WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Align Technology, Inc. v. 100Marketers Case No. D2009-0799 1. The Parties
Complainant is Align Technology, Inc., of Santa Clara, California, United States of America (“United States”), represented by Melbourne IT DBS Inc, of New York, New York, United States.
Respondent is 100Marketers, of Surfside, Florida, United States. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , and (the “Disputed Domain Names”) are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2009. On June 17, 2009, the Center transmitted by e-mail to GoD, Inc. a request for registrar verification in connection with the Disputed Domain Names. On June 17, 2009, GoD, Inc. transmitted by e-mail 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” or “UDRP”), 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 June 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 20, 2009.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on July 22, 2009. 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 states that it “is a well known, publicly traded company in the healthcare sector” and that it “began using the term ALIGN in commerce in the US at least as early as 1999 and registered the INVISALIGN trademark the same year.” Complainant further states that it “has registered the trademarks ‘ALIGN' and ‘INVISALIGN' worldwide”; in support thereof, Complainant provided copies of trademark certificates of registration in the United States (including U.S. Reg. No. 3,418,121 for the mark INVISALIGN for use in connection with “custom manufacture of orthodontic appliances, dental laboratory services,” first used in commerce on September 2, 1999; and U.S. Reg. No. 2,409,473 for the mark INVISALIGN for use in connection with “dental apparatus, namely plastic orthodontic appliance,” first used in commerce on September 2, 1999; U.S. Reg. Nos. 3,060,471 for the mark INVISALIGN for use in connection with “Computer software, namely digital imaging software used to depict tooth movement and proposed treatment plan; computer software used to provide, track and modify proposed courses of orthodontic treatment and patient data and information related thereto,” first used in commerce on February 22, 1999); Mexico; and Europe. These registrations are referred to hereafter as the “INVISALIGN Trademark.”
Each of the Disputed Domain Names was registered on or between December 21, 2006, and October 23, 2008. 5. Parties' Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- Each of the Disputed Domain Names is confusingly similar to the INVISALIGN Trademark because each of the Disputed Domain Names contains the INVISALIGN Trademark “plus the name of a territory where Complainant has registered its trademarks,” which reinforces rather than differentiates the confusing similarity.
- Respondent does not have any rights or legitimate interests in any of the Disputed Domain Names because the INVISALIGN Trademark, which appears in each of the Disputed Domain Names, does not “serve as Respondent's trade name [or] business identity; and Respondent does not provide goods or services that are identified or described by [this] or similar terms”; “[t]he websites associated with the domain names registered by Respondent are either Registrar parked websites providing links to Complainant's competitors, inactive sites, or sites created by Respondent in willful and knowing violation of Complainant's advertising guidelines, trademark licenses, and business relationships”; “Respondent is neither a licensee nor an authorized representative of Align Technology Inc. and has no right to register or sell any domain names (or other goods/services of any kind) incorporating Complainant's marks”; and “most of the domains included in this Complaint land in parked sites”.
- Respondent registered and is using the Disputed Domain Names in bad faith because Respondent previously transferred to Complainant some domain names containing Complainant's trademarks, in response to a cease and desist letter from Complainant in June 2007, but Respondent refused to transfer all of them and thereafter registered additional domain names containing Complainant's trademarks, including some of the Disputed Domain Names; as a result, Respondent “cannot claim he was unaware of the existence of Complainant and its trademarks.” In addition, “[s]ome of the websites associated with Respondent's domains are pay per click sites while others are healthcare websites created by Respondent to take advantage of Complainant's well known marks to achieve a wrongful competitive advantage[,(]although [o]thers are merely inactive sites[)].” Furthermore, “[i] several cases, Respondent has provided domains and web site design, to Complainant's own licensees (who are also Complainant's customers). Complainant has repeatedly informed Respondent that Complainant's license agreements and advertising guidelines prohibit licensees/customers from using Complainant's marks in domain names absent an express written permission.” B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a complainant to prove that the disputed domain names are “identical or confusingly similar to a trademark or service mark in which [it] has rights.”
