JanDrugs Inc. v. Quasar Domains and Louis Freeman
Claim Number: FA1002001305997
Complainant is JanDrugs Inc. (“Complainant”), represented by Steven
M. Levy,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <jansdrugs.com>, registered with Directnic, Ltd.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 2, 2010. With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitted an “opt-in” form available on the Forum’s website.
On February 2, 2010, Directnic, Ltd confirmed by e-mail to the National Arbitration Forum that the <jansdrugs.com> domain name is registered with Directnic, Ltd and that Respondent is the current registrant of the name. Directnic, Ltd has verified that Respondent is bound by the Directnic, Ltd registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 1, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@jansdrugs.com. Also on February 2, 2010, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 9, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
Complainant operates a retail
pharamcy under its JANDRUGS mark.
Complainant has used its
JANDRUGS mark in commerce since April of 2003, when it began marketing its
online sale of pharmaceuticals.
Complainant has employed numerous
advertisements to market its pharmaceutical products under the JANDRUGS mark
dating from May 5, 2003.
Complainant conducts its
sales of pharmaceuticals at the <jandrugs.com> and <jandrugs.ca>
websites.
Complainant generates significant sales revenue as a result of the advertising and marketing it has conducted.
The JANDRUGS mark serves to identify and indicate the source of Complainant’s goods and services to the consuming public, and to distinguish its goods and services from those of others.
Owing to Complainant’s long usage and promotion of the JANDRUGS
mark, it has become well-known to, and widely recognized by consumers.
Complainant has registered
its JANDRUGS mark with the United States Patent and Trademark Office (“USPTO”)
(Reg. No. 3,305,900, issued Oct. 9, 2007).
Respondent registered the <jansdrugs.com> domain name on September 10, 2003.
The disputed domain name resolves to a website that
redirects Internet users to the <netprescribe.com> domain name which
sells pharmaceutical products in
competition with those of Complainant.
Respondent’s <jansdrugs.com> domain name is confusingly similar to Complainant’s JANDRUGS mark.
Respondent is not commonly known by the disputed domain name.
Respondent has engaged in typo-squatting in forming the disputed domain name.
Respondent does not have any rights to or legitimate interests in the <jansdrugs.com> domain name.
Respondent registered and uses the <jansdrugs.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. 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.
Complainant has established rights in the JANDRUGS mark for purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO. See Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that a complainant’s federal trademark registration established its rights in the mark under Policy ¶ 4(a)(i)); see also Paisley Park Enters v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that a complainant established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
However, because Complainant’s registration of the JANDRUGS mark antidates Respondent’s registration of the disputed domain name, Complainant also asserts common law rights in the JANDRUGS mark through its continuous use of the mark dating from April of 2003 and resulting establishment of secondary meaning in the mark. Complainant has provided evidence of its continuous use of the mark, by which it has acquired secondary meaning sufficient to establish common law rights in the mark under Policy ¶ 4(a)(i), and predating Respondent’s September 10, 2003 registration of the disputed domain name. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a complainant need not own a trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in a mark under Policy ¶ 4(a)(i)); see also Jerry Damson, Inc. v. Tex. Int’l Prop Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that a complainant had common law rights in the JERRY DAMSON ACURA mark because it provided evidence of its continuous use of the mark since 1989 in connection with a car dealership); further see Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding that, while a complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”).
Complainant contends that the <jansdrugs.com> domain name is confusingly similar to Complainant’s JANDRUGS mark. The disputed domain name merely adds the letter “s” and the generic top-level domain “.com” to the mark. Neither of these alterations is sufficient, singly or together, to distinguish the disputed domain name from Complainant’s mark. Therefore, the <jansdrugs.com> domain name is confusingly similar to Complainant’s JANDRUGS mark pursuant to Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004):
The mere addition of a single letter to the
complainant’s mark does not remove the respondent’s domain names from the realm
of confusing similarity in relation to the complainant’s mark pursuant to
Policy ¶4(a)(i).
See also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶4(a)(i).
Complainant alleges Respondent lacks rights to and legitimate interests in the disputed domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it has rights to or legitimate interests in the contested domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that a “complainant must first make a prima facie case that [a] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by a complainant that a respondent has no right or legitimate interest in a disputed domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists).
