Novartis AG v. savas balta
Claim Number: FA1501001601432
Complainant is Novartis AG (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is savas balta (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ophtasiloxane.net>, registered with IHS Telekom, Inc.
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 Forum electronically on January 22, 2015; the Forum received payment on January 22, 2015. The Complaint was submitted in both English and Turkish.
On Jan 26, 2015, IHS Telekom, Inc. confirmed by e-mail to the Forum that the <ophtasiloxane.net> domain name is registered with IHS Telekom, Inc. and that Respondent is the current registrant of the name. IHS Telekom, Inc. has verified that Respondent is bound by the IHS Telekom, 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 January 29, 2015, the Forum served the Turkish language Complaint and all Annexes, including a Turkish language Written Notice of the Complaint, setting a deadline of February 18, 2015 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@ophtasiloxane.net. Also on January 29, 2015, the Turkish 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 Forum transmitted to the parties a Notification of Respondent Default.
On February 25, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Pursuant to Rule 11(a), the Panel determines the language requirement has been satisfied through the Turkish language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Novartis is one of the largest pharmaceutical companies in the world and operates through various divisions, including Alcon which is one of the world’s largest eye care companies. One of the products manufactured by Alcon is an ophthalmic solution marketed under the name OPHTASILOXANE, which has been in use for almost forty (40) years. This product is sold primarily in France and the product has not yet been approved for sale in Turkey. The OPHTASILOXANE trademark is registered in France which is also the basis for an International Registration that issued on May 13, 1975 and these registrations are in full force and effect. Thus, Complainant has well established trademark rights that predate the registration of the disputed domain name which occurred on December 11, 2014.
ICANN Rule 3(b)(viii).
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
A. CONFUSINGLY SIMILAR DOMAIN NAME (ICANN Rule 3(b)(ix)(1) and ICANN Policy ¶4(a)(i)):
The disputed domain name, <ophtasiloxane.net>, is identical or confusingly similar to Complainant’s registered OPHTASILOXANE trademark. In fact, the disputed domain name incorporates the trademark in its entirety and merely adds the second most common gTLD, “.net.”
The addition of a common gTLD to the Complainant’s trademark is not sufficient to distinguish the disputed domain name and Complainant’s mark. See Id.; Alcon, Inc. and Alcon Laboratories, Inc. v. Dicel GmbH, FA 1302569 (Nat. Arb. Forum, Mar. 1, 2010)(finding that the addition of a gTLD to Complainant’s mark in the domain name is a violation of the Policy ¶4(a)(i)); Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis); 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 . . . does not serve to adequately distinguish the Domain Name from the mark.”), and Abbott Labs v. Whois Svc., FA0903001254682 (Nat. Arb. Forum May 14, 2009)(“the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark”).
For the reasons stated above, it is evident that the disputed domain name is identical or confusingly similar to Complainant’s OPHTASILOXANE trademark.
B. NO RIGHTS OR LEGITIMATE INTERESTS IN DOMAIN NAME (ICANN Rule 3(b)(ix)(2) and ICANN Policy ¶4(a)(ii):
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by Complainant’s OPHTASILOXANE mark, nor has Respondent used the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use.
According to WHOIS, Respondent is known as savas balta. Respondent is not commonly known by Complainant’s OPHTASILOXANE, nor is Respondent affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant’s OPHTASILOXANE trademark and Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (finding no rights or legitimate interests where there was nothing in the record to indicate that Respondent was commonly known by the domain name); and Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶4(c)(ii) does not apply).
The landing page for <ophtasiloxane.net> prominently displays Complainant’s OPHTASILOXANE registered trademark. The page also offers what purports to be Complainant’s OPHTASILOXANE product. The landing page generates warning messages that beckon the user to download video software from <downloadsetup.net>, a website that has no connection to Complainant. Also, Respondent’s web site generates malware/malicious site warnings.
Respondent is using the disputed domain name to market and sell what purports to be Complainant’s OPHTASILOXANE product which makes it appear to be a legitimate site when it is not. The use of a domain name that is identical to Complainant’s OPHTASILOXANE trademark to attract computer users to Respondent’s own site is not 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 of the domain name pursuant to Policy ¶4(c)(iii). See Fossil, Inc. v. Galina Vilyus, FA969285 (Nat. Arb. Forum, May 29, 2007)(finding that the use of <fossil-watches.info> for a site that had links to watches produced by Complainant and its competitors was not 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); Fossil, Inc. v. cheng gong, FA 1458182 (Nat. Arb. Forum, October 2, 2012)(finding that Respondent’s efforts to use the FOSSIL mark to divert customers for Respondent’s own commercial gain was not 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); see also U.S. Franchise Sys. Inc. v. Howell, FA 152457 (Nat. Arb. Forum, May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding the mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services); Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum, January 7, 2002) (finding no bona fide offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website).
