WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Align Technology, Inc. v. Doug Wright

Case No. D2008-0300

 

1. The Parties

Complainant is Align Technology, Inc., of Santa Clara, California, United States of America, represented by Melbourne IT CBS Ltd., United Kingdom of Great Britain and Northern Ireland.

Respondent is Doug Wright, of Rockville, Maryland, United States of America, appearing pro se.

 

2. The Domain Names and Registrar

The disputed domain names <askaninvisalignexpert.com>, <asktheinvisalignexpert.com>, <bethesdainvisalign.com>, <bethesdainvisalignhome.com>, <bethesdainvisalign.net>, <bethesdainvisalignonline.com>, <invisalignbethesda.com>, <invisalignexpert.com>, <invisalignrockvillecenter.com>, <invisalignrockville.com>, <northbethesdainvisalign.com>, <officialbethesdainvisalign.com>, <rockvilleinvisalign.com>, and <theinvisalignexpert.com> are registered with GoDaddy.com, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2008. On February 29, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain names at issue. On February 29, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2008. The Response was filed with the Center on May 1, 2008.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on May 8, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

Complainant has registered the terms “INVISALIGN” and “ALIGN” on the Principal Register of the United States of America (“United States”) Patent and Trademark Office (“USPTO”), for the word trademark INVISALIGN, registration number 2409473, dated November 28, 2000, in international class (“IC”) 10, covering “dental apparatus, namely plastic orthodontic appliance”, and; for the word service mark ALIGN, registration number 3181043, dated December 5, 2006, in IC 41, covering “training in the use of orthodontic appliances”.1 Complainant asserts additional registrations of INVISALIGN and ALIGN in the United States and foreign countries. (Complaint, Annex 4)

Complainant indicates that it is a supplier of dental products with its shares listed on the NASDAQ securities market in the United States. Complainant was incorporated in Delaware, United States of America, in 1997. Complainant asserts use of the INVISALIGN and ALIGN trademarks commencing in 2000 and 1999 respectively. Complainant has prevailed in two earlier proceedings under the Policy against third parties engaged in the practice commonly referred to as “typo-squatting” (see Align Technology, Inc. v. Trademark, WIPO Case No. D2005-1316, and; Align Technology, Inc. v. LaPorte Holdings, WIPO Case No. D2005-1317). Panel decisions from those earlier proceedings provide detail concerning the business of Complainant that has not been provided by Complainant in the instant proceeding. Before this Panel, Respondent has provided substantially more information concerning the business of Complainant than has Complainant. Nonetheless, information is before the Panel, even if supplied by Respondent.

Complainant manufactures and supplies orthodontic appliances under the INVISALIGN mark for use by dentists in the treatment of patients. Complainant also operates training programs for dentists under the ALIGN mark. It certifies that those successfully completing the program are trained in the use of its INVISALIGN orthodontic appliances. Dentists proposing to use Complainant’s orthodontic appliances on patients place orders on a case-by-case basis. Complainant’s appliances are fitted for the individual patient. Complainant does not participate in the installation of its branded appliances. Counseling, installation and maintenance services are performed by professional dentists who are licensed to practice in their respective jurisdictions. (Response, including Annexes E-L)

According to the Registrar’s verification, Respondent Doug Wright is the registrant of the 14 domain names disputed by Complainant in this proceeding, i.e., <askaninvisalignexpert.com>, <asktheinvisalignexpert.com>, <bethesdainvisalign.com>, <bethesdainvisalignhome.com>, <bethesdainvisalign.net>, <bethesdainvisalignonline.com>, <invisalignbethesda.com>, <invisalignexpert.com>, <invisalignrockvillecenter.com>, <invisalignrockville.com>, <northbethesdainvisalign.com>, <officialbethesdainvisalign.com>, <rockvilleinvisalign.com>, and <theinvisalignexpert.com>. According to the Registrar, the record of registration for each disputed domain name was created on June 15, 2006. Respondent Doug Wright has provided evidence in the form of a corporate credit card used to register the disputed domain names that he acted on behalf of a dental office (operating under the name “All Smiles Dentistry”) located in North Bethesda/Rockville, Maryland. “All Smiles Dentistry” may be the beneficial owner of the disputed domain names. However, registration of the disputed domain names is in the name of Doug Wright, without further listing of an affiliation. Transfer of the disputed domain names will require naming the registrant, Doug Wright, and he remains the named Respondent.

