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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Align Technology, Inc. v. Scott Krager

Case No. D2008-0299

 

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 Scott Krager, of Clackamas, Oregon, United States of America.

 

2. The Domain Names and Registrars

Each of the disputed domain names, which are listed below, are registered with GoDaddy.com, Inc.:

<invisaligninchicago.com>
<invisalignindallas.com>
<invisaligninfortworth.com>
<invisaligninhouston.com>
<invisaligninindianapolis.com>
<invisaligninjacksonville.com>
<invisaligninlasvegas.com>
<invisaligninlosangeles.com>
<invisaligninportland.com>
<invisaligninsacramento.com>
<invisaligninsanfrancisco.com>
<invisaligninsanjose.com>
<invisaligninseattle.com>
<invisalignintacoma.com>

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on February 28, 2008. On February 29, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain names at issue. On February 29, 2008, GoDaddy.com transmitted by email to the Center its response indicating that Respondent was listed as the registrant for each of the disputed domain names,¹ providing contact information for the administrative and technical contacts, and confirming several details of the registration agreement. The Center verified that the 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 the 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 disputed domain names in 2007, after Complainant was incorporated and some of its trademarks registered. With one exception, each of the disputed domain names is parked or inactive. One of the disputed domain names, <invisaligninchicago.com>, is to website that identifies “Dr. Tomaselli” as a provider of INVISALIGN products and services.

 

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 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”.

All but one of the disputed domain names are inactive. The <invisaligninchicago.com> domain name refers visitors to a “Dr. Tomaselli.”

Respondent is not a licensee of Complainant and is not authorized 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 in 2007.

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 involves a service that only Complainant’s licensees can provide.

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

Respondent appears to be a dental expert who is aware of the well-known name “Align Technology” and its INVISALIGN product.²

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

A. Procedural Matters

The WHOIS records for the following six disputed domain names do not specifically identify the named respondent, Scott Krager, as the registrant, instead containing the entry “N/A” in the “name” field:

<invisalignindallas.com>
<invisaligninfortworth.com>
<invisaligninhouston.com>
<invisaligninjacksonville.com>
<invisaligninlasvegas.com>
<invisaligninseattle.com>

Nonetheless, the registrar has confirmed that Scott Krager is the registrant for each of these domain names. This is consistent with the fact that the registrant address for each domain name at issue is the same and that each domain name identifies Scott Krager as the administrative and technical contacts.

B. Evidentiary Matters

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).

1. Identical or Confusingly Similar

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). This requirement is straightforward and is typically fulfilled, in the case of registered marks, by providing a copy of the registration certificate.

Rather than do so, the Complaint merely provides a list of trademark registrations and applications by country, along with a copy of its certificate of incorporation, and characterizes Complainant as a “very well known company in the healthcare sector.”

Unsupported statements of a party’s representative as to factual matters easily established by documentary evidence (particularly those that are not within the representative’s personal knowledge) are not evidence and carry little or no weight. A summary of trademark registrations and applications does not establish rights in a mark. Incorporation under a particular corporate name does not establish trademark rights.

The Panel nonetheless reviewed Complainant’s own website at “www.aligntech.com” and pertinent U.S. federal trademark registrations on the United States Patent and Trademark Office online Trademark Electronic Search System (“TESS”) database and found that they confirm that: (A) Complainant is “a medical device company engaged in the design, manufacture and marketing of Invisalign, the world’s leading invisible orthodontic product” and (B) Complainant owns a U.S. federal trademark registration for the mark INVISALIGN for “dental apparatus, namely plastic orthodontic appliance” with a date of first use of August 31, 1999 and a registration date of November 28, 2000.

The Panel finds that Complainant has 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 the omission of spaces (which are not relevant for these purposes), each disputed domain name begins with Complainant’s INVISALIGN mark in its entirety followed by the word “in” plus the name of a city in the U.S. The city names 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.

2. 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 Complainant’s U.S. federal registration for INVISALIGN issued. See Policy, paragraph 4(c)(ii). Complainant also submitted printouts of one website, “www.invisaligninchicago.com”, that shows use of that domain name for commercial purposes, while the others are inactive.³ See Policy, paragraph 4(c)(iii).

3. 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, (ii) Respondent uses at least one of the domain names to offer dental services that appear to 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 fourteen domain names that include Complainant’s mark and the name of a city, 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 is using each of the domain named 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 the following domain names be transferred to the Complainant:

<invisaligninchicago.com>
<invisalignindallas.com>
<invisaligninfortworth.com>
<invisaligninhouston.com>
<invisaligninindianapolis.com>
<invisaligninjacksonville.com>
<invisaligninlasvegas.com>
<invisaligninlosangeles.com>
<invisaligninportland.com>
<invisaligninsacramento.com>
<invisaligninsanfrancisco.com>
<invisaligninsanjose.com>
<invisaligninseattle.com>
<invisalignintacoma.com>

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Debra J. Stanek
Sole Panelist

Date: May 15, 2008

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¹ As discussed below, the “whois” records for several of the disputed domain names contained the entry “N/A” in the name field.

² The Complaint cited to evidence of this contention in an annex, however, the material was missing.

³ The Panel shares the consensus view, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Paragraph 2.3, that resellers may make bona fide offerings of goods and services and thus have a legitimate interest in a domain name under specific circumstances. In the circumstances of this case, and in light of Respondent’s failure to respond, the Panel concludes that Complainant has met its burden on this point.