McKesson Corporation v. Bests, LLC
Claim Number: FA1304001496535
Complainant is McKesson Corporation (“Complainant”), represented by Thomas G. Traylor, Georgia, USA. Respondent is Bests, LLC (“Respondent”), Idaho, USA.
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name(s) at issue is/are <mckesson.net>, registered with Fabulous.com Pty. 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 25, 2013; the National Arbitration Forum received payment on April 25, 2013.
On May 2, 2013, Fabulous.com Pty. Ltd. confirmed by e-mail to the National Arbitration Forum that the <mckesson.net> domain name is registered with Fabulous.com Pty. Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty. Ltd. has verified that Respondent is bound by the Fabulous.com Pty. Ltd. 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 May 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 2013 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@mckesson.net. Also on May 3, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 May 31, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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. Respondent’s <mckesson.net> domain name, the domain name at issue, is confusingly similar to Complainant’s MCKESSON mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, McKesson Corporation, delivers vital medicines, medical supplies, and health care information technology solutions that though the lives of patients in every health care setting. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for MCKESSON mark (e.g., Reg. No. 1,382,620, registered February 11, 1986). Complainant’s mark and Respondent’s <mckesson.net> domain name are identical, except for the generic top-level domain (“gTLD”) of “.net. Respondent does not own any trademark or service mark registrations encompassing the domain name, or any variations thereof. Respondent is using the domain name to maintain a “domain parking” website that is designed to generate “click-through” advertising revenue by confusing Internet users and search engines. Respondent has engaged in a pattern of cybersquatting activities. Respondent’s conduct directly disrupts Complainant’s ability to conduct business at the domain name using the marks. Respondent’s webpage for the domain name consists entirely of click-through advertisements. Respondent submitted an email to the Forum stating, “I don’t have time to read all of that. Can you dumb it down for me?” The Panel does not consider this a Response and the proceedings will be conducted as if it were a default case. Respondent registered the <mckesson.net> domain name on August 16, 2006.
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(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 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.”).
Complainant, McKesson Corporation, delivers vital medicines, medical supplies, and health care information technology solutions that though the lives of patients in every health care setting. Complainant is the owner of trademark registrations with the USPTO for MCKESSON mark (e.g., Reg. No. 1,382,620, registered February 11, 1986). Respondent appears to reside within the United States. Accordingly, the Panel finds that Complainant’s registration of the MCKESSON mark with the USPTO proves its rights in the mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant’s mark and Respondent’s <mckesson.net> domain name are identical, except for the gTLD of “.net.” The addition of a gTLD does not negate identity under Policy ¶ 4(a)(i). See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to the complainant’s MYSTIC LAKE trademark and service mark). Therefore, the Panel finds that Respondent’s <mckesson.net> domain name is identical to Complainant’s MCKESSON mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent does not own any trademark or service mark registrations encompassing the domain name, or any variations thereof. The USPTO website does not list any registered trademarks or service marks owned by Respondent. The WHOIS information provided for the disputed domain name identifies “Bests, LLC” as the registrant. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent is using the domain name to maintain a “domain parking” website that is designed to generate “click-through” advertising revenue by confusing Internet users and search engines. Respondent’s disputed domain name resolves to a website featuring competing hyperlinks, including “Relay Health,” “Health Mgmt Certificate,” “HealthShare with IHE &,” and more. A domain name that resolves to an advertising based domain parking website that offers links to competing products and services of the complainant is not a bona fide offering of goods or services or a legitimate fair use. Respondent’s use of the domain name to display competing hyperlinks is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Even though the Panel is finding in favor of Complainant on this element of the Policy, it is noted that Respondent registered the domain name at issue in August of 2006, nearly seven years ago. Had the Respondent properly filed a Response and defended on the grounds of laches, this Panel would have carefully considered that defense. If the website associated with <mckesson.net> has caused such customer confusion and disruption in business to a very large company such as Complainant, one would have supposed that this proceeding would have been brought long before this year.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent has engaged in a pattern of cybersquatting activities. See generally Lonrho Africa Limited v. Bests, LLC, D-2011-0925 (WIPO Arb. and Med. Center July 16, 2011). In that proceeding, the arbitrator found Respondent to be cybersquatting and ordered the domain name to be transferred to the complainant. Evidence of past UDRP cases where Respondent was ordered to transfer disputed domain names may be sufficient to establish bad faith use and registration. Respondent’s prior UDRP proceedings have found evidence of bad faith use and registration of the disputed domain names pursuant to Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Respondent’s conduct directly disrupts Complainant’s ability to conduct business at the website associated with the disputed domain name. Respondent’s domain name that resolves to a website that offers links to competing products and services. Consumers who search online for Complainant’s goods and services may be diverted to Respondent’s website, which will result in consumer confusion. Therefore, Respondent’s use of the domain name disrupts Complainant’s business according to Policy ¶ 4(b)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”).
Respondent’s webpage for the domain name consists entirely of click-through advertisements. Respondent’s disputed domain name links to a website featuring hyperlinks of Complainant’s competitors, including “AARP Health Information,” “Healthcare Jobs,” “All Healthcare Jobs,” and others. Respondent’s use of the domain name to display pay-per-click ads unrelated to Complainant is evidence of bad faith use and registration. Accordingly, the Panel concludes that Respondent’s use of the disputed domain name to attract consumers to its own website for commercial gain constitutes attraction for commercial gain, showing bad faith use and registration under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mckesson.net> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 2, 2013
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