DECISION

Bausch & Lomb Inc. v. Henry Tsung

Claim Number:  FA0403000247973

PARTIES

Complainant is Bausch & Lomb Inc. (“Complainant”), represented by Kristen Walsh, of Nixon Peabody LLP, Clinton Square, P.O. Box 31051, Rochester, NY 14603.  Respondent is Henry Tsung (“Respondent”), No 2. Alley 4, Lane 177, Swei Rd., Taipei, 356021 Taiwan.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <occuvite.com>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 18, 2004; the Forum received a hard copy of the Complaint on March 22, 2004.

On March 19, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain name <occuvite.com> is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On March 24, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 13, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@occuvite.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On April 21, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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."  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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <occuvite.com> domain name is confusingly similar to Complainant’s OCUVITE mark.

2. Respondent does not have any rights or legitimate interests in the <occuvite.com> domain name.

3. Respondent registered and used the <occuvite.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Bausch and Lomb, is in the business of eye care products. Complainant holds a trademark registration with the United States Patent and Trademark Office for the OCUVITE mark (Reg. No. 1,556,520, issued September 19, 1989).

Complainant has continuously used the OCUVITE mark since 1988 in connection with vitamin and mineral supplements.

Complainant’s main website is located at the <bausch.com> domain name. Complainant has also registered the domain names <ocuvite.com> and <ocuvite.net>, which are linked to OCUVITE product information on the <bausch.com> website.

Respondent registered the <occuvite.com> domain name on December 31, 2003. Respondent is using the domain name to redirect Internet users to a website that contains links to various third-party websites related to office supplies in addition to pop-up advertisements.

DISCUSSION

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."

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.

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.

Identical and/or Confusingly Similar

Complainant has established that it has rights in the OCUVITE mark through registration with the United States Patent and Trademark Office and through the use of its mark in commerce for the last fifteen years. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption.

Respondent’s domain name is confusingly similar to Complainant’s OCUVITE mark because the domain name merely adds the letter “c” to the OCUVITE mark as well as the top-level domain name “.com.” The mere addition of a letter, constituting a misspelling of a mark, as well as the addition of a top-level domain renders Respondent’s domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive; see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) finding that by misspelling words and adding letters to words a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks; see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants".

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in the domain name. Due to Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name. The burden shifts to Respondent to show that it does have rights or legitimate interests once Complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) finding that under certain circumstances the mere assertion by Complainant that Respondent has no rights or legitimates interest is sufficient to shift the burden of proof to Respondent to demonstrate that such rights or legitimate interests do exist; see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name.

Moreover, the Panel may accept all reasonable allegations and inferences in the Complaint as true because Respondent has not submitted a Response. See 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.”); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard.”).

Respondent is using the <occuvite.com> domain name to divert Internet traffic intended for Complainant to a website that offers search services for and links to websites related to office supply products, products completely unrelated to Complainant’s products. Furthermore, Respondent’s website diverts Internet users to a website that features advertisements and pop-up banners and it is likely that Respondent receives monetary compensation for redirecting Internet users to these websites. Respondent’s use of a domain name confusingly similar to Complainant’s OCCUVITE mark to redirect Internet users interested in Complainant’s products to a commercial website that offers search services for and links related to products totally unrelated to Complainant’s products, in addition to advertisements and pop-up banners, is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) finding that Respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to Complainant’s mark, websites where Respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy; see Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) holding that Respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to Complainant and presumably with the purpose of earning a commission or pay-per-click referral fee, did not evidence rights or legitimate interests in the domain name; see also Disney Enterss, Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) finding that Respondent’s diversionary use of Complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names.

Moreover, Respondent has offered no evidence and there is no proof in the record suggesting that Respondent is commonly known by the <occuvite.com> domain name. Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) finding that Respondent does not have rights in a domain name when Respondent is not known by the mark; see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name; see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name nor using the domain name in connection with a legitimate or fair use.

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent has registered the domain name for commercial gain. Respondent’s domain name diverts Internet users wishing to search under Complainant’s OCUVITE mark to Respondent’s commercial website through the use of a domain name confusingly similar to Complainant’s mark. Furthermore, Respondent is unfairly benefiting from the goodwill associated with Complainant’s mark. Respondent’s practice of diversion, motivated by commercial gain, through the use of a confusingly similar domain name evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website; see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website; see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) finding bad faith where Respondent attracted users to a website sponsored by Respondent and created confusion with Complainant’s mark as to the source, sponsorship, or affiliation of that website.

Furthermore, Respondent is engaged in a practice called “typosquatting.” This practice diverts Internet users who misspell Complainant’s mark to a website sponsored by Respondent for Respondent’s commercial gain. Respondent is attempting to divert Internet users intending to search under Complainant’s mark who misspell the OCUVITE mark by typing an additional letter “c.” The practice of “typosquatting” itself evidences bad faith registration and use of a domain name under the UDRP pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith.”); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the “www” portion of a web-address,” evidence that the domain name was registered and used in bad faith; see also Canadian Tire Corp., Ltd. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) holding that “the absence of a dot between the “www” and “canadiantire.com” in the <wwwcanadiantire.com> domain name is likely to confuse Internet users, encourage them to access Respondent’s site” and evidenced bad faith registration and use of the domain name.

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <occuvite.com> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  May 5, 2004

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