WIPO Domain Name Decision: D2005-1316

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Align Technology, Inc. v. Trademark

Case No. D2005-1316

1. The Parties

The Complainant is Align Technology, Inc., Santa Clara, California, United States of America, represented by Wilson Sonsini Goodrich & Rosati, United States of America.

The Respondent is Trademark, Cayman Islands, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <invisilign.com> is registered with Universal Registration Services, Inc.

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 Universal Registration Services, Inc. a request for registrar verification in connection with the domain name at issue. On December 20, 2005, Universal Registration Services, Inc. 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 18, 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 24, 2006. In accordance with the Rules, Paragraph 5(a), the due date for Response was February 13, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2006.

The Center appointed Teruo Doi as the sole panelist in this matter on February 28, 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

The facts stated in the Complaint are as follows:

(1) The Complainant is a medical device company engaged in the design, manufacture and marketing of invisible orthodontic products. The Complainant also provides related services in the field of orthodontic training. The Complainant’s stock is publicly traded in the United States.

(2) The Complainant’s flagship product, Invisalign, is a series of clear, removable aligners that orthodontists and dentists use as a technique to improve the appearance of their patients’ smiles and the health of their patients’ teeth and gums. With more than ten million unique aligners made to date, the Complainant is one of the largest manufacturers of mass customized products in the world.

(3) The Complainant’s has been using its INVISALIGN mark and the corresponding domain name, <invisalign.com>, to promote its goods and services since at least as early as August 1999.

(4) The Complainant is the owner of U.S. trademark Registration No. 2,409,473 for the mark INVISALIGN, as well as a pending service mark application Serial No. 78/576, 764 for the mark (Exhibit A).

(5) The Complainant also owns rights to and has applied to register INVISALIGN mark around the world, including in Argentina, Australia, Canada, China, Colombia, Costa Rica, Ecuador, the European Union, Hong Kong (SAR of), India, Israel, Japan, New Zealand, Norway, Pakistan, Russia Federation, Singapore, South Korea, Switzerland, Taiwan Province of China and Thailand(Exhibit B).

(6) Since August 1999, the Complainant has developed substantial fame and goodwill in its INVISALIGN mark. A LexisNexis search of publicly reported news articles conducted on December 7, 2005, yielded more than 1,000 results directly related to the Complainant’s well-known product and mark. Invisalign has generated substantial media coverage. For example, as early as August 18, 2000, the New York Times published a 1700-word story about the Complainant in its Business/Financial Desk section (Exhibit C). On April 10, 2001, the Washington Post called the Complainant’s product “the hottest new orthodontic device in America.” (Exhibit D).

(7) The Complainant has invested large amounts of money and resources into its marketing and advertising efforts in order to make consumers aware of its brand and the orthodontics goods and services it offers. According to the Form 10-K filed with the U.S. Securities and Exchange Commission, the Complainant’s sales and marketing expenses were $55.9 million in 2004. In 2003, its sales and marketing expenses were $43.7 million (Exhibit E). As a result of these efforts, the Complainant’s INVISALIGN mark is particularly well-known by orthodontists, dentists and customer.

(8) In May 2003, over three years after the Complainant registered <invisalign.com>, the Respondent registered the domain name in dispute, <invisilign.com> (Exhibit F).

5. Parties’ Contentions

A. Complainant

On the basis of the facts stated above, the Complainant requests the Administrative Panel to issue a decision that the Domain Name, <invisilign.com>, be transferred to the Complainant, in accordance with Paragraph 4(b)(i) of the Policy, on the following grounds:

(1) The Domain Name at issue, <invisilign.com>, is an unmistakable misspelling of the Complainant’s domain name <invisalign.com>. General experience with the Internet suggests that consumers intending to access the Complainant’s website may end up at the Respondent’s site due to inadvertent typographical error.

The content at the Respondent’s site <invisilign.com> is directly related to the Complainant’s business. Specifically, <invisilign.com> contains multiple links to the Complainant’s site, <invisalign.com>, as well as links to orthodontists and dentists offering the Complainant’s goods and other information about the Complainant’s goods (Exhibit G).

