WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novartis AG v. WhoisGuard, Inc. and Adam Strongbow
Case No. DME2014-0002
1. The Parties
The Complainant is Novartis AG of Basel, Switzerland, represented by Cabinet Pavlovic, Belgium.
The Respondents are WhoisGuard, Inc. of Panama and Adam Strongbow of Boston, Massachusetts, United States of America.
2. The Domain Name and Registrar
The disputed domain name <dailies.me> (the “Domain Name”) is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2014. On the say day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 13, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 21, 2014 providing the registrant and contact information disclosed by the Registrar and invited the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 27, 2014.
The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”) as adopted by doMEn, d.o.o. (doMEn), the registry operator of the .ME TLD on April 30, 2008, the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) approved by doMEn on October 1, 2012, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 28, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 20, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 21, 2014.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on March 27, 2014. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant owns inter alia the international registration no. 633098 for the trademark DAILIES with priority from January 10, 1995. The international registration designates also Montenegro and cover the goods “soft contact lenses”.
The Domain Name was registered on October 18, 2012.
5. Parties’ Contentions
The trademark DAILIES has been used for contact lenses by Alcon, a division of the Complainant. The mark has been used in Europe since the 1990s. The mark has moreover been registered around the world, and the Complainant also owns and operates the website at “www.dailies.com”.
The Complainant has not authorized the Respondent to use the trademark DAILIES and the Respondent is not affiliated with the Complainant. The Respondent is not commonly known by the Domain Name and therefore lacks rights or legitimate interests to the Domain Name.
The Domain Name resolves to a pay-per-click or a parking site containing links to other websites offering contact lenses by the Complainant’s competitors. The Respondent therefore intentionally attempts to attract Internet users to the Respondent’s website by creating confusion with the Complainant’s trademark.
The Respondent did not submit a response.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Domain Name is identical to the Complainant’s trademark DAILIES and the Complainant has demonstrated that it has rights in that trademark as provided for in the Policy.
B. Rights or Legitimate Interests
The consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the Respondent to come forward with evidence of a right or legitimate interest in Domain Name, once the Complainant has made a prima facie showing indicating the absence of such rights or interests. See, e.g. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant has contended that the Respondent is not known by the Domain Name, it is not an authorized reseller of the Complainant’s goods and that the Complainant has not authorized the Respondent to use the Domain Name or its trademarks.
The Respondent has not contested these contentions. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
It is unlikely that the Respondent was not aware of the Complainant’s trademark when registering the Domain Name. This assumption is supported by the fact that the website to which the disputed domain resolves, displays links to websites offering products competing with those of the Complainant, in other words contact lenses.
The Panel also notes that the Domain Name resolves to a so called pay-per-click site, where links to third-party websites are provided. This means that the Respondent is generating revenue with the Domain Name, which also has been established as evidence that the Domain Name has been registered and is being used in bad faith. See Asian World Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
The Respondent’s use of the Domain Name also means that it has used the Domain Name to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark, as indicated in paragraph 4(b)(iv) of the Policy.
The Panel finds that the Domain Name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <dailies.me> be transferred to the Complainant.
Date: April 10, 2014