TOP RX, LLC v. Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org
Claim Number: FA1702001715814
Complainant is TOP RX, LLC (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <toprxpills.com>, registered with Genious Communications SARL/AU.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 3, 2017; the Forum received payment on February 3, 2017.
On February 4, 2017, Genious Communications SARL/AU confirmed by e-mail to the Forum that the <toprxpills.com> domain name is registered with Genious Communications SARL/AU and that Respondent is the current registrant of the name. Genious Communications SARL/AU has verified that Respondent is bound by the Genious Communications SARL/AU 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 February 8, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 2017 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@toprxpills.com. Also on February 8, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 9, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 registered the TOP RX mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,812,886, registered Feb. 10, 2004). See Amended Compl., at Attached Ex. D. Respondent’s <toprxpills.com> domain is confusingly similar as it incorporates the entire TOP RX mark and adds the generic and descriptive term “pills” and the generic top-level domain (“gTLD”) “.com”.
Respondent has no rights or legitimate interests in <toprxpills.com>. There is no evidence that Respondent listed in the WHOIS information is commonly known by Complainant’s mark, nor has Complainant licensed or otherwise permitted Respondent to use the Mark or use a domain name with the mark. The disputed domain name resolves to a website titled “TrustPharmacy World Famous Pharmacy” and offers goods that directly compete with Complainant. See Amended Compl. at Attached Ex. E. Respondent attempts to pass itself off as Complainant and trade off Complainant’s goodwill and commercially benefit, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered and is using the <toprxpills.com> in bad faith. Respondent uses Complainant’s marks to mislead users into believing that they are part of Complainant’s business. Additionally, Respondent’s use of the mark to confuse users seeking Complainant for commercial benefit demonstrates bad faith. Finally, Respondent must have had actual or constructive knowledge of Complainant’s marks based on Complainant’s long-term, widespread and prominent use of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered <toprxpills.com> on January 8, 2016.
The Panel finds that the disputed domain name, <toprxpills.com> is confusingly similar to Complainant’s trademark, TOP RX; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
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 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 (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.”).
The Panel finds that the disputed domain name, <toprxpills.com> is confusingly similar to Complainant’s valid and subsisting trademark, TOP RX. Complainant has adequately plead its rights and interests in that trademark. Respondent arrives at the disputed domain name by simply adding the generic word “pills” to Complainant’s trademark and then appending the g TLD “.com.” This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent has no permission or license to register the disputed domain name. Respondent is not commonly known by the disputed domain name. The WHOIS identifies “Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org” as the registrant. See Amended Compl., at Attached Ex. A. As such, the record is devoid of evidence to demonstrate that Respondent is known by the disputed domain name.
The disputed domain name apparently resolves in a webpage that offers goods and services that directly competes with Complainant. Using a confusingly similar domain name to compete with a complainant shows a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant argues that Respondent uses the disputed domain name that resolves to a website titled “TrustPharmacy World Famous Pharmacy” and offers pharmaceuticals that directly compete and interfere with Complainant’s business. See Amended Compl. at Attached Ex. E. Accordingly, the Panel finds that the <toprxpills.com> domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor is it a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
Respondent apparently attempts to pass itself off as Complainant to commercially benefit from its notoriety and confuse users into believing they are purchasing from Complainant. This is further evidence that Respondent lacks a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the domain name to engage in the sale of medications that Complainant also sells while using Complainant’s mark in Respondent’s domain name.
The Panel, therefore, finds that Respondent has no rights or legitimate interests in or to the disputed domain name.
The Panel further finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Respondent apparently uses Complainant’s trademark to mislead users into believing that Respondent is part of Complainant’s business. Respondent is apparently passing itself off as Complainant to capitalize on Complainant’s notoriety. This is evidence of bad faith use and registration. See Alticor Inc. v. Eunsook Wi, FA 1101001369539
(Forum Mar. 8, 2011) (finding that respondent’s unauthorized use
of a domain name incorporating AMWAY mark resulted in respondent’s
commercial benefit by attracting users to his site in a manner that creates a
likelihood of confusion and constitutes bad faith). The disputed domain resolves to a site that uses Complainant’s mark to engage in the same business, thus potentially confusing users into believing that Respondent has authorized it to engage in that business. See Amended Compl. at Attached Ex. E.
As such, the Panel finds that Respondent registered and uses the <toprxpills.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Finally, the Panel finds that Respondent had actual prior knowledge of Complainant’s trademark and its rights thereto. Based on Complaint’s long-term use of the trademark and the totality of the circumstances, the Panel finds that Respondent must have had actual knowledge of Complainant’s marks and its rights thereto.
The Panel, therefore, finds that Respondent has engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <toprxpills.com> domain name transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: March 9, 2017
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