WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Align Technology, Inc. v. Web Services Pty
Case No. D2008-0298
1. The Parties
The Complainant is Align Technology, Inc., United States of America, represented by Melbourne IT CBS Ltd.
The Respondent is Web Services Pty, India.
2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2008 by email, and on March 19, 2008, in hardcopy. On February 29, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the domain name at issue. On the same day, GoD, Inc. transmitted its verification response to the Center by email, confirming that the Respondent is listed as the Registrant and providing the contact details.
On March 3, 2008, the Center sent an email to the Complainant and its representative, acknowledging the receipt of the Complaint.
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 the Respondent of the Complaint, and the proceedings commenced on April 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for the Response was May 20, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on May 21, 2008.
The Center appointed the undersigned as the sole panelist in this matter on May 28, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence on May 26, 2008, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is Align Technology, Inc., a company in the sector of healthcare, which was incorporated in Delaware, United States of America, in 1997. The Complainant is listed on the NASDAQ.
The Complainant contends that it registered the trademark INVISALIGN after the incorporation of its company and that it has registered INVISALIGN trademarks worldwide. Annex 4 to the Complaint contains a list of the trademark registrations. According to this list, INVISALIGN trademarks have been registered in a number of countries before the date of registration of the domain name.
The Respondent registered the disputed domain name on March 22, 2006.
5. Parties' Contentions
A. Complainant
Identical or confusingly similar
The Complainant contends that it is a well-known company in the sector of healthcare. It states that the trademark INVISALIGN is a well-known trademark, which has been registered in many countries. It also points out that a Google search for “Invisalign” results in 1,870,000 hits and that the first results are only related to the Complainant.
The Complainant asserts that the disputed domain name is confusingly similar to the INVISALIGN trademark. It points out that the disputed domain name consists of the Complainant’s trademark INVISALIGN plus an “s” at the end.
The Complainant states that it recovered the domain from a third party in 2007 and that it has recovered (the Complainant misspelled this as ) and through UDRP processes.
Rights or legitimate interest of the Respondent
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, since the Respondent is not known to have registered any trademarks containing the terms “align” or “invisalign” and is not a licensee or authorized person for Align Technology, Inc. either.
The Complainant states that the term “invisalign” does not have any other meaning but the method of orthodontic therapy to straighten the teeth in an “invisible” way.
Furthermore, the Complainant points out that the domain name is parked in the page of the Registrar, of which it provides a screenshot (annex 5 to the Complaint).
Registration and use in bad faith by the Respondent
The Complainant asserts that the Respondent is using the disputed domain name to attract traffic and gain revenue through the PPC (“pay per click”) system. It mentions that the domain name was registered in 2006, long after the trademark INVISALIGN was registered. Furthermore, it asserts that the Respondent owns more than 3,000 other domain names, including typographical errors of well-known trademarks. The Complainant also refers to two other UDRP cases involving famous trademarks, which the Respondent lost. These factors, according to the Complainant, clearly indicate bad faith of the Respondent.
Based on the foregoing, the Complainant requests that the disputed domain name be transferred to the Complainant.
B. Respondent
The Respondent did not file a Response.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has rights in the trademark INVISALIGN registered throughout several countries in the world. The Complainant states that the term “Invisalign” does not have any other meaning but the method of orthodontic therapy to straighten the teeth in an “invisible” way. The Panel understands this to mean that INVISALIGN is a combination of the words “invisible” and “align” which constitutes a distinctive mark (more that the sum of the parts).
Since the domain name only differs one letter (“s”) from the INVISALIGN trademarks (the “.com” suffix not being relevant for the comparison), the Panel finds the domain name to be confusingly similar to the trademark.
B. Rights or Legitimate Interests
The Panel is of the opinion that the Respondent does not have any rights or legitimate interests in the disputed domain name. The mark INVISALIGN is not a generic word and the Complainant has not given the Respondent permission to register the domain name. There is also no evidence that the Respondent has any rights or legitimate interests in the name INVISALIGN in any other way.
The domain name is apparently connected to a “landing page”, which provides links to various commercial websites of third parties. As such, there is no legitimate noncommercial or fair use of the domain name without intent for commercial gain (see, e.g., F. Hoffmann La Roche AG v. Domain Admin/ Aditya Roshni/ Web Services Pty,WIPO Case No. D2007-1595 and the cases cited therein; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141). In addition, the Panel notes that there is no evidence that the Respondent was commonly known by the disputed domain name before it registered the domain name.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
It is likely that the Respondent was aware of the INVISALIGN trademarks at the time of registration of the domain name, since the Complainant operates on the NASDAQ since 2001 and is a well-known company in healthcare, as evidenced by the Google search results and two WIPO decisions referred to by the Complainant (Align Technology, Inc. v. LaPorte Holdings,WIPO Case No. D2005-1317 and Align Technology, Inc. v. Trademark,WIPO Case No. D2005-1316 [the last case number was miswritten by the Complainant]). Furthermore, the INVISALIGN trademarks had been registered in at least 20 countries over the world at the time the domain name was registered. Finally, as stated above, “Invisalign” is not a generic term, but a fictitious name. Therefore, it is highly unlikely that the Respondent chose the disputed domain name without knowledge of the INVISALIGN trademarks.
The Panel is of the opinion that the Respondent has registered and is using the domain name to trade off the goodwill of the INVISALIGN trademarks by connecting the domain name to a landing page and generating income through the pay per click method (see F. Hoffmann La Roche AG supra).
The Panel finds that by this use of the disputed domain name, the Respondent intentionally attempts to attract, for commercial gain, Internet users to its website or another on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. In finding bad faith, the Panel has also taken into consideration that the Respondent apparently has registered many other domain names, including domain names which, according to previous panels, infringed on the rights of third parties in famous trademarks (see F. Hoffmann La Roche AG supra and Newmont Mining Corporation v. Web Services Pty c/o Aditya Roshni, NAF Case No. FA0711001106525).
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 name be transferred to the Complainant.
Wolter Wefers Bettink
Sole Panelist
Dated: June 11, 2008
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