GlobalRx, Inc. v. destinos universales
Claim Number: FA0503000445549
Complainant is GlobalRx, Inc. (“Complainant”),
represented by Daniel T. Tower 4700
Six Forks Rd. Suite 150, Raleigh, NC 27609. Respondent is destinos universales (“Respondent”), 150 sur y 75 oeste de canal 7,
sabana oeste, San Jose 1000, Costa Rica.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <globalrxmed.com>, registered with GoDaddy.com.
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
23, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 28, 2005.
On
March 24, 2005, GoDaddy.com confirmed by e-mail to the National Arbitration
Forum that the domain name <globalrxmed.com> is registered with GoDaddy.com
and that Respondent is the current registrant of the name. GoDaddy.com has
verified that Respondent is bound by the GoDaddy.com 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
April 1, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 21,
2005 by which Respondent could file a response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@globalrxmed.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
April 25, 2005, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Louis E.
Condon 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.” 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 <globalrxmed.com>
domain name is confusingly similar to Complainant’s GLOBALRX mark.
2. Respondent does not have any rights or
legitimate interests in the <globalrxmed.com> domain name.
3. Respondent registered and used the <globalrxmed.com>
domain name in bad faith.
B.
Respondent failed to submit a response in this proceeding.
Complainant is
an international online and mail order pharmacy. Since 1996, Complainant has
used the GLOBALRX mark continuously in commerce as a source identifier for the
pharmaceutical goods and services that Complainant provides. Complainant holds
a trademark registration on the Principal Register of the United States Patent
and Trademark Office for the GLOBALRX mark, Reg. No. 2,147,528 (registered
March 31, 1998). This trademark registration has become incontestable pursuant
to 15 U.S.C. § 1115(b). Complainant also operates a website at the
<globalrx.com> domain name.
Respondent
registered the <globalrxmed.com> domain name on July 27, 2004. The
domain name resolves to an online pharmacy that competes with Complainant.
Respondent has held itself out to consumers as Complainant while soliciting
business. Respondent is not licensed or authorized to use Complainant’s marks.
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.
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.
Complainant has
established that it has rights in the GLOBALRX mark through registration with
the United States Patent and Trademark Office and through continuous use of the
mark in commerce since 1996. See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive and have acquired
secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that panel decisions have held that
registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive, and
stating that a respondent has the burden of refuting this assumption).
The <globalrxmed.com> domain name is
confusingly similar to Complainant’s GLOBALRX mark because it merely adds the
“.com” generic top-level domain and the term “med,” an abbreviation of
“medicine” or “medication,” which are words that are descriptive of products
that Complainant offers, to Complainant’s mark. The addition of a generic
top-level domain and a descriptive abbreviation do not distinguish the disputed
domain name from Complainant’s mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “.net” or “.com” does
not affect the domain name for the purpose of determining whether it is
identical or confusingly similar); see also Space
Imaging LLC v. Brownell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combined the complainant’s mark with a generic term
that had an obvious relationship to the complainant’s business); see also Parfums Christian Dior v. 1 Netpower, Inc.,
D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the
descriptive words “fashion” or “cosmetics” after the trademark were confusingly
similar to the trademark); see also Kelson
Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that
<kelsonmd.com> is identical or confusingly similar to the complainant’s
federally registered service mark, “Kelson”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has failed to submit a response in this proceeding. In the absence of a
response, the Panel accepts as true all reasonable allegations contained in the
Complaint unless clearly contradicted by the evidence. Complainant asserts that
Respondent lacks rights and legitimate interests in the <globalrxmed.com>
domain name. Complainant’s submission has gone unopposed and its arguments
unrefuted. Because Respondent has failed to submit a response, it has failed to
propose any set of circumstances that could substantiate its rights or
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See
Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
respondent failed to invoke any circumstance which could demonstrate any rights
or legitimate interests in the domain name); see also 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).
Respondent
is not using the disputed domain name in connection with a bona fide
offering of goods or services under Policy ¶ 4(c)(i), nor is Respondent making
a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). Respondent is using the disputed domain name to redirect
unsuspecting Internet users to a website that provides services that are in
competition with Complainant’s pharmacy services. The Panel infers that Respondent
commercially benefits from this diversion. Respondent makes opportunistic use
of Complainant’s mark in order to capitalize on the goodwill associated with
the GLOBALRX mark. Thus, Respondent fails to establish rights or legitimate
interests in the domain names. See Ticketmaster Corp. v. DiscoverNet, Inc.,
D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where
the respondent generated commercial gain by intentionally and misleadingly
diverting users away from the complainant’s site to a competing website); see
also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“[I]t would
be unconscionable to find a bona fide offering of services in a
respondent’s operation of [a] web-site using a domain name which is confusingly
similar to the Complainant’s mark and for the same business.”).
