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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Align Technology, Inc. v. Harvey Natloff

Case No. D2008-0105

 

1. The Parties

Complainant is Align Technology, Inc., of Santa Clara, California, United States of America, represented by Melbourne IT CBS Ltd., United Kingdom of Great Britain and Northern Ireland.

Respondent is Harvey Natloff, of Meriden, Connecticut, United States of America.

 

2. The Domain Names and Registrar

Each of the disputed domain names (listed below) is registered with GoDaddy.com, Inc.:

<invisaligncheshire.com>
<invisalignhartford.com>
<invisalignmeriden.com>
<invisalignmiddletown.com>
<invisalignnewhaven.com>
<invisalignsouthington.com>
<invisalignwallingford.mobi>

 

3. Procedural History

A Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on January 24, 2008. The original Complaint involved 97 domain names. On January 25, 2008, the Center transmitted by email to the registrar, GoDaddy.com, a request for registrar verification in connection with each of those domain names. On January 29, 2008, GoDaddy.com transmitted by email to the Center its verification response, indicating that, according to its records, the registrant and registrant contact information for those 97 domain names was not the same as that in the Complaint. The Center sent an email communication to Complainant on January 30, 2008 with the registrant name and contact information provided by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On February 28, 2008, Complainant submitted an amended version of the Complaint, limited to the seven disputed domain names listed above.

On March 3, 2008, the Center transmitted by email to GoDaddy.com, a request for registrar verification in connection with the seven disputed domain names listed in the amended Complaint. On March 4, 2008, GoDaddy.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, providing contact details for the registrant and technical and administrative contacts, and confirming details of the registration agreements. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“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 March 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2008. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 16, 2008.

The Center appointed Debra J. Stanek as the sole panelist in this matter on April 24, 2008. 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 was incorporated in the United States of America (“U.S.”) in 1997 under the name “Align Technology, Inc.” Complainant purports to own several U.S. federal trademark registrations for the marks ALIGN and INVISALIGN, the earliest of which was registered in 2000. In addition, Complainant purports to own other trademark registrations worldwide for similar marks.

According to the Complaint, Respondent registered each of the seven disputed domain names after Complainant was established and its trademarks registered. Each of the disputed domain names resolves to a website entitled “Dental Group of Meriden-Wallingford” at “www.dentalgroupofmeridenwallingford.com.”

 

5. Parties’ Contentions

A. Complainant

Complainant makes the following contentions:

Each of the disputed domain name is “identical to the Complainant’s trade name and confusingly similar to its registered trademarks.”

Complainant incorporated in 1997.

Complainant is a very well-known company in the healthcare sector.

Complainant began using the term “align” in 1999 and registered the mark INVISALIGN in 2000.

Complainant has registered its ALIGN and INVISALIGN marks worldwide.

Each disputed domain name contains Complainant’s ALIGN and/or INVISALIGN mark plus a geographical term.

Respondent has no rights or legitimate interests in any of the disputed domain names because:

Respondent does not seem to have registered any trademarks containing the terms “align” or “invisalign”.

The domain names show the official site of “Dental Group of Meriden-Wallingford”, which is a dental clinic not associated with Complainant.

Respondent is not a licensee of Complainant and Complainant has not authorized Respondent to register a domain name containing the terms “align” or “invisalign.”

Each of the disputed domain names was registered and is being used in bad faith.

The domain names were registered between 1998 and 2000.

The disputed domain names were registered after the trade name “Align Technology” and the trademarks “ALIGN” and “INVISALIGN” were registered.

The owner of the domains is disrupting the business of its competitor, Complainant, by misleading customers with domain names that involve a service that can be provided only by Complainant’s licensees.

Respondent is not allowing Complainant to use its marks as a domain name in geographic areas where Respondent “has associated the domains.”

Respondent is in the same business as Complainant and is therefore “more aware” of the well-known name of Align Technology and its product, Invisalign.

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

In order to prevail, Complainant must prove, as to each of the disputed domain names, that:

(i) The disputed domain name is identical or confusingly similar to Complainant’s mark.

(ii) Respondent has no rights or legitimate interests in respect to the disputed domain name.

(iii) The disputed domain name has been registered and is being used in bad faith.

Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a Respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a Respondent’s bad faith registration and use, see Policy, paragraph 4(b).

Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing the required elements as to each of the disputed domain names. The Panel may, however, draw such inferences from Respondent’s default as it considers appropriate. See Rules, paragraph 14(b).

A. Identical or Confusingly Similar

In the Panel’s view, whether or not Complainant has established its rights in the marks at issue presents, in the Panel’s view, a surprisingly close question.

