Novartis AG v. Park hyunju
Claim Number: FA1411001590545
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 <airoptic.org>, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 18, 2014; the National Arbitration Forum received payment on November 18, 2014.
On November 19, 2014, Megazone Corp., dba HOSTING.KR confirmed by e-mail to the National Arbitration Forum that the <airoptic.org> 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 November 20, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 10, 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@airoptic.org. Also on November 20, 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 December 18, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, Esq. 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
i. Complainant owns the AIR OPTIX mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,490,249, registered August 19, 2008)
ii. Complainant uses the AIR OPTIX mark in connection with its business in vision care and eye health.
iii. Complainant operates online through the <airoptix.com> domain name.
i. Policy ¶ 4(a)(i)
1. The <airoptic.org> domain name is confusingly similar to Complainant’s AIR OPTIX mark, because Respondent has simply substituted the letter “c” for the “x” in the mark.
ii. Policy ¶ 4(a)(ii)
1. Respondent lacks rights or legitimate interests in the disputed domain name.
2. Respondent is not commonly known by the <airoptic.org> domain name. Respondent is neither licensed nor authorized to use the AIR OPTIX mark.
iii. Policy ¶ 4(a)(iii)
1. Respondent uses the disputed domain name to intentionally divert users seeking Complainant to Respondents own website for commercial gain.
2. Respondent had constructive knowledge of Complainant’s AIR OPTIX mark prior to registering the disputed domain name.
B. Respondent
Respondent did not submit a Response. Respondent registered the disputed domain name on November 6, 2014.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Korean, thereby making the language of the proceedings in Korean. Pursuant to Rule 11(a), the Panel determines 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 shall be conducted in English.
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 uses the AIR OPTIX mark in connection with its business in vision care and eye health. Complainant argues that its rights in the AIR OPTIX mark are demonstrated through trademark registrations with the USPTO (Reg. No. 3,490,248, registered August 19, 2008). Complainant argues that such registrations are sufficient to establish rights in the AIR OPTIX mark pursuant to Policy ¶ 4(a)(i) requirements. Complainant’s argument is supported by previous UDRP decision. See Metro. Life Ins. Co. v. Glu, FA 874496 (Nat. Arb. Forum Feb. 13, 2007) (finding that the complainant had rights in the METLIFE mark as a result of its registration of the mark with the United States federal trademark authority). Accordingly, the Panel finds that Complainant’s USPTO registrations satisfy the requirements of Policy ¶ 4(a)(i).
Complainant argues that the <airoptic.org> domain name is confusingly similar to Complainant’s AIR OPTIX mark because Respondent has simply substituted the letter “c” for the “x” in the mark. The Panel also notes that the disputed domain name differs from the mark given the affixation of the generic top-level domain (“gTLD”) “.org” and the removal of the space between the words of the mark. Previous panels have generally found that a domain name differing from a mark by a single letter does not escape the grasp of confusing similarity, and that the affixation of a gTLD and the omission of space between the words of the mark are irrelevant changes to the Policy ¶ 4(a)(i) analysis. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also 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)). As such, the Panel finds that Respondent’s <airoptic.org> domain name is confusingly similar to Complainant’s AIR OPTIX mark pursuant to Policy ¶ 4(a)(i).
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); 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.”).
It is Complainant’s position that Respondent lacks rights or legitimate interests in the disputed domain name. In so arguing, Complainant alleges that Respondent is not commonly known by the <airoptic.com> domain name. The Panel notes that the WHOIS information identifies “Park Hynuju” as the registrant of the disputed domain name. Further, Complainant urges that Respondent is neither licensed nor authorized to use the AIR OPTIX mark. The Panel recalls that Respondent has failed to submit a response to refute any of Complainant’s contentions. Given the lack of evidence to infer otherwise, the Panel finds that Respondent is not commonly known by the <airoptic.org> domain name pursuant to Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant did not submit an argument regarding Respondent providing a bona fide offering of goods or services, or making a legitimate noncommercial or fair use of the disputed domain name. However, Complainant did submit a screenshot of Respondent’s website, which shows that Respondent was using the disputed domain name to display links to various third-party websites, some of which compete with Complainant. See Complainant’s Ex. 5. Generally, this type of behavior signals that a respondent lacks a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent’s current use of the disputed domain name does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii), respectively.
Complainant asserts that Respondent registered and is using the <airoptic.org> domain name in bad faith under Policy ¶ 4(a)(iii). Primarily, Complainant argues that Respondent uses the disputed domain name to intentionally divert Internet users to Respondent’s own website for commercial gain in Policy ¶ 4(b)(iv) bad faith. The Panel recalls that Complainant has submitted a screenshot of Respondent’s website showing the display of links to third-party websites, some of which compete with Complainant. See Complainant’s Ex. 5. Generally, panels have not hesitated to find evidence of bad faith where the respondent uses a disputed domain name to attract Internet users to its own website for commercial gain. 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). Consequently, the Panel finds that Respondent acted in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that due to the fact that Complainant has registered the AIR OPTIX mark, Respondent must have had at least constructive knowledge of Complainant’s rights in the mark. While Complainant believes that constructive notice is sufficient, the Panel agrees that the trend in UDRP proceedings is to find bad faith only through actual knowledge. See, e.g., BMC Software, Inc. v. Dominic Anschutz, FA 1340892 (Nat. Arb. Forum Oct. 6, 2010) (determining that constructive notice will usually not support a finding of bad faith); Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."). However, the Panel infers that Respondent had actual knowledge of Complainant’s rights in the AIR OPTIX mark from the manner of use of the disputed domain name by Respondent. As such, the Panel concludes that Respondent’s actual knowledge of the Complainant’s rights in the AIR OPTIX mark satisfies a finding of bad faith under Policy ¶ 4(a)(iii) as well.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <airoptic.org> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: December 26, 2014
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