No
evidence before the Panel suggests that Respondent is commonly known by the <globalrxmed.com> domain name
under Policy ¶ 4(c)(ii). Respondent’s WHOIS information indicates that the
registrant of the disputed domain name is known as “Globalrxmed.com c/o destinos universales.” Despite this fact,
Respondent has failed to establish that it is known by the confusingly similar
second-level domain that infringes on Complainant’s GLOBALRX mark. Moreover,
Respondent is not authorized or licensed to use Complainant’s mark for any
purpose. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was
not “commonly known by” the <shantiyogaworks.com> domain name despite
listing its name as “Shanti Yoga Works” in its WHOIS contact information
because there was no evidence “that
Respondent was ever ‘commonly known by’ the disputed domain name prior to its
registration of the domain name”); see also RMO, Inc. v. Burbridge,
FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to
require a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
is using a confusingly similar variation of Complainant’s well-known GLOBALRX
mark within the <globalrxmed.com>
domain name to ensnare unsuspecting Internet users. Respondent then redirects
the users to its commercial website. Thus, the Panel finds that Respondent
registered and used the domain name in bad faith under Policy ¶ 4(b)(iv). See
G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum
Nov. 21, 2002) (finding that the respondent registered and used the domain name
in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22,
2002) (finding that, if a respondent profits from its diversionary use of a
complainant’s mark when the domain name resolves to commercial websites and the
respondent fails to contest the complaint, it may be concluded that the
respondent is using the domain name in bad faith pursuant to Policy ¶
4(b)(iv)).
Respondent
registered and used a domain name that is confusingly similar to Complainant’s
mark for the purpose of directing Internet users to a website that offers
services that directly compete with Complainant’s pharmacy services.
Respondent’s use of the <globalrxmed.com>
domain name establishes that Respondent registered the domain name for the
purpose of disrupting the business of a competitor, which evidences bad faith
registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S.
Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the
respondent acted in bad faith by attracting Internet users to a website that
competed with the complainant’s business); see
also EthnicGrocer.com, Inc. v.
Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith
where the respondent’s domain names passed users through to the respondent’s
competing business); see also Puckett v. Miller, D2000-0297
(WIPO June 12, 2000) (finding that the respondent diverted business from the
complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration of the domain name, additional factors
can also be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that, in determining if a
domain name has been registered in bad faith, a panel must look at the
“totality of circumstances”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph
4(b) are intended to be illustrative, rather than exclusive.”).
Respondent has
identified itself as Complainant while soliciting new customers. Moreover, it
has registered a domain name confusingly similar to Complainant’s mark for the
purpose of operating a competing business. The Panel finds that Respondent has
deliberately attempted to pass itself off as Complainant for commercial gain.
Passing off is strong evidence of bad faith registration and use under Policy ¶
4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat.
Arb. Forum Dec. 18, 2001) (finding that the respondent’s use of
<monsantos.com> to misrepresent itself as the complainant and
to provide misleading information to the public supported a finding
of bad faith); see also Fendi
Adele S.r.l. v. O’Flynn, D2000-1226 (WIPO Nov. 13, 2000) (transferring the
domain name <fendiboutique.com> where the likelihood of confusion with
the trademark FENDI was increased since the complainant’s fashion products were
typically sold in boutiques and where the respondent obviously tried to pass
himself off as a legitimate source for FENDI products).
Respondent’s
registration of the disputed domain name, which incorporates Complainant’s
well-known registered mark and simply adds an abbreviation of a descriptive
term relevant to Complainant’s business, suggests that Respondent knew of
Complainant’s rights in the GLOBALRX mark. Additionally, Complainant’s
trademark registration, on file at the United States Patent and Trademark
Office, gave Respondent constructive notice of Complainant’s mark. Moreover,
Respondent’s knowledge of Complainant’s rights in the mark is evidenced by the
fact that its website competes with Complainant. Thus, the Panel finds that
Respondent chose the <globalrxmed.com>
domain name based on the distinctive and well-known qualities of Complainant’s
mark, which evidences bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002)
(finding that because the link between the complainant’s mark and the content
advertised on the respondent’s website was obvious, the respondent “must have
known about Complainant’s mark when it registered the subject domain name”); see
also Reuters Ltd. v. Teletrust IPR
Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the respondent
demonstrated bad faith where the respondent was aware of the complainant’s
famous mark when registering the domain name as well as aware of the deception
and confusion that would inevitably follow if he used the domain names); see
also Samsonite Corp. v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of
bad faith includes actual or constructive knowledge of a commonly known mark at
the time of registration); see also Orange Glo Int’l v. Blume, FA 118313
(Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <globalrxmed.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: May 6, 2005
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