Paragraph 3(b) of the Rules provides that the Complaint “shall”, among other things:

(viii) Specify the trademark(s) or service mark(s) on which the complaint is based and, for each mark, describe the goods or services, if any, with which the mark is used (Complainant may also separately describe other goods and services with which it intends, at the time the complaint is submitted, to use the mark in the future.);

Rules, paragraph 3(b)(viii) (emphasis added). Further, the Center’s model complaint, in addition to including a reminder of this requirement, also quite sensibly suggests that copies of any registration certificates be included.

These requirements are simple and straightforward.

Yet the Complaint identifies Complainant only as a “very well known company in the healthcare sector” and characterizes Respondent as a “competitor.” Respondent uses the disputed domain names to redirect visitors to the website of a dental clinic. One might therefore conclude that Complainant is a dental clinic, but it is not. According to its website at “www.aligntech.com,” Complainant is “a medical device company engaged in the design, manufacture and marketing of Invisalign®, the world’s leading invisible orthodontic product.”

The Complaint includes, as an annex, a list of trademark registrations and pending applications by country, but the list provides no description of the goods and services. The Complaint does not include any copies of any trademark registrations.¹ Instead, Complainant has provided a copy of its certificate of incorporation. However, use of a corporate name does not establish trademark rights.

The Panel nonetheless reviewed the records for the U.S. federal registrations on the United States Patent and Trademark Office online Trademark Electronic Search System (“TESS”) database and found that they confirm that Complainant owns a trademark registration for the following pertinent mark:

INVISALIGN for “dental apparatus, namely plastic orthodontic appliance” with a date of first use of August 31, 1999 and registration date of November 28, 2000.

The Panel finds that the Complainant has established rights in the mark INVISALIGN.

Complainant must also establish that each of the disputed domain names is identical or confusingly similar to its mark.

None of the disputed domain names are identical to Complainant’s INVISALIGN mark, but each is confusingly similar to it. Excluding the top-level domains and ignoring the lack of spaces, each disputed domain name begins with Complainant’s INVISALIGN mark in its entirety followed by a geographic descriptor. Those geographic descriptors simply reinforce the trademark function of the INVISALIGN mark.

Accordingly, the Panel finds that each of the disputed domain names is confusingly similar to Complainant’s INVISALIGN mark.

B. Rights or Legitimate Interests

The Panel, consistent with the consensus view, finds that Complainant may establish that Respondent has no rights or legitimate interests in respect of the domain names by making a prima facie showing that respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).

Paragraph 4(c) of the Policy sets out the following examples:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel finds that Complainant has made a prima facie showing as to the examples set out in paragraph 4(c)(i)-(iii) of the Policy. Complainant’s evidence suggests that neither Respondent nor Respondent’s business could legitimately be known by the name “Invisalign”; each of the disputed domain names was registered in November 2007, long after the earlier of Complainant’s U.S. federal registrations issued. See Policy, paragraph 4(c)(ii). Complainant also submitted printouts that show use of the domain names for commercial purposes. See Policy, paragraph 4(c)(iii).

C. Registered and Used in Bad Faith

Complainant must establish that each of the disputed domain names has been registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith, see Policy, paragraph 4(b)(i)-(iv):

(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs, see Policy, paragraph 4(b)(i).

(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct, see Policy, paragraph 4(b)(ii).

(3) Registering the domain name primarily to disrupt the business of a competitor, see Policy, paragraph 4(b)(iii).

(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement, see Policy, paragraph 4(b)(iv).

As noted above, each of the disputed domain names is confusingly similar to Complainant’s INVISALIGN mark. Moreover, it is also relevant that: (i) Complainant’s rights in the INVISALIGN mark predate Respondent’s registration and use of each of the domain names,² (ii) Respondent uses the domain names to redirect traffic to a site that appears to offer dental services that compete with Complainant’s products and services, (iii) the INVISALIGN mark is, in the Panel’s view, well-known in the dental field, and (iv) Respondent has registered seven domain names that include Complainant’s mark and a geographic descriptor, constituting a pattern of conduct under paragraph 4(b)(ii) of the Policy.

Under these circumstances, combined with the adverse inferences drawn by Respondent’s failure to respond, the Panel finds that Complainant has established that Respondent has registered and used the domain name in bad faith.

 

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 each of the domain names (listed below), be transferred to Complainant: <invisaligncheshire.com>, <invisalignhartford.com>, <invisalignmeriden.com>, <invisalignmiddletown.com>, <invisalignnewhaven.com>, <invisalignsouthington.com>, and <invisalignwallingford.mobi>.

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Debra J. Stanek
Sole Panelist

Date: May 15, 2008

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¹ Unsupported statements of a party’s representative as to factual matters easily established by documentary evidence (particularly where the representative has no personal knowledge) are not evidence.

² Complainant incorrectly asserts that the domain names were “registered between 1998 and 2000,” pointing to the “whois” records appended to the Complaint. Those records, however, show that each of the registrations was made in 2007.