The Respondent registered <invislign.com> as part of a “click-through” advertising scheme. The Respondent has apparently registered with Internet companies (such as Google) to provide advertisements on its site in exchange for a fee every time an Internet user clicks on one of the advertisements. Because the Respondent lures users to its site through the misspelling of the Complainant’s name, and since the content is related to the Complainant’s products, Internet users are likely to be interested in the links offered there and are therefore likely to “click” on the advertisements. When Internet users “click” on the paid links displayed on the Respondent’s site, the Respondent receives a payment from the third-party advertisers who are paying for the service.

(2) The Respondent should be considered as having no rights or legitimate interests in respect of the Domain Name at issue because:

(i) the Respondent has not used the Domain Name or a name corresponding to the Domain Name;

(ii) the Respondent, as an individual, business, or other organization, has not been commonly known by the Domain Name;

(iii) the Respondent is not making a legitimate non-commercial or fair use of the Domain Name;

(iv) the Domain Name is composed of a misspelling of the Complainant’s well-known mark; and

(v) the Domain Name was registered and is being used in bad faith.

(3) The Domain Name at issue should be considered as having been registered in bad faith because:

(i) by registering the Domain Name, the Respondent intentionally attempted to attract, for commercial gain, Internet users attempting to reach the Complainant’s site to its site instead; and/or

(ii) the Respondent registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the Domain Name; and/ or

(iii) by registering the Domain Name, the Respondent has created a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove that each of the following elements is present:

(i) The domain name registered by the Respondent is 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 domain name; and

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

The Panel notes that the Respondent has failed to respond to the Complaint and, as such, does not contest the facts asserted by the Complainant in the Complaint. Accordingly, the Panel finds that:

A. Identical or Confusingly Similar

The Domain Name at issue, <invisilign.com>, is identical or confusingly similar to the Complainant’s mark INVISALIGN used for the Complainant’s orthodontic products and services. The Complainant has been using its INVISALIGN mark and the corresponding domain name, <invisalign.com>, to promote its products and services since at least as early as August 1999.

As correctly asserted by the Complainant, the Domain Name at issue <invisilign.com> is an unmistakable misspelling of the Complainant’s domain <invisalign.com> and, therefore, it is likely to cause confusion among consumers over the Internet.

The Complainant is the owner of a U.S. trademark registration (Principal Register) for this mark as well as a pending application to register it for services (Exhibit A). The Complainant owns rights to and has applied for registration the INVISALIGN mark in many countries in the world (Exhibit B).

B. Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in respect of the Domain Name at issue on the following grounds:

There is no allegation or proof that the Respondent has ever used the Domain Name or a name corresponding to it in connection with a bona fide offering of goods or services. The Respondent is not commonly known by the Domain Name; and the Respondent is not making a legitimate non-commercial or fair use of the Domain Name.

Rather, the Respondent is using the domain name to divert Internet users looking for the Complainant’s products to websites offering dental services and products for the Respondent’s own commercial gain. This is not to be considered bona fide use of the domain name.

C. Registered and Used in Bad Faith

The Domain Name at issue has been registered and is being used in bad faith by the Respondent on the following grounds:

The Complainant’s mark INVISALIGN is a distinctive mark adopted by the Complainant for its new venture in the design, manufacture and marketing of invisible orthodontic products and the Complainant has been using this mark and the corresponding domain name, <invisalign.com>, to promote its goods and services since at least as early as August 1999.

Due to the Complainant’s consistent efforts to promote its orthodontic products and services, the mark INVISALIGN has become known among orthodontists, dentists and consumers as shown by various media coverage (Exhibits C, D and E). It was over three years after the Complainant’s registration of its domain name <invisalign.com>, that the Respondent registered the Domain Name at issue, <invisilign.com>, which differs from the Complainant’s domain name only in the replacement of the sixth letter “a” by letter “i.”

Therefore, the Panel finds that the Respondent knew of the Complainant and its trademark when it registered the disputed domain name.

The Panel finds that the Respondent’s bad faith in the registration and use of the Domain Name at issue, <invisilign.com>, is evident. Such a conduct of the Respondent falls under Paragraph 4(b)(iii) and (iv) of the Policy. The Panel also notes that the Respondent has been involved to prior UDRP proceedings as a respondent. The Panel finds that this further suggests bad faith on the part of the Respondent.

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 name <invisilign.com> be transferred to the Complainant.

Teruo Doi
Sole Panelist

Date: March 14, 2006