Complainant
has established a prima facie case
under this head of the Complaint, and Respondent, for its part, has failed to
submit a Response in this proceeding. Owing
to Respondent’s failure to respond, we may presume that Respondent does not
have any rights to or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed
that Respondent lacks all rights and legitimate interests in the disputed
domain name.
See also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights to or legitimate interests in a contested domain name where a respondent failed to respond to a complaint filed under the Policy). We will nonetheless examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by observing that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii). Moreover, the relevant WHOIS information identifies the registrant of the disputed domain name only as “Quasar Domains and Louis Freeman” and there is no evidence in the record to suggest that Respondent is commonly known by the disputed domain name. Therefore, we conclude that Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the pertinent WHOIS information, as well as other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the domain name).
We also note that there
is no dispute as to Complainant’s allegation to the effect that the disputed domain name redirects Internet users to a
website
offering the products and services of Complainant’s competitors in the
pharmaceutical business. Respondent’s
use of the disputed
domain name to promote Complainant’s competitors is neither a bona fide offering of goods or services
under Policy ¶4(c)(i) nor a legitimate noncommercial
or fair use under Policy ¶4(c)(iii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002):
Respondent is not using the disputed domain name in
connection with a bona fide offering of goods and services because Respondent
is using the domain name to divert Internet users to…[a website]… where
services that compete with Complainant are advertised.
See also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that a respondent was not using domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use where that respondent used the domain names to divert Internet users to a website that offered services in competion with those offered by a complainant under its marks).
Additionally, Complainant alleges that Respondent has engaged in typo-squatting, which occurs where a respondent purposefully includes common typographical errors in the mark portion of a disputed domain name to capitalize on the tendency of Internet users to commit those errors. We are satisfied that Respondent has engaged in typo-squatting by misspelling Complainant’s mark in the disputed domain name, which is further evidence Respondent does not have rights to or legitimate interests in the disputed domain name pursuant to Policy ¶4(a)(ii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of a complainant's LTD COMMODITIES mark, and that this showing of:
‘typosquatting’ is evidence that Respondent lacks rights or
legitimate interests in the disputed domain names.
See also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that a respondent lacked rights to or legitimate interests in disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <jansdrugs.com>
domain name redirects Internet users to the domain name <netprescribe.com>,
which offers pharmaceutical products that compete with Complainant’s
business. This use of the domain name constitutes
disruption of complainant’s business, which is evidence of bad faith
registration and use of the domain under Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure,
Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding that a respondent registered a domain name to
disrupt the business of a complainant, a competitor of that respondent); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003):
Respondent registered a domain name
confusingly similar to Complainant's mark to divert Internet users to a
competitor's website. It is a reasonable inference that Respondent's purpose of
registration and use was to either disrupt or create confusion for
Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).
Respondent is using its <jansdrugs.com>
domain name, which is confusingly similar to Complainant’s JANDRUGS mark, to
profit from the goodwill Complainant has established in its mark. This use creates confusion among Internet
users as to the possibility of Complainant’s affiliation with the products
being marketed on the resolving website.
Therefore, we conclude that Respondent’s use of the domain constitutes
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003): “Respondent used <land-cruiser.com> to
advertise its business, which sold goods in competition with Complainant. This
establishes bad faith as defined in Policy ¶ 4(b)(iv).”);
see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933
(Nat. Arb. Forum Nov. 21, 2002) (finding that a respondent registered and used a
domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because that respondent
was using the domain name to attract Internet users to its commercial website).
Finally, we have
already concluded that Respondent has engaged in typo-squatting in forming the
disputed domain name, which is further evidence Respondent registered and is
using the <jansdrugs.com>
domain name in bad faith pursuant to Policy ¶4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003):
Respondent’s registration and use of [the <zonelarm.com> domain
name] that capitalizes on the typographical error of an Internet user is
considered typosquatting. Typosquatting, itself is evidence of bad faith
registration and use pursuant to Policy ¶4(a)(iii).
See also K.R. USA, INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the respondent’s registration and use of domain names the <philadelphiaenquirer.com> and <tallahassedemocrat.com> capitalized on the typographical error of Internet users seeking a complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evidencing typo-squatting, and, therefore, bad faith pursuant to Policy ¶4(a)(iii)).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <jansdrugs.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 23, 2010
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