GlobalRx, Inc. v. Keshvar Zeinali
Claim Number: FA1108001405044
Complainant is GlobalRx, Inc. (“Complainant”), represented by Daniel T. Tower of Daniel T. Tower, P.A., North Carolina, USA. Respondent is Keshvar Zeinali (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <globalrxpharmacy.org>, registered with Melbourne IT, Ltd.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically August 26, 2011; the National Arbitration Forum received payment August 29, 2011.
On August 29, 2011, Melbourne IT, Ltd confirmed by e-mail to the National Arbitration Forum that the <globalrxpharmacy.org> domain name is registered with Melbourne IT, Ltd and that Respondent is the current registrant of the name. Melbourne IT, Ltd verified that Respondent is bound by the Melbourne IT, Ltd registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 21, 2011, 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@globalrxpharmacy.org. Also on September 1, 2011, 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 September 26, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
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 (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 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:
1. The Domain name that Respondent registered, <globalrxpharmacy.org>, is confusingly similar to Complainant’s GLOBALRX mark.
2. Respondent has no rights to or legitimate interests in the <globalrxpharmacy.org> domain name.
3. Respondent registered and used the <globalrxpharmacy.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, GlobalRx, Inc., is an international mail-order pharmacy that has been in operation since 1996. Complainant has used its GLOBALRX mark as a source identifier for the pharmaceutical goods that Complainant provides. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) and with the Canadian Intellectual Property Office (“CIPO”) for its GOLBALRX mark, as follows:
USPTO (Reg. No. 2,147,528 registered March 31, 1998) and
CIPO (Reg. No. TMA625,862 registered November 18, 2004).
Respondent, Keshvar Zeinali, registered the <globalrxpharmacy.org> domain name April 8, 2008. The disputed domain name resolves to Respondent’s website that sells pharmaceutical goods and services that compete with Complainant’s pharmaceutical products.
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."
Given 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 will draw such inferences as the Panel 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 the 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 Complainant to 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.
Complainant alleges that it has established rights in its GLOBALRX mark. In support of this allegation, Complainant includes evidence of its trademark registrations with the USPTO and CIPO for its GLOBALRX mark as follows:
USPTO (Reg. No. 2,147,528 registered March 31, 1998) and
CIPO (Reg. No. TMA625,862 registered November 18, 2004).
In Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007), and Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006), the panels determined that a trademark registration with a national trademark authority is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). The Panel finds that Complainant satisfied Policy ¶ 4(a)(i) by showing rights in its GLOBALRX mark.
Complainant asserts that Respondent’s <globalrxpharmacy.org> domain name is confusingly similar to Complainant’s GLOBALRX mark. Complainant claims that the only difference between the mark and domain name is the addition of the descriptive term “pharmacy.” In Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005), and Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001), the panels found that the addition of a descriptive term failed to adequately distinguish a disputed domain name from a complainant’s mark. The Panel finds that the disputed domain name also contains the generic top-level domain (“gTLD”) “.com,” which, in Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), and Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000), the panels held was irrelevant to a Policy ¶ 4(a)(i) analysis. The Panel finds that Respondent’s <globalrxpharmacy.org> domain name is confusingly similar to Complainant’s GLOBALRX mark for the purpose of Policy ¶ 4(a)(i); Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in any of the <globalrxpharmacy.org> domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case to support its allegations under a Policy ¶ 4(a)(ii) analysis. In this case, the Panel finds that Complainant made a sufficient prima facie case. In Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), the panel held that a respondent’s failure to respond to the Complaint allows the Panel to make an inference that a respondent does not have rights or legitimate interests in a disputed domain name. However, this Panel still examines the record before determining whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the <globalrxpharmacy.org> domain name. Complainant argues that Respondent has never been the owner or licensee of the GLOBALRX mark. The WHOIS information identifies the registrant of the disputed domain name as “Keshvar Zeinali.” Respondent did not present any evidence to show that it is commonly known by the <globalrxpharmacy.org> domain name. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), and Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panels found that a respondent is not commonly known by a disputed domain name if it does not have the complainant’s permission to use the mark, the WHOIS information is not similar to the mark, and no evidence in the record suggests that the respondent was known by the domain name. In accordance with these past decisions, this Panel holds that Respondent is not commonly known by the <globalrxpharmacy.org> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant claims that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <globalrxpharmacy.org> domain name. Complainant asserts that Respondent is using the disputed domain name in connection with the marketing and sale of pharmaceutical products and services that compete with Complainant’s similar products and services. In Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006), and Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), the panels held that the use of a confusingly similar disputed domain name to compete with a complainant’s business was neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of a disputed domain name. The Panel finds accordingly relative to the <globalrxpharmacy.org> domain name.
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANNPolicy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <globalrxpharmacy.org> domain name to disrupt Complainant’s pharmaceutical business. Complainant alleges that Respondent’s conduct diverts Internet users from Complainant’s website and to Respondent’s competing website. In DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005), and Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006), the panels found that a respondent’s registration and use of a confusingly similar disputed domain name to compete with a complainant was evidence of bad faith. This Panel finds that Respondent registered and used the <globalrxpharmacy.org> domain name in bad faith under Policy ¶ 4(b)(iii).
According to Complainant, Respondent also registered and uses the <globalrxpharmacy.org> domain name for the purpose of attracting Internet users to Respondent’s website by creating confusion as to Complainant’s affiliation with such site. Complainant asserts that it has received calls from customers of Respondent that thought Respondent was associated with Complainant. Complainant claims that Respondent commercially benefits from the sale of the pharmaceutical products and services through its website. In Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001), and Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000), the panels found that a respondent’s registration and use of a disputed domain name to commercially benefit by creating confusion as to a complainant’s affiliation with a disputed domain name was evidence of bad faith registration and use. Therefore, according to Policy ¶ 4(b)(iv), the Panel finds that Respondent registered and uses the <globalrxpharmacy.org> domain name in bad faith.
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the GLOBALRX mark. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel nonetheless finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) because the Panel finds that Respondent had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <globalrxpharmacy.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 10, 2011.
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