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and Mediation Center
Align Technology, Inc. v. LaPorte Holdings
Case No. D2005-1317
1. The Parties
The Complainant is Align Technology, Inc. of Santa Clara, California, United States of America. It is represented by Wilson Sonsini Goodrich & Rosati, Palo Alto, California, United States of America.
The Respondent is LaPorte Holdings, Los Angeles, California, United States
2. The Domain Name and Registrar
The disputed domain name <invislign.com> is registered with NameKing,
Inc. (d/b/a NameKing.com).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2005. On December 20, 2005, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain name at issue. On December 27, 2005, NameKing.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 14, 2006. The Center verified that the Complaint together with the amendment to 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 January 17, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2006.
The Center appointed Steven L. Snyder as the sole
panelist in this matter on February 13, 2006. 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 does not want its INVISALIGN products noticed. In contrast to the bulky metal braces that scarred millions of teenagers’ mouths and psyches, Complainant’s “clear, removable aligners” are designed to inconspicuously straighten teeth. These characteristics are reflected in the product’s brand name, which likely was derived from the words “invisible” and “align.”
While it seeks to make its INVISALIGN products invisible, Complainant seeks to make itself prominent. In 2003, Complainant reportedly spent more than $43 million on sales and marketing. In 2004, the number reportedly grew to almost $56 million. Apparently, Complainant’s sales and marketing efforts have succeeded. Complainant boasts of having made “more than ten million unique aligners” and claims to be one of the largest manufacturers of “mass customized products in the world.”
The New York Times has profiled the company, noting its young owners, their high-tech approach to designing aligners and the backing of “venture capital on a scale that has stunned the industry”, see Barnaby J. Feder, Orthodontics via Silicon Valley, The New York Times (August 18, 2000). The company has also come to the attention of The Washington Post, which noted its “$40 million ad campaign”, see Jennifer Huget, Seen Up Close, Invisalign’s Smile Isn’t Perfect, The Washington Post (April 10, 2001). According to Complainant, more than 1,000 news stories have been written about its INVISALIGN products.
Complainant states that it began using its INVISALIGN trademark in August 1999. Around that time, Complainant registered a domain name that incorporated the trademark: <invisalign.com>. Since then, Complainant has obtained a registration for its mark from the United States Patent & Trademark Office, reg. no. 2409473. It has registered, or is seeking to register, the INVISALIGN trademark in twenty other countries and the European Union.
Long after the Complainant had achieved public renown,
Respondent registered <invislign.com>. The domain name led to a webpage
that featured links to several orthodontists and orthodontic products manufacturers.
One of those manufacturers is OrthoClear, which also makes invisible retainers.
The <invislign.com> website also provided a form that prospective purchasers
of the domain name could submit to Respondent.
5. Parties’ Contentions
It is no accident, Complainant contends, that Respondent registered a domain name that is virtually the same as its increasingly well-known trademark. Complainant contends that <invislign.com> “is an unmistakable misspelling” of its INVISALIGN trademark and suggests Respondent chose its domain name in order to take advantage of those consumers who experience “inadvertent typographical error.”
Those error-prone consumers are presumably interested in straightening their teeth. When they stumble across Respondent’s website, they are presented with links to manufacturers and doctors who advertise their ability to put wayward teeth back in line. Complainant claims that users who click on the links generate ill-gotten gain for Respondent through various advertising programs.
Based on the facts and allegations recited above, Complainant argues that it has rights in the INVISALIGN trademark, that <invislign.com> is virtually identical to Complainant’s trademarks, that Respondent does not have rights or legitimate interests in <invislign.com>, and that the domain name was registered and has been used in bad faith. Complainant seeks a transfer of the domain name to its possession.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
Even an uncontested lay-up must fall through the basketball
hoop in order to count. Complainant does not automatically win this proceeding
merely because Respondent did not actually respond. Complainant has the burden
of proving each element and the Panel must examine the evidence to ascertain
if the burden has been met. See Europйnne de Traitement de l’Information
v. Horoshiy, WIPO Case No. D2004-0706
(“This Panel . . . cannot grant the Complainant’s request automatically,
but that it must instead examine the evidence presented to determine whether
or not the Complainant has proven its case as required by the Policy.”).
A. Identical or Confusingly Similar
The first element Complainant must prove is that the disputed “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.” Policy paragraph 4(a)(i).
Complainant has shown it has rights in the INVISALIGN mark: Complainant has
used the mark for more than five years, it has expended a fortune on sales and
marketing, it has secured multiple trademark registrations for the mark, and
the media has obligingly raised the public’s awareness of the mark through
hundreds of news stories. See The Cyberbingo Corporation v. 207 Media Inc.,
WIPO Case No. D2005-0714 (“This Panel believes
that the Registered Trademarks for CYBERBINGO are prima facie evidence
of validity and the proper forum for considering if the trademark CYBERBINGO
lacks distinctiveness is cancellation or invalidity proceedings.”)
