Aeroptic.com

The timeline behind aeroptic.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Novartis AG v. Dominik Hunziker Claim Number: FA1210001468452 PARTIES Complainant is Novartis AG (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is Dominik Hunziker (“Respondent”), Switzerland. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <aeroptic.com> (the “Domain Name”), registered with Blue Razor Domains, LLC. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. Clive Elliott as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on October 23, 2012; the National Arbitration Forum received payment on October 23, 2012. On October 24, 2012, Blue Razor Domains, LLC confirmed by e-mail to the National Arbitration Forum that the Domain Name is registered with Blue Razor Domains, LLC and that Respondent is the current registrant of the name. Blue Razor Domains, LLC has verified that Respondent is bound by the Blue Razor Domains, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). On October 24, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@aeroptic.com. Also on October 24, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts. A timely Response was received and determined to be complete on November 12, 2012. On November 27, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Clive Elliott as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. RELIEF SOUGHT Complainant requests that the Domain Name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant Complainant states that it discovers, develops, manufactures and distributes products for, among other things, vision care and eye health and that it owns and uses the trademark AIR OPTIX, (the "AIR OPTIX trademark") and variations thereof, in connection with its contact lens products and related internet services. Complainant also states that it owns the corresponding domain name <airoptix.com>, which it registered in 2005, and uses this domain name to promote and to provide information about its contact lens products. Complainant asserts that it has expended significant resources on the development and marketing of its AIR OPTIX line of contact lens products. Complainant asserts that Respondent registered the Domain Name on September 22, 2012 and that the Domain Name is used in connection with a website which provides hyperlinks to a variety of information, primarily contact lens and eye health information, and to websites in direct competition with Complainant. Complainant asserts that the Domain Name is legally equivalent and confusingly similar to the AIR OPTIX trademark and that the Domain Name consists of Complainant's entire trademark with only two slight changes in spelling. These minor spelling changes, the substitution of the first "i" in Complainants trademark with an "e" and the "x" with a "c", Complainant contends, does nothing to prevent the Domain Name from being confusingly similar to Complainant's trademark. Complainant also contends that the fact that the Domain Name adds the ".com" top level domain name to Complainant's trademark does not keep the Domain Name from being confusingly similar to its AIR OPTIX trademark. Complainant asserts that the slight spelling changes to the AIR OPTIX trademark are insufficient to avoid a likelihood of confusion between the Domain Name and the AIR OPTIX trademark, and the Domain Name is phonetically identical to Complainant's AIR OPTIX mark representing a common misspelling associated with that mark. Complainant submits that Respondent has no legitimate rights or interest with respect to the Domain Name and that Respondent has no connection or affiliation with Complainant, nor has Complainant consented to Respondent's use of the Domain Name. Complainant asserts that neither Respondent nor its business is known by the name "AIR OPTIX." Complainant asserts that Respondent has registered the Domain Name in bad faith in that Respondent operates a website at <aeroptic.com> seeking to generate "click-through" revenue from users searching for information about Complainant and its contact lens products. Complainant contends that because the AIR OPTIX trademark is well-known in connection with its contact lenses, Complainant alleges that Respondent has registered the Domain Name with the intent to divert users seeking information about Complainant or its products to Respondent's website. Because the Domain Name directs the user to sites selling a variety of competing products, Complainant submits that Respondent is attempting to increase its own Internet sales through association with Complainant's AIR OPTIX trademark. Complainant claims that such use by Respondent is not a bona fide offering of goods or services or a legitimate noncommercial or fair use B. Respondent In a short e-mail Respondent states that the Domain Name is a combination of the two words “aero” and “optic” which describes the service of aerial photography it provides using a radio controlled helicopter. Respondent asserts that it never expected the Domain Name to conflict with a product name when Respondent registered the Domain Name. Respondent asserts that its service of aerial photography is in a different field of business from Complainant. FINDINGS For the reasons set out below the Panel is not satisfied that the second and third grounds have been made out and accordingly relief is denied. 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." 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 claims that it discovers, develops, manufactures, and distributes products for, among others, vision care and eye health. Complainant argues that it owns and uses the AIR OPTIX trademark in connection with contact lens products and related Internet services. Complainant asserts that it owns trademark registrations with the USPTO for the AIR OPTIX trademark (e.g., Reg. No. 3,490,248 registered Aug. 19, 2008). The Panel finds that Complainant’s trademark registrations with the USPTO are sufficient for Complainant to establish rights in the AIR OPTIX trademark under Policy ¶ 4(a)(i), regardless of the location of the parties. Complainant also argues that the Domain Name is confusingly similar to Complainant’s AIR OPTIX trademark, with minor spelling changes and the addition of the gTLD “.com.” Complainant asserts that the slight spelling changes to the AIR OPTIX trademark do not avoid being confusingly similar to the mark. The Panel notes that the Domain Name removes the space between the terms of the trademark, replaces the letter “i” of the mark with the letter “e,” and replaces the letter “x” with the letter “c.” Prior UDRP panels have determined that minor misspellings that result in a phonetically similar domain name are confusingly similar to a complainant’s mark. See