Furthermore, using a domain that is confusingly similar to Complainant’s OPHTASILOXANE trademark to deliver malware or adware is not a legitimate use. See Google Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum Sep 23, 2010) (“Respondent’s failure to make an active use of the disputed domain names except for the purpose of downloading malicious computer software is not a use in connection with a bona fide offering of goods and services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii)”); Dell v. tawnya grilth c/o dellpc.us, FA 1400620 (Nat. Arb. Forum Sept. 1, 2011) (finding that use of the disputed domain name to offer downloads of software that contain malware is not a bona fide offering of goods or services under Policy ¶4(c)(ii) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(iv)); and Grappone TS, Inc. v. Zhu, FA 1424557 (Nat. Arb. Forum, Feb. 29, 2012) (finding that use of a disputed domain name to host a website that contains viruses is not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(iii)).
Furthermore, Respondent’s use of a domain name that is confusingly similar to Complainant’s OPHTASILOXANE trademark to attract consumers to unrelated downloads or offers is not 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 of the domain name pursuant to Policy ¶4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum, Jan. 7, 2002) (finding no bona fide offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website); and Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (no rights or legitimate interest found where respondent did not apply for permission or license from complainant to use mark, nor was respondent commonly known by the mark).
For the above reasons, the Respondent has no rights or legitimate interests in the disputed domain name.
C. REGISTRATION AND USE IN BAD FAITH (ICANN Rule 3(b)(ix)(3) and ICANN Policy 4(a)(iii)):
Respondent registered the disputed domain name in bad faith.
At the time that Respondent registered the disputed domain name, Complainant’s OPHTASILOXANE mark was familiar to many consumers. It is clear from the disputed domain name alone that Respondent registered the disputed domain name with knowledge of Complainant’s rights, and intended to create an association with Complainant and its products. Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”). This is not the first time that the Respondent has registered a URL containing only Complainant’s trademark. Novartis AG v. balta, FA 1588714 (Nat. Arb. Forum, Dec 23, 2014) (finding the similar URL <ophtasiloxane.com> registered by Respondent to be confusingly similar to Complainant’s mark). In fact, Respondent registered the disputed domain name AFTER the prior UDRP case against him commenced.
Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); Microsoft Corp. v. Cedric Thompson, D2004-1097 (WIPO, April 14, 2005)(“It is thus inconceivable to the Panel that [Respondent] is not familiar with the Complainant’s ubiquitous MICROSOFT computer products or that his placement of that trademark in the disputed domain name is coincidental”); Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); Yahoo!, Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000)(finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); and Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000)(finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the name in bad faith).
Additionally, by depicting Complainant’s OPHTASILOXANE products prominently on the web site, Respondent’s web site gives the false impression of an affiliation with Complainant, making it clear that Respondent has sought to benefit commercially from Complainant’s well-established goodwill. This is precisely the sort of conduct that falls under the Policy and thus evidences Respondent’s bad faith registration and use of the disputed domain name. See Fossil, Inc. v. cheng gong, FA 1458182 (Nat. Arb. Forum, October 2, 2012)(finding bad faith where Respondent misrepresented itself as Complainant with the use of references to “Fossil Outlet”); Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under [UDRP] ¶4(c)(i) and it is not a legitimate noncommercial or fair use under [UDRP] ¶4(c)(iii).”); Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant).
Furthermore, by using Complainant’s OPHTASILOXANE mark to promote Respondent’s downloads, Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s trademark, and this conduct of diversion shows bad faith registration and use pursuant to Policy ¶4(b)(iv). See V Secret Catalogue, Inc. v. Bryant Little, FA 301728 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶4(b)(iv)”). See also Microsoft Corp. v. Lafont, FA1009001349611 (Nov. 9, 2009) (“intentional appropriation of Complainant’s mark to mislead Internet users and subsequently profit from them reveals bad faith registration and use under Policy ¶4(b)(iv)”); G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) where the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); and Crocs, Inc. v. Chustz, FA0706001002536 (Nat. Arb. Forum July 24, 2007) (finding bad faith where Respondent’s use of Complainant’s mark in its domain was “capitalizing on the illusion of direct affiliation with Complainant’s business and goodwill”).
Moreover, Respondent’s distribution of malware using the disputed domain is further evidence of bad faith use and registration under the Policy. See Google Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum Sept. 23, 2010) (finding bad faith registration and use of a contested domain name under Policy ¶4(b)(iv) where the domain name resolved to a website that distributed malware); Microsoft Corp. v. ABK et al., FA1211001473573 (Nat. Arb. Forum Jan 21, 2013)(“Respondent is also disrupting Complainant’s business by causing the public to associate Complainant’s [sic] with Respondent’s malware warnings, potentially malicious download links, and survey/offer schemes that contain no privacy policies and lack reliable contact information”); Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (use of the disputed domain name for fraudulent purposes constituted bad faith); and Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use where it fraudulently attempted to acquire the personal and financial information of Internet users through the use of a domain name confusingly similar to a competing mark).
Furthermore, Respondent has been previously found to have acted in bad faith in a related adverse UDRP decision. See Novartis AG v. balta, FA 1588714 (Nat. Arb. Forum, Dec 23, 2014). This evidences a pattern of conduct and is further evidence of bad faith. See Provide Commerce, Inc. v. Jardimar Holdings Corp / Charingola, FA 1502077 (Nat. Arb. Forum June 27, 2013)(“the existence of previous UDRP decisions where Respondent was found to have registered a domain name in bad faith reveals Respondent’s pattern of cybersquatting behavior”); Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had adverse decisions against it in previous UDRP proceedings, which established a pattern of cyber-squatting); and Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”).
