Name
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. See Strojirny v. Rautiainen, D2000-1394 (WIPO Dec. 20, 2000) (finding that respondent has no rights or legitimate interests in the domain name where respondent is not commonly known by the distinct ADAST mark and has made no use of the domain name in question); Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights where Respondent was not commonly known by the mark and never applied for a license from Complainant). 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,” or any variation thereof.
C. Respondent Has Registered and Is Using the Domain Name in Bad Faith
Complainant respectfully 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 owns a web site at <freshlook2.com> 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 or to generate “click through” revenue 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). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name is obviously connected with the complainant’s well-known marks, creating a likelihood of confusion strictly for commercial gain). Further, such use is 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 DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that use of a domain name to redirect consumers to a website which competed with the complainant was not a bona fide offering of goods or services).
Respondent had constructive notice of Complainant’s 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 FRESHLOOK Mark. See Pfizer, Inc. v. United Pharmacy, Ltd., D2001-0446 (WIPO June 8, 2001) (actual or constructive knowledge of the complainant’s rights in the trademarks is a factor supporting bad faith); see also Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (April 18, 2000); Document Technologies v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000) (respondent’s knowledge of complainant’s mark at the time of registration of the domain name suggests bad faith); CCA Industries v. Dailey (bikinizone.com), WIPO Case No. D2000-0148 (constructive notice found where domain name confusingly similar to complainant’s mark and mark registered prior to respondent’s domain name).
Respondent’s registration of a domain name which contains Complainant’s entire trademark with the addition of just one number, 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. In Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (March 10, 2000), complainant filed a WIPO complaint against the registrant of domain name cellularonechina.com. The WIPO panel agreed with complainant that the registrant unlawfully registered an identical or confusingly similar domain name in bad faith. Moreover, the Panel inferred bad faith use of cellularonechina.com, because the domain name included Complainant’s entire trademark. In light of Cellular One’s trademark registrations and applications, "it is not possible to conceive of a plausible circumstance in which [r]espondent could legitimately use the domain name." See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 ¶7. Respondent’s Domain Name similarly uses the entirety of Complainant’s FRESHLOOK mark with the addition of one number. 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 failed to submit a Response in this proceeding.
(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.
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 Complainant must prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 discovers, develops, manufactures and distributes products for vision care and eye health. Complainant owns trademark registrations for the FRESHLOOK mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,888,957 registered September 28, 2004). Evidence of a registration with the USPTO is normally sufficient to establish rights in a mark under Policy ¶4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding the complainant had established rights in the PAISLEY PARK mark under Policy ¶4(a)(i) through registration of the mark with the USPTO). While Respondent resides in the United States, it is not necessary for a complainant to have registered its trademark in respondent’s home country to show complainant’s rights under Policy ¶4(a)(i). A complainant need not show superior rights to its mark under Policy ¶4(a)(i), merely that Complainant has SOME rights to the mark. Complainant’s USPTO registration adequately demonstrates Complainant’s rights in the FRESHLOOK mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <freshlook2.com> domain name is confusingly similar to Complainant’s FRESHLOOK mark. Respondent merely adds the number “2” and the gTLD “.com.” The panel in Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) previously found the respondent’s domain name <go2AOL.com> was confusingly similar to the complainant’s AOL mark. Prior panels have unanimously decided the addition of a gTLD (or ccTLD) such as “.com” does not adequately distinguish a disputed domain name from a given mark. To hold otherwise would be to eviscerate the UDRP. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Therefore, this Panel concludes Respondent’s <freshlook2.com> domain name is confusingly similar to Complainant’s FRESHLOOK mark.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding the complainant must first make a prima facie case 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 it has 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 claims Respondent has no rights or legitimate interests in the <freshlook2.com> domain name under Policy ¶4(c)(ii). Respondent is not commonly known by the disputed domain name. The WHOIS information lists the registrant as “boggs, william.” Needless to say, this is not similar to the disputed domain name. It seems clear Respondent is not commonly known by the <freshlook2.com> domain name within the meaning of Policy ¶4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <freshlook2.com> domain name. Respondent’s disputed domain name resolves to a parked website providing hyperlinks to various websites, primarily relating to contact lenses and websites in direct competition with Complainant. Respondent’s resolving website displays links including, “Freshlook Color Blend,” “Freshlook Toric,” “Freshlook Contact,” and “Freshlook Radiant.” While Respondent may claim it did not design this “under construction” page, it is responsible for its contents. Prior UDRP decisions have routinely held using a confusingly similar domain name to resolve to a website displaying competing links is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. See 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)). Respondent has no rights or legitimate interests in the <freshlook2.com> domain name under Policy ¶¶4(c)(i) or (iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent uses the disputed domain name in bad faith under Policy ¶4(b)(iii). Respondent diverts internet users seeking information about Complainant or its products to Respondent’s website displaying links to products and services that directly compete with Complainant. The panel in David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) found that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business. Based upon this evidence, it is clear Respondent’s use of the <freshlook2.com> domain name was registered and is used in such a way to disrupt Complainant’s business in bad faith under Policy ¶4(b)(iii).
Complainant claims Respondent has registered and is using the disputed domain name in bad faith under Policy ¶4(b)(iv). Respondent is attempting to commercially profit from the good will associated with Complainant’s mark by attracting Internet users to Respondent’s resolving website and collecting revenue from the click-through links displayed on respondent’s resolving website. In Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), the panel found 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. Respondent uses the <freshlook2.com> domain name to resolve to a website displaying links that compete with Complainant’s goods and services. It seems clear Respondent registered and is using the <freshlook2.com> domain name in bad faith under Policy ¶4(b)(iv).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <freshlook2.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, August 25, 2014
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