Respondent manages the office of Mary M. Ziomek DDS, a dentist licensed to practice in the state of Maryland. Dr. Ziomek operates her practice in North Bethesda/Rockville under the trade name “All Smiles Dentistry”, as well as under her own name (Response, Annex D). On June 2-3, 2006, Dr. Ziomek successfully undertook and completed a two-day Invisalign Certification Course operated by Align Technologies (Response, Annex F). This certification qualified Dr. Ziomek to offer treatment to patients with Complainant’s appliances, and gives her access to a password-protected website maintained by Complainant that facilitates ordering products for patients, receiving updated information, and so forth (id., Annex H). However, the Invisalign certification does not establish a dental specialty recognized by any public regulatory body (id). Complainant also offers recommendations and marketing text to its certified practitioners regarding promotion of the Invisalign product and technology. (id., e.g., Annex Q)

Complainant has established an Internet information website available for public viewing at “www.invisalign.com”. Complainant authorizes its certified practitioners to link their individual dental practice webpages to Complainant’s website. Complainant’s website allows visitors to identify local “Invisalign doctors” by ZIP code. Respondent has provided Google search results using the term INVISALIGN in combination with geographic terms. The results show many dentist websites offering Invisalign treatment. (Id., Annexes O & U) Other than for the publicly accessible website operated by Complainant, there are no websites addressed by domain names that incorporate the term INVISALIGN. (There are several references to internal webpages identified by the term INVISALIGN, but these are not domain names.)

According to Respondent, prior to “locking” of the disputed domain names by the Registrar, each of those domain names redirected Internet users to Respondent’s individual website at “www.clearbracesrockville.com”. Respondent says that subsequent to the locking on January 28, 2008, redirection to its website was replaced with a Registrar parking page. (Respondent indicates that Complainant missed one domain name incorporating its trademark, <invisalignrockvilledental.com>, which it states is still used to redirect to its “www.clearbracesrockville.com” website.) Printouts as of late February 2008 of the homepages addressed by the disputed domain names (furnished by Complainant and the Center) show Registrar parking pages.

The Registration Agreement in effect between Respondent and GoDaddy.com, Inc. subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

 

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has rights in the trademarks ALIGN and INVISALIGN in the United States and foreign countries, as evidenced by various trademark registrations and use in commerce, and that the disputed domain names are identical and/or confusingly similar to its trademarks.

Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain names because Respondent has not registered trademarks containing “align” or “invisalign”, because Respondent has not been licensed or authorized to use Complainant’s trademarks and because Respondent has merely parked the disputed domain names.

Complainant alleges that Respondent registered and used the disputed domain names in bad faith because Complainant’s marks were registered prior to Respondent’s registration of the disputed domain names, because Respondent is disrupting the business of Complainant “by misleading the customers with a domain name that involves a service they cannot provide since they are not a Complainant’s licensee”, and because Complainant may not use its trademark as a domain name in the geographic areas to which Respondent has associated the disputed domain names.

Complainant requests the Panel to direct the Registrar to transfer the disputed domain names to Complainant.

B. Respondent

Respondent alleges that Complainant is prohibited by law from providing dental services. Provision of such services is reserved to professional dentists. Internet users typing Complainant’s INVISALIGN trademark in a browser are not looking for Complainant, since Internet users are looking for dental services, not dental appliances as such. Respondent argues that Internet users typing Complainant’s trademark into a browser are not confused by finding Dr. Ziomek’s dental practice, particularly in cases where Complainant’s trademark is combined with a geographic term denoting Dr. Ziomek’s practice area (in a disputed domain name). Complainant would be acting illegally if it implied that it could offer expert dental services.

Other dental professionals than Respondent also use the term INVISALIGN on their websites in connection with their dental practices. Google searches identify those practices through use of the INVISALIGN trademark. Therefore, Internet users are not confused when the disputed domain names using Complainant’s trademark take them to Respondent’s website.

Respondent has rights or legitimate interests in the disputed domain names because Complainant encourages Certified Invisalign practices to use Complainant’s trademark in their external marketing. “It is therefore abundantly clear”, according to Respondent, “that Dr. Ziomek (and her competitors who choose to use Invisalign) are not only authorized, but that Complainant’s business model requires them, to use the Invisalign trademark in promoting their practice to people in their location.”

Respondent says it used the disputed domain names legitimately for the purpose of redirecting Internet users to Dr. Ziomek’s dental practice up until a “secret, anonymous, and mysterious cyber attack on January 28, 2008, that effectively, immediately, and irrevocably stripped all of the disputed domains of all the Privacy protection we had paid for. Moreover, Complainant somehow avoided leaving any tracks, preventing our registrar from being able to provide any meaningful explanation about how or why this was happening”. According to Respondent, Complainant should have sent an e-mail to Respondent instead.

Respondent cannot be disrupting the business of a competitor because it is not in competition with Complainant. Complainant is a manufacturer. Respondent is a service provider. They are not in competition, but instead Complainant depends upon Respondent. Similarly, Respondent cannot be preventing Complainant from doing business in its geographic area because Complainant is prohibited by law from providing dental services in its geographic area.

