Align Technology, Inc. v. LaPorte Holdings

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

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

of America.

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

A. Complainant

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.

B. Respondent

The Respondent did not reply to the Complainant’s

contentions.

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 Europénne 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

mark.”).

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>); Crédit 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>); Société des Hôtels Méridien

v. LaPorte Holdings, Inc., WIPO Case No.

D2004-0849 (Complainant owned LE MERIDIEN trademark, Respondent registered

<lemeriden.com>).

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

companies.”).

Complainant has established the third and final element.

7. Decisions

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

Sole Panelist

Dated: February 23, 2006

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