Am. Online, Inc. v. Peppler, FA 103437 (Nat. Arb. Forum Feb. 22, 2002) (“The word “quest” and “crest” are similar in sound and are phonetically similar and thus these two words may be considered confusingly similar. Therefore, confusing similarity exists between <mapcrest.com> and Complainant’s MAP QUEST mark.”). Further, prior UDRP panels have determined that the deletion of spaces and addition of gTLD’s does not render a domain name distinct from a mark. The Panel does not accept that the differences between the Domain Name and the AIR OPTIX trademark necessarily amount to "minor spelling changes" and that the removal of the space between the terms of the mark is necessarily of limited moment. Indeed, the combined effect of the replacement of the letter “i” of the mark with the letter “e,” and the letter “x” with the letter “c” are not insignificant in cumulative terms. The Panel accepts that there is some merit in Respondent’s explanation that the Domain Name comprises a combination of the two words “aero” and “optic” and the assertion that it was chosen to describe the service of aerial photography that it provides using a radio controlled helicopter. The Domain Name would thus appear to be reasonably apt to describe the provision of such services. Accordingly, the Panel remains to be convinced as to the degree of risk of confusing similarity between the AIR OPTIX trademark and the Domain Name. However, Respondent has not addressed this issue in its very short submission. Accordingly, on balance, the Panel accepts that the Domain Name is confusingly similar to the AIR OPTIX trademark under Policy ¶ 4(a)(i), albeit by a relatively slim margin. Rights or Legitimate Interests Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Complainant claims that Respondent is not known by the AIR OPTIX trademark, and has no connection or affiliation with Complainant. The WHOIS information for the Domain Name identifies “Dominik Hunziker” as the registrant of the Domain Name. The Panel accepts, based upon the WHOIS information, that Respondent is not on the face of it commonly known by the Domain Name. The Panel notes that Complainant has submitted a screenshot that shows the resolving website of the Domain Name - see Complainant’s Exhibit 5. The Domain Name resolves to a website which contains a section entitled “Ads” which in turn contains several third-party links to businesses such as “Optics Planet” which appears to be a hunting business, “Optical Fiber – Plenum” which appears to supply Fiber Optic cables, “Optical Window and Lens,” and “Lens Design Expertise.” The Panel is satisfied that Complainant establishes at least an arguable case in support of its argument that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). However, Respondent asserts that it uses the name “aeroptic” to describe its service of aerial photography provided by using an rc-helicopter. Respondent contends that it combined the terms “aero” and “optic” in order to describe its services. Respondent has submitted a photograph of the helicopter/camera that it alleges it uses for its business, but has not given any other evidence of its use of the Domain Name or “aeroptic” mark. Respondent’s evidence of use of the Domain Name or “aeroptic” mark is limited and is not verified by reliable evidence of actual use, perhaps apart from the photograph of the purported helicopter/camera that it claims to use for its business. However, while such evidence is limited in nature, if accepted, it provides a valid justification for why the Domain Name was chosen and is being used to make a bona fide offering of goods or services under Policy ¶ 4(c)(i). See Verkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (finding that the respondent’s use of the <skyart.com> domain name to sell “digital and photo images of Southwest scenes, especially the sky” bestowed rights and legitimate interests in the domain name); see also Brasserie Alamaza S.A.L. v. Orbyt, D2004-0799 (WIPO Jan. 13, 2005) (finding that the respondent’s use of a disputed domain name was bona fide under Policy ¶ 4(c)(i) where the website only displayed links to jewelry products and the complainant used its mark to sell beverage products, including beer). At the end of the day, while Respondent may have failed to provide reliable proof of its alleged use of the Domain Name it does put forward a plausible and not entirely unreasonable explanation. Complainant has failed to challenge that explanation or to provide an argument or evidence as to why it should be rejected. Ultimately, the onus of establishing this ground lies on Complainant and on balance the Panel considers that Respondent had done just enough to explain its actions. Accordingly, the Panel considers that in the final analysis the ground has not been made out. Registration and Use in Bad Faith Having concluded that Respondent (albeit by a close margin and having applied the burden of proof against Complainant), has some rights or legitimate interests in the Domain Name pursuant to Policy ¶ 4(a)(ii), the Panel is satisfied that Respondent did not register or use the Domain Name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name). The Panel considers that on the basis of the present record Respondent has not registered or used the Domain Name in bad faith as it has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith). As noted above, Respondent asserts that it combined the terms “aero” and “optic” to effectively describe its service of aerial photography that it provides using a radio controlled helicopter. Respondent argues that its use of the “aeroptic” name for its photography business doesn’t affect Complainant’s business. Further, the Domain Name, according to Complainant, resolves to a parked website with a registrar which contains various third-party links to businesses that are unrelated to Complainant’s company and contact lens products. This is a further factor that needs to be taken into account. Accordingly, on balance this ground is not made out by Complainant. In conclusion, the Panel acknowledges that this matter has not been a straightforward one to determine and the merits are relatively evenly balanced. Ultimately however the burden lies on Complainant and it has failed on this occasion to establish two of the three necessary grounds. However, this decision is based on the facts and submissions presently before the Panel and it should not be seen bearing upon or precluding a further complaint, if appropriate. DECISION Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. Accordingly, it is Ordered that the <aeroptic.com> domain name REMAIN WITH Respondent. Clive Elliott, Panelist Dated: December 13, 2012 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.