By combining keywords and domain names incorporating Complainant’s trademark, Respondent is able to build traffic to its website. This promotes Complainant’s products and is in Complainant’s interest. Therefore, Complainant should be encouraging Respondent to use its trademark, not trying to hijack its domain names.

Respondent requests the Panel to reject Complainant’s request to order a transfer of the disputed domain names.

 

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

Respondent received notice of the Complaint and commencement of the administrative proceeding from the Center and filed its Response in a timely manner. Respondent received adequate notice of these proceedings and had reasonable opportunity to respond.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the domain name; and

(iii) respondent’s domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant has established a presumption of rights in the trademark INVISALIGN and the service mark ALIGN based on use in commerce and as evidenced by registration at the USPTO (see Factual Background, supra). Respondent has not challenged the validity of the INVISALIGN mark in so far as it is used in connection with the sale of manufactured dental appliances, nor the ALIGN service mark in so far as it is used in connection with providing training services for dentists. Based upon the presumption established by registration at the USPTO and Respondent’s failure to overcome that presumption, the Panel finds that Complainant has rights in the trademark INVISALIGN and the service mark ALIGN.

Respondent contends that the 14 disputed domain names are not identical or confusingly similar to the trademark and/or service mark in which Complainant has rights. Those disputed domain names are: <askaninvisalignexpert.com>, <asktheinvisalignexpert.com>, <bethesdainvisalign.com>, <bethesdainvisalignhome.com>, <bethesdainvisalign.net>, <bethesdainvisalignonline.com>, <invisalignbethesda.com>, <invisalignexpert.com>, <invisalignrockvillecenter.com>, <invisalignrockville.com>, <northbethesdainvisalign.com>, <officialbethesdainvisalign.com>, <rockvilleinvisalign.com>, and <theinvisalignexpert.com>.

Complainant’s INVISALIGN trademark incorporates its ALIGN service mark. The INVISALIGN trademark is substantially more distinctive than the ALIGN service mark, the latter being descriptive with secondary meaning at best. Each disputed domain name incorporates Complainant’s INVISALIGN trademark that was registered in the United States substantially prior to the ALIGN service mark. The Panel will use the INVISALIGN trademark for purposes of comparison with the disputed domain names, except as may otherwise be necessary.

INVISALIGN is presumably a contraction and combination of the terms “invisible” and “align” which would, without contraction of “invisible”, suggest or describe an orthodontic brace device used to straighten teeth without being cosmetically noticeable. Whether these terms would be descriptive (and require secondary meaning) if used without contraction need not be addressed because INVISALIGN is formed with “invis”. INVISALIGN is suggestive and inherently distinctive. The mark uniquely identifies Complainant’s orthodontic appliance.

Each of the disputed domain names fully incorporates Complainant’s INVISALIGN trademark. Six of the disputed domain names (i.e., <bethesdainvisalign.com>, <bethesdainvisalign.net>, <invisalignbethesda.com>, <invisalignrockville.com>, <northbethesdainvisalign.com>, <rockvilleinvisalign.com>) merely add a geographic term to the trademark, signifying a location where the trademarked devices may be acquired. These geographic terms do not distinguish the INVISALIGN trademark from the six disputed domain names such as to avoid a finding of confusing similarity. The fact that individual dental patients may acquire the trademarked product only indirectly through dentists, and not directly from the manufacturer, is of modest import to the issue of confusing similarity in this context. The trademark owner has the right to control the first sale of its product, including the right to determine the identity of its distributor(s) for particular geographic locations.

Four of the disputed domain names (i.e., <askaninvisalignexpert.com>, <asktheinvisalignexpert.com>, <invisalignexpert.com> and <theinvisalignexpert.com>) incorporate the term “expert” along with “ask”, “ask the” and “the”. Combination of the term “expert” with Complainant’s INVISALIGN trademark suggests sponsorship, affiliation or endorsement by Complainant, and does not distinguish Complainant’s distinctive trademark from the disputed domain names. The owner of a trademark may decide how its product is initially marketed, including by providing information regarding service providers who support the product. Complainant operates a website on which it provides information to prospective users of its orthodontic appliances regarding the location of service providers using its registered INVISALIGN trademark. Use by Respondent of these four disputed domain names is confusing as to Complainant’s control over initial distribution of its products.

The remaining four disputed domain names (i.e., <bethesdainvisalignhome.com>, <bethesdainvisalignonline.com>, <invisalignrockvillecenter.com>, <officialbethesdainvisalign.com>) are minor variations on the proceeding themes. Three add location terms (i.e., “center”, “home” and “online”), and the fourth directly suggests sponsorship by the trademark owner (i.e., “official”). These four disputed domain names are confusingly similar to Complainant’s INVISALIGN trademark.