It is evident that <invislign.com> is virtually identical and confusingly
similar to the INVISALIGN mark. As numerous panels have held, the “.com”
can be disregarded when comparing a domain name and a trademark. Doing that
leaves us with INVISLIGN and INVISALIGN. But for one letter, the two words are
identical. They look alike and they sound alike. This is more than enough to
cause confusion among orthodontically-challenged Internet users. See ESPN,
Inc. v. XC2, WIPO Case No. D2005-0444 (“Respondent’s
domain name is both visually and phonetically similar to the [Complainant’s]
trademark, further heightening the likelihood of confusion”); Reuters
Limited v. Global Net 2000, Inc., WIPO
Case No. D2000-0441 (“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.”); Playboy Enterprises International
Inc. v. SAND Web Names-For Sale, WIPO
Case No. D2001-0094 (“This is a typical case of “typo-squatting”
where the infringing name is one letter less than or different from the Complainant’s
Complainant has established the first element.
B. Rights or Legitimate Interests
The second element Complainant must prove is that the Respondent has “no rights or legitimate interests in respect of the domain name.” Policy, paragraph 4(a)(ii). The Policy offers various examples of when a respondent may be deemed to have rights or legitimate interests in a domain name, even though the domain name is identical or confusingly similar to the complainant’s trademark. See Policy, paragraph 4(c)(i)-(iii). The only example that is even arguably applicable to this dispute is the use of the domain name in connection with the bona fide offering of goods or services.
Respondent has used <invislign.com> in connection with the offering of
goods and services. Only, the goods and services being offered are those of
Complainant’s competitors. The domain name is not being used in connection
with the bona fide offering of goods or services and Respondent does not have
any rights or legitimate interests in <invislign.com>. See ESPN, Inc.
v. XC2, WIPO Case No. D2005-0444 (“Diverting
consumers who are looking for ESPN’s products on the Internet to competing
sports-related websites for commercial gain is not a legitimate, bona fide use
and does not confer legitimate interests in the domain name.”); see also,
accord Lexar Media, Inc. v. Huang, WIPO
Case No. D2004-1039 (“Respondent is not making a legitimate noncommercial
use of the disputed domain name. . . . Consumers are diverted to a site where
they are offered various computer products, including those that compete with
. . . Complainant’s products.”).
Complainant has established the second element.
C. Registered and Used in Bad Faith
The third and final element that Complainant must prove is that the domain
name was “registered and is being used in bad faith.” Policy, paragraph 4(a)(ii).
The Policy provides numerous examples of bad faith registration and use. See
Policy, paragraph 4(b). One example is the use of the confusingly similar
domain name to “attract, for commercial gain, Internet users to [Respondent’s]
web site.” Id., paragraph 4(b)(iv).
Respondent has used a domain name that is confusingly similar to Complainant’s
registered trademark in order to lead Internet users to a website that advertises
the products and services of Complainant’s competitors. When the users
click on those advertisements, Respondent earns money. This activity demonstrates
bad faith registration and use of <invislign.com>. See ESPN, Inc. v.
XC2, WIPO Case No. D2005-0444 (“It is
well-settled that the practice of typosquatting, of itself, is evidence of the
bad faith registration of a domain name.”).
This is not the first time Respondent has been involved
in a UDRP proceeding. In Medco Health Solutions, Inc. v. LaPorte Holdings,
Inc., WIPO Case No. D2004-0800, Respondent
was taken to task for registering <medcoheath.com>. Complainant owned
the registered trademark MEDCOHEALTH.COM and contended Respondent had engaged
in “typosquatting.” The panel agreed and transferred the domain
name to the Complainant.
Respondent was also on the losing side in the following
UDRP proceedings: Adorama, Inc. v. LaPorte Holdings, Inc., WIPO
Case No. D2005-0240 (Complainant owned ADORAMA trademark; Respondent registered
<adarama.com>); Crйdit Industriel et Commercial S.A. v. LaPorte Holdings,
Inc., WIPO Case No. D2004-1110 (Complainant
owned FILBANQUE trademark, Respondent registered <filebanque.com>); Encyclopaedia
Britannica, Inc. v. LaPorte Holdings, WIPO Case
No. D2005-0866 (Complainant owned ENCYCLOPEDIA BRITANNICA trademark; Respondent
registered <encyclopediabrittanica.com>); Questar Corp. v. LaPorte
Holdings, Inc., NAF Case No. 573940 (Complainant owned QUESTAR GAS trademark;
Respondent registered <queststargas.com>); Sociйtй des Hфtels Mйridien
v. LaPorte Holdings, Inc., WIPO Case No.
D2004-0849 (Complainant owned LE MERIDIEN trademark, Respondent registered
Respondent has a long history of typosquatting. A gullible man might say this
is evidence of dyslexia. A school teacher might say this is evidence that remedial
English lessons are warranted. But a UDRP panel will certainly say that this
is evidence of bad faith registration and usage. See Acuity, Inc. v. Netsolutions
Proxy Services, WIPO Case No. D2005-0564 (“The
fact that the Respondent has registered similar domain names to typosquat on
the websites of other well-known U.S. insurers suggests a pattern of behaviour
that is not inadvertent but is motivated by a desire to harm these types of
Complainant has established the third and final element.
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 <invislign.com> be transferred to the Complainant.
Steven L. Snyder
Dated: February 23, 2006