5127173 Manitoba Ltd. carrying on business as Canada Drugs IT v. Blake Financial Group
Claim Number: FA0604000671542
Complainant is 5127173 Manitoba Ltd. carrying on business as Canada Drugs IT, 24 Terracon Place, Winnipeg, MB R2J 4G7 Canada (“Complainant”). Respondent is Blake Financial Group (“Respondent”), 5726 Marlin Rd., Suite 413, Chattanooga, TN, 37411.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <canadadrugs.name>, registered with Go Daddy Software, Inc.
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 April 4, 2006; the National Arbitration Forum received a hard copy of the Complaint April 6, 2006.
On April 4, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <canadadrugs.name> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and thereby has 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 12, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 2, 2006, 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@canadadrugs.name by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 8, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <canadadrugs.name>, is identical to Complainant’s CANADA DRUGS mark.
2. Respondent has no rights to or legitimate interests in the <canadadrugs.name> domain name.
3. Respondent registered and used the <canadadrugs.name> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, 5127173 Manitoba Ltd. carrying on business as
Canada Drugs IT, has continuously operated an international prescription service
pharmacy at the <canadadrugs.com> domain name since April of 2001. Complainant operates under the CANADA DRUGS
mark. Since 2001, Complainant has spent
over $5 million marketing its services through various media, including radio,
newspapers, magazines, and television commercials. Complainant has over 100,000 clients, offers over 2,700 brand
name prescription and over-the-counter products, and fills almost 2,000
prescriptions per day.
Complainant registered the following marks with the Canada Intellectual Property Office (“CIPO”): CANADA DRUGS (Reg. No. TMA581,915 issued May 20, 2003) and CANADADRUGS.COM (Reg. No. TMA581,899 issued May 20, 2003).
Respondent registered the <canadadrugs.name> domain name November 20, 2005. Respondent’s domain name redirects Internet users to the <newpartd.com> domain name, which advertises Respondent’s insurance services. After Complainant contacted Respondent regarding the disputed domain name, Respondent offered to sell the domain name to Complainant for $10,000.
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 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 established with extrinsic proof in this
proceeding that it obtained legal rights in the CANADA DRUGS mark through
registering the mark with the CIPO. See
Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also Koninklijke
KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the
Policy does not require that the mark be registered in the country in which the
respondent operates; therefore it is sufficient that the complainant can
demonstrate a mark in some jurisdiction).
The disputed domain name that Respondent registered, <canadadrugs.name>, is identical to Complainant’s CANADA DRUGS mark pursuant to Policy ¶ 4(a)(i), because it fully incorporates the mark and merely eliminates the space between words and adds the generic top-level domain (“gTLD”) “.name.” Panels have consistently held that the addition of gTLDs and the elimination of spaces between words do not sufficiently differentiate a domain name from a mark. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Planned Parenthood Fed’n of Am. v. Bucci, 42 U.S.P.Q. 2d 1430 (S.D.N.Y. 1997), cert. denied 525 U.S. 834 (1998) (finding plaintiff’s PLANNED PARENTHOOD mark and defendant’s <plannedparenthood.com> domain name nearly identical).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate
interests in the mark contained in its entirety within the domain name that
Respondent registered. Complainant
alleged that Respondent lacks rights and legitimate interests in the disputed
domain name. Complainant has the
initial burden of proof in establishing that Respondent lacks rights or
legitimate interests in the domain name.
Once Complainant makes a prima facie case in support of its
allegations, the burden then shifts to Respondent to show it does have rights
or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228
(WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere
assertion by the complainant that the respondent has no right or legitimate
interest is sufficient to shift the burden of proof to the respondent to
demonstrate that such a right or legitimate interest does exist); see also
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the
complainant asserts that the respondent has no rights or legitimate interests
with respect to the domain, the burden shifts to the respondent to provide
“concrete evidence that it has rights to or legitimate interests in the domain
name at issue”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the
disputed domain name. See Geocities v. Geocities.com, D2000-0326
(WIPO June 19, 2000) (finding that the respondent has no rights or legitimate
interests in the domain name because the respondent never submitted a response
or provided the panel with evidence to suggest otherwise); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”). However, the Panel will now examine the
record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c).
Respondent registered the domain names under the name “Blake Financial Group,” and no other evidence in the record suggests that Respondent is commonly known by the disputed domain name. Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).
Moreover, the disputed domain name that Respondent
registered is identical to Complainant’s CANADA DRUGS mark; but it resolves to
Respondent’s own website offering insurance services unrelated to
Complainant. In U.S. Franchise Sys.,
Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003), the panel found
that the respondent’s use of the complainant’s MICROTEL mark in the
<microtels.com> domain name as a means of attracting Internet users to an
unrelated business was not a bona fide offering of goods or services. Here, Respondent is diverting Internet users
seeking Complainant’s pharmacy services under the CANADA DRUGS mark to a
website offering insurance services wholly unrelated to Complainant. Such diversionary use of the disputed domain
name for Respondent’s own commercial gain does not constitute a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where the respondent attempted to profit using the
complainant’s mark by redirecting Internet traffic to its own website).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant further alleges that Respondent acted in bad
faith in registering and using a mark in which Complainant has exclusive
rights. Here, Respondent offered to
sell the <canadadrugs.name> domain name to Complainant for
$10,000. The Panel infers that this
price is in excess of Respondent’s out-of-pocket costs and thus Respondent has
registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(i)
by offering to sell it to Complainant. See Am. Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad
faith where the respondent offered domain names for sale); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the
respondent’s offer to sell the domain name for $2,000 sufficient evidence of
bad faith registration and use under Policy ¶ 4(b)(i)).
Respondent has registered and is using the <canadadrugs.name>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because the disputed
domain name resolves to Respondent’s own website where it offers insurance
services unrelated to Complainant.
Therefore, Respondent is diverting Internet users seeking Complainant’s
pharmacy services to a website unrelated to Complainant. Because Respondent is taking advantage of
the confusing similarity between Respondent’s domain name and Complainant’s
CANADA DRUGS mark in order to profit from the goodwill associated with the
mark, Respondent has registered and used the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iv). See Anne of Green Gable Licensing Auth., Inc. v.
Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the
respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used
the complainant’s well-known mark to attract users to the respondent's website); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29,
2000) (finding bad faith where the domain name in question is obviously
connected with the complainant’s well-known marks, thus creating a likelihood
of confusion strictly for commercial gain).
The Panel finds that Complainant satisfied 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 <canadadrugs.name> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 22, 2006
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