Respondent appears to be selling eye drops under Complainant’s trademarks in a country where the product has not yet been approved for sale. This fact combined with Complainant’s inability to determine if the products being offered for sale are genuine makes the potential damage to Complainant and its trademark undeniable.
Based on the foregoing, Respondent has registered the disputed domain name in bad faith.
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 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 is one of the largest pharmaceutical companies in the world. Complainant manufactures and markets OPHTASILOXANE, an ophthalmic solution. Complainant registered the OPHTASILOXANE trademark in France (Reg. No. 415,111, registered May 13, 1975) and is the basis for an International Registration. This registration sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶4(a)(i), even though the mark is registered in France and Respondent is located in Turkey. At this stage of the proceedings, it is only necessary for Complainant to show it has SOME rights, not that Complainant’s rights are superior to Respondent’s rights. See Nat’l Westminster Bank plc v. Paulo, FA 1306518 (Nat. Arb. Forum Mar. 19, 2010) (holding that a trademark registration with France’s national trademark authority established the complainant’s rights in the mark under Policy ¶4(a)(i)); Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
The <ophtasiloxane.net> domain name is identical to the OPHTASILOXANE mark, except the domain name adds the gTLD “.net” to the fully incorporated mark. Prior panel decision are very clear the gTLD (or ccTLD, as the case may be) shall be disregarded for the purposes of a Policy ¶4(a)(i) analysis. The <ophtasiloxane.net> domain name is confusingly similar to the OPHTASILOXANE mark because it entirely incorporates Complainant’s mark. See Reebok Int’l Ltd. v. Ohno, FA 511463 (Nat. Arb. Forum Aug. 23, 2005) (holding that the <reebok.net> domain name was identical to the complainant’s REEBOK mark because it fully incorporates the mark and merely adds a generic top-level domain).
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 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.”).
Complainant claims Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known as OPHTASILOXANE, nor affiliated with Complainant under Policy ¶4(c)(ii). Respondent has failed to submit a Response rebutting these allegations. Respondent’s name, according to the WHOIS record, is “savas balta”. There is no obvious relationship between Respondent’s name and the domain name. Based on the available evidence, there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s use of the domain name similarly demonstrates a lack of rights in the domain name. The disputed domain name resolves to display the OPHTASILOXANE mark and purports to offer Complainant’s OPHTASILOXANE product for sale. Respondent’s use of the disputed domain name diverts Internet users to Respondent’s own site allegedly offering Complainant’s products. Respondent’s site also downloads malicious software, which is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use pursuant to Policy ¶¶4(c)(i) or (iii), respectively. See G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from the complainant does not constitute a bona fide offering of goods or services under Policy ¶4(c)(i)).
The resolving page generates messages prompting users to download video software. When a user with virus protection software does that, the user is warned of concealed malware. Using a domain name to covertly download malware does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name under Policy ¶4(a)(ii). See Hilton Hotels Corp. v. Padonack, FA 1043687 (Nat. Arb. Forum Sept. 6, 2007) (holding that the use of a disputed domain name to host a website that attempted to download a virus when accessed did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has a history of bad faith as demonstrated by a prior adverse UDRP decision. Specifically, Complainant directs the Panel to Novartis AG v. savas balta, FA 1588714 (Nat. Arb. Forum Dec. 23, 2014) and claims that case (when read in tandem with the facts of this case) proves bad faith registration and use under Policy ¶4(b)(ii). Respectfully, this Panel disagrees. Policy ¶4(b)(ii) provides bad faith may be found if a respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided the respondent has engaged in a pattern of such conduct [emphasis added]. Complainant has not claimed it is prevented from reflecting its mark in a domain name and this Panel is loathe to supply proof for a sophisticated party. Therefore, bad faith will not be found on these grounds.
Complainant claims Respondent is using the disputed domain name to market and sell what purports to be Complainant’s products (Complainant stopped short of saying these were counterfeit products). In doing so, Respondent has given the false impression the domain name and resolving content are affiliated with Complainant. Respondent seeks to commercially benefit from this confusion in violation of Policy ¶4(b)(iv) via the promoted downloads and sale of eye drops. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Respondent’s efforts to market products under Complainant’s guise falls within the conduct proscribed by Policy ¶4(b)(iv).
Complainant claims distributing software which surreptitiously contains malware is adequate proof of Respondent’s bad faith registration and use of the domain name. Respondent’s use of the disputed domain name to surreptitiously download malware is adequate proof of Respondent’s bad faith registration and use of the disputed domain name. See Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶4(b)(iv)).
In light of the contents of the web site, Respondent registered the disputed domain name with full knowledge of Complainant and its trademark rights, which constitutes bad faith registration pursuant to Policy ¶4(a)(iii). 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); Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Respondent is clearly a competitor because it purports to sell Complainant’s product.
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 <ophtasiloxane.net> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, March 12, 2015
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