Carvajal Pharmacy LTC, LLC v. zepde jed
Claim Number: FA2206001999444
Complainant is Carvajal Pharmacy LTC, LLC ("Complainant"), represented by Stephanie Schmidt of Norton Rose Fulbright US LLP, Texas, USA. Respondent is zepde jed ("Respondent"), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <carvajallpharmacy.com>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 7, 2022; the Forum received payment on June 7, 2022.
On June 7, 2022, NameCheap, Inc. confirmed by email to the Forum that the <carvajallpharmacy.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 8, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 28, 2022 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@carvajallpharmacy.com. Also on June 8, 2022, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 4, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules, and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant was founded in 1969 as a single retail pharmacy in Texas. Complainant currently operates four retail pharmacies and also provides services in long-term care settings and via mail order under the CARVAJAL PHARMACY mark, in which Complainant asserts common law rights. Complainant owns the domain name <carvajalpharmacy.com>, at which it has operated a website since at least as early as 2006, and promotes its services under the CARVAJAL PHARMACY mark via social media, advertising, physical signage, uniforms, and elsewhere. Complainant asserts that the mark has become widely recognized by consumers throughout Texas and elsewhere based upon its long usage and promotion.
Respondent registered the disputed domain name <carvajallpharmacy.com> via a privacy registration service in May 2022. (The Panel notes that most of the underlying registration information supplied by Respondent appears to be invalid, including the physical address, postal code, and telephone number, and probably Respondent's name as well.) The domain name resolves to a registrar-generated parking page. Complainant alleges that the domain name is being used in connection with a fraudulent phishing scheme. Complainant provides evidence of email messages sent to one of its customers using the domain name, attempting to induce the customer to transfer funds to a bank account apparently controlled by Respondent. Complainant notes that the subject line of one such email included the correct spelling of Complainant's name ("Carvajal") instead of the misspelled version that appears within the disputed domain name. Complainant states that Respondent is not commonly known by the disputed domain name; has no relationship, affiliation, or other connection with Complainant; and is not authorized, licensed, or otherwise permitted to use Complainant's mark.
Complainant contends on the above grounds that the disputed domain name <carvajallpharmacy.com> is confusingly similar to the CARVAJAL PHARMACY mark in which Complainant asserts common law rights; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a), and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
Complainant asserts common law trademark rights in CARVAJAL PHARMACY, which it has used in connection with its pharmacy services for many years. The Panel notes that it would have been helpful for Complainant to provide more concrete evidence of the promotion and recognition of its putative mark, to demonstrate that the mark has in fact acquired the secondary meaning required for common law rights. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, supra, § 1.3. Nonetheless, at least in the absence of any challenge by Respondent (and considering the fact that Respondent's conduct is obviously targeted at Complainant), the Panel considers the evidence submitted by Complainant sufficient to demonstrate common law rights in the mark for purposes of paragraph 4(a)(i) of the Policy. See, e.g., Mary Washington Healthcare v. Domain Administrator / Fundacion Privacy Services LTD, FA 1976877 (Forum Jan. 13, 2022) (finding common law rights in MARY WASHINGTON HEALTHCARE arising from continuous and extensive use and widespread recognition); Carvajal Technology Group, LLC v. Mark Carvajal / Carvajal Technology Group, FA 1908193 (Forum Sept. 17, 2020) (finding common law rights in CARVAJAL TECHNOLOGY GROUP).
The disputed domain name <carvajallpharmacy.com> corresponds to Complainant's CARVAJAL PHARMACY mark, but for the omission of a space and the addition of a second letter "L" and the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Morgan Stanley v. Sunky Jaja, FA 1981067 (Forum Feb. 16, 2022) (finding <morgenstanlley.com> confusingly similar to MORGAN STANLEY); Carvajal Technology Group, LLC v. Mark Carvajal / Carvajal Technology Group, supra (finding <carvajaitech.com> confusingly similar to CARVAJAL TECHNOLOGY GROUP); Boston Green Goods Inc. v. Dealwave, FA 1115186 (Forum Jan. 15, 2008) (finding <alllergybuyersclub.com> confusingly similar to ALLERGY BUYERS CLUB). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name corresponds to Complainant's registered mark and its sole apparent use has been in connection with a fraudulent phishing scheme aimed at a customer of Complainant. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Carvajal Technology Group, LLC v. Mark Carvajal / Carvajal Technology Group, supra (finding lack of rights or interests in similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent used a privacy registration service and at least partially fictitious underlying registration data to register a domain name corresponding to Complainant's name and common law mark, and has used the domain name to impersonate Complainant in connection with a fraudulent phishing scheme. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Carvajal Technology Group, LLC v. Mark Carvajal / Carvajal Technology Group, supra (finding bad faith registration and use in similar circumstances). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <carvajallpharmacy.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: July 6, 2022
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