Based on the information provided by Complainant, including copies of relevant trademark certificates of registration, the Panel is convinced that Complainant has rights in the INVISALIGN Trademark.
As to whether each of the Disputed Domain Names is identical or confusingly similar to the INVISALIGN Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “invisalignaustin”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA0008000095491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”).
As Complainant observes, each of the Disputed Domain Names includes the INVISALIGN Trademark plus the name of a city. In a previous dispute involving this same Complainant under similar circumstances, a panel wrote: “The city names simply reinforce the trademark function of the INVISALIGN mark.” Align Technology, Inc. v. Scott Krager,WIPO Case No. D2008-0299. See also Six Continents Hotels, Inc. v. GBT - Domains For Sale and Lease,WIPO Case No. D2008-1309 (“the combination of [Complainant's] trademark with the name of the Phi Phi Islands, where one of the Complainant's hotels is located, would serve to add to such confusion rather than distinguish the mark and the domain name”).
Accordingly, in light of the above, the Panel finds that each of the Disputed Domain Names is confusingly similar to a trademark in which Complainant has rights, and the Panel is satisfied that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1.
Accordingly, as a result of Complainant's allegations and without any evidence of Respondent's rights or legitimate interests in the Disputed Domain Names, the Panel is satisfied, also in light of the Panel's findings below, that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. Policy, paragraph 4(b).
The websites associated with the Disputed Domain Names appear to fall into one of the following categories: (1) no site or test, (2) parked site or (3) dental site.
With respect to those of the Disputed Domain Names that are used in connection with no website or only a test website, the Panel is mindful that the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.2, provides as follows:
“The lack of active use of the domain name does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”
In this case, the Panel finds bad faith with respect to these domain names in light of the volume of domain names in dispute and the manner in which the other domain names are being used, the distinctiveness of the INVISALIGN Trademark and the absence of a response. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
With respect to those of the Disputed Domain Names that are used in connection with parked websites, the Panel agrees with numerous previous decisions under the Policy that “where, as here, the links [on the parked sites] are apparently to competitive websites, especially when there is no indication that the links are not sponsored by or affiliated with the relevant trademark owner, such activity indicates bad faith under the Policy.” Wal-Mart Stores, Inc. v. Whois Privacy, Inc.,WIPO Case No. D2005-0850. See also Western Union Holdings, Inc. v. Domain Drop S.A., NAF Case No. 0971146 (“the Panel may ‘infer that Respondent's use of the disputed domain name[s] to resolve to a website linking Internet users to third-party… services is intended to capitalize on the likelihood of confusion with Complainant's… mark in an attempt to generate click-through fees, conferring commercial gain on Respondent. Such use by Respondent constitutes bad faith pursuant to Policy 4(b)(iv).”).
With respect to those of the Disputed Domain Names that are used in connection with dental sites, it is clear that this constitutes bad faith pursuant to Policy, paragraph 4(b), because the dental services offered via these websites are competitive with the services offered by Complainant and under the INVISALIGN Trademark. See, e.g., Beemak Plastics, Inc. v. WestRep Group,WIPO Case No. D2001-1023 (finding no rights or legitimate interests where the “domain name at issue had resolved to Complainant's competitor's web site at which products were offered for sale that directly competed with Complainant's trademarked products”); Six Continents Hotels, Inc. fka Bass Hotels & Resorts, Inc. v. Cortlandt Colonial Restaurants and Receptions,WIPO Case No. D2003-0292 (“Respondent's chosen use of the domain names to promote services arguably competitive to, and certainly related to Complainant's services, dispels any doubt as to the lack of fair use and the commercial nature of Respondent's unauthorized use”); and Burlington Networks Inc. v. Tope Lawal,WIPO Case No. D2005-0974 (finding no rights or legitimate interests where Complainant contended that “Respondent registered and is using the domain name to direct Internet users to its own website, which provides services that directly compete with Complainant's”).
Therefore, the Panel is convinced that Complainant has proven the third element of the Policy. 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 , , , , , , , , , , , , , , and be transferred to the Complainant.
Douglas M. Isenberg
Sole Panelist
Dated: July 30, 2009
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