The Panel determines that Complainant holds rights to the trademark INVISALIGN and that the 14 disputed domain names are confusingly similar to that trademark.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))

Respondent must have been aware of Complainant’s INVISALIGN trademark when it registered the disputed domain name because Complainant has consistently provided notice of its trademark registration (i.e., Invisalign ) on materials submitted by Respondent in connection with this proceeding, including on Complainant’s training materials. Respondent has not provided materials suggesting that Complainant authorized the use of its trademark in domain names in connection with individual dental practices. Google search results provided by Respondent fail to show an instance of incorporation of Complainant’s trademark in a domain name other than by Complainant, while there are many individual practices offering to provide Complainant’s products. Complainant expressly authorizes certified INVISALIGN doctors to link their individual practices with its website. The domain name for that website is Complainant’s trademark. On the basis of the foregoing circumstances, Respondent did not register the disputed domain name prior to notice of a dispute or make a bona fide offering of services because (a) Respondent should reasonably have foreseen Complainant’s objection and this dispute, and (b) Respondent’s use of Complainant’s trademark to offer services in the absence of Complainant’s consent under these circumstances is not a bona fide offering of services.

Respondent has not been commonly known by the disputed domain name.

Respondent’s use of the disputed domain name is commercial.

Respondent is not making “fair use” of Complainant’s trademark. Respondent is not using Complainant’s trademark for comparative advertising purposes. Respondent is not using Complainant’s trademark in a fair descriptive sense. Complainant’s trademark is inherently distinctive, and it is not the subject of common descriptive usage. Respondent cannot claim that Complainant has exhausted its trademark rights when it provides its orthodontic appliances to Respondent for use on dental patients. Complainant custom-makes its orthopedic appliances on a patient-by-patient basis on the receipt of an order from its dentist customers. Respondent is not acting as an independent reseller of Complainant’s products, but instead is acting as part of a vertical distribution chain.

Respondent has argued that it has rights and legitimate interests in the disputed domain names because it is acting in Complainant’s best interest by promoting sales of its orthodontic appliances. This misconceives the rights of the owner of a trademark. The trademark owner has the right to control the use of its mark as it places its products into the stream of commerce. Third parties do not have rights to take away that control because they can do a better job marketing the product than the trademark owner, or because they are acting in the trademark owner’s best interest.

Complainant has established that Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of bad faith (Policy, paragraph 4(b)). Among these circumstances are that a respondent “ha[s] registered the domain name primarily for the purpose of disrupting the business of a competitor (id., para. 4(b)(iii)); or by using the domain name, … “[has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location of a product or service on [its] website or location” (id., para. 4(b)(iv)).

Respondent is using the disputed domain names to attract Internet users to the website of an individual dental practitioner. Complainant has a number of authorized suppliers of its products in Respondent’s service area. It does not appear that any of them have been authorized to use Complainant’s trademark in a domain name. By using Complainant’s trademark in its domain names, Respondent gains an advantage over competing dental professionals in its area of service. Such practice is likely to be disruptive of Complainant’s business. Such practice is in bad faith within the meaning of paragraph 4(b)(iii) of the Policy.

Respondent, by registering and using a significant number of domain names incorporating Complainant’s trademark, and by associating that mark with terms such as “expert” and official”, suggests that Complainant has sponsored or endorsed its website, which it has not. Such use of multiple domain names incorporating Complainant’s trademark constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

The Panel determines that Respondent registered and has used the 14 disputed domain names in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <askaninvisalignexpert.com>, <asktheinvisalignexpert.com>, <bethesdainvisalign.com>, <bethesdainvisalignhome.com>, <bethesdainvisalign.net>, <bethesdainvisalignonline.com>, <invisalignbethesda.com>, <invisalignexpert.com>, <invisalignrockvillecenter.com>, <invisalignrockville.com>, <northbethesdainvisalign.com>, <officialbethesdainvisalign.com>, <rockvilleinvisalign.com>, and <theinvisalignexpert.com> be transferred to the Complainant.


Frederick M. Abbott
Sole Panelist

Dated: May 22, 2008


1 Complainant has provided only a listing of trademark application/registration numbers and status for the United States and foreign countries. Complainant has not provided current status reports from the USPTO website or elsewhere. This is incomplete evidence of trademark registration. Respondent did not challenge Complainant’s claims regarding registration. The Panel does not on its own accord reject the Complaint for failure to demonstrate rights in a trademark. The Panel has verified the information regarding the two registrations listed above on the USPTO Trademark Applications and Registrations Retrieval (TARR) database. For purposes of this decision, the Panel does not consider other registrations alleged by Complainant proven.