Empower Clinic Services, LLC. v. Gaston Gage / Empowered Benefits
Claim Number: FA1610001696957
Complainant is Empower Clinic Services, LLC. (“Complainant”), represented by Tony Klemptner, Michigan, USA. Respondent is Gaston Gage / Empowered Benefits (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <empowerpharmacy.com>, registered with GoDaddy.com, LLC.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 6, 2016; the Forum received payment on October 6, 2016.
On October 7, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <empowerpharmacy.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 October 7, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 2016 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@empowerpharmacy.com. Also on October 7, 2016, 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 November 3, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant is a provider of pharmacy services and health/wellness solutions to healthcare practitioners and patients. Complainant established its business in 2008 under the name “Empower Clinic Services, LLC,” and has been doing business as Empower Pharmacy since July 21, 2009. Complainant registered the EMPOWER PHARMACY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,021,918, first use July 21, 2009, filed Dec. 31, 2015, registered Aug. 16, 2016). Respondent’s <empowerpharmacy.com> is identical because it incorporates the mark entirely, less the space, and merely adds the “.com” generic top-level domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in <empowerpharmacy.com>. No Policy ¶ 4(c) circumstances support Respondent’s rights. Under Policy ¶ 4(c)(ii), Respondent does not hold itself out online as EMPOWER PHARMACY. Rather, “EmpowerPharmacy” is a product name developed for Respondent by Mervil Paylor Design, but Respondent has not made preparations to use the domain name or the mark. Respondent has not engaged in business related to the mark, and Respondent is not licensed or authorized by Complainant to use the mark. Further, Respondent’s domain name resolves to a third party website (Mervil Paylor Design Offices), offering brand design services. Respondent has not changed the use of the website since it acquired the domain from its predecessor, Mervil Paylor Design Offices. The “Contact Us” section of the website is specific to Mervil Paylor Design Offices, which is different from Respondent’s info. Therefore, no bona fide offering of goods or services or any legitimate noncommercial or fair use has been made by Respondent.
iii) Respondent registered and used <empowerpharmacy.com> in bad faith. Respondent became registrant of the domain name over six years ago, continually misrepresenting itself as its predecessor, presumably for commercial gain. Upon entering the website, Internet users encounter offerings related product/brand designs and contact information. Any use by Respondent in connection with the terms of the domain name, EMPOWER PHARMACY, would be highly related and confusingly similar to the services of Complainant.
B. Respondent
Respondent did not submit a response. The Panel notes that <empowerpharmacy.com> was registered on January 29, 2006 although Complainant asserts that Respondent registered the domain name on or about March 27, 2010, when registrant information changed.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent did not register the disputed domain name in bad faith.
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."
Preliminary Issue: Non-UDRP Legal Arguments
Complainant argues various legal points pursuant to Connecticut Comprehensive Drug Laws, § 20-609(b) (2014) and N.C. Gen. Stat. Ann. § 90-85.21B as they may apply to the Respondent’s conducting business through <empowerpharmacy.com> and not associating it with any “pharmacy” purposes, thereby unlawfully misleading Internet users in need of medications or pharmacy services. The Panel notes that the instant dispute is governed by the UDRP and not Connecticut Comprehensive Drug Laws, § 20-609(b) (2014) and N.C. Gen. Stat. Ann. § 90-85.21B, so the Panel disregards these arguments. Again, while Policy ¶ 4(k) allows the parties to litigate these points in court, the Panel finds that these arguments are not applicable to this arbitration proceeding within the scope of the UDRP and its elements. See Abbott Labs. v. Patel, FA 740337 (Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else).
Accordingly, the following analysis is strictly confined to an analysis under the UDRP and does not address any arguments made by either party with respect to Connecticut Comprehensive Drug Laws, § 20-609(b) (2014) and N.C. Gen. Stat. Ann. § 90-85.21B.
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.”).
Complainant is a provider of pharmacy services and health/wellness solutions to healthcare practitioners and patients. In pursuit of its business efforts, Complainant claims it registered the EMPOWER PHARMACY mark with the USPTO (Reg. No. 5,021,918, first use July 21, 2009, filed Dec. 31, 2015, registered Aug. 16, 2016). USPTO registrations confer rights under Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Further, where a valid registration is given, rights date back to such a registered mark’s filing date. See Adorama, Inc. v. Moniker Privacy Services, FA 1610020 (Forum May 1, 2015) (“Trademark protection extends back to the application filing date of a registered mark.”). Therefore, the Panel sees that Complainant has established rights in the EMPOWER PHARMACY mark under Policy ¶ 4(a)(i), and that such rights date back to December 31, 2015, as per its USPTO registration.
Additionally, Complainant argues that Respondent’s <empowerpharmacy.com> is identical because it incorporates the mark entirely, less the space, and merely adds the “.com” gTLD. Such alterations have encountered findings of confusing similarity. See Leland Turner v. joseph derer, FA 1618086 (Forum June 25, 2015) (“The [<lelandturner.com>] Domain Name consists of the Complainant's unregistered mark LELAND TURNER plus the gTLD designation .com. The addition of the .com gTLD does not serve to distinguish the Domain Name from the Complainant's LELAND TURNER mark and the Panellist finds that this domain name is identical to a mark in which the Complainant has rights for the purpose of the Policy.”). The Panel finds accordance with the facts of the Leland Turner case, and finds that Respondent’s <empowerpharmacy.com> is identical to the EMPOWER PHARMACY mark.
Complainant argues that Respondent registered and used <empowerpharmacy.com> in bad faith. Complainant contends that Respondent became registrant of the domain name over six years ago, continually misrepresenting itself as its predecessor, presumably for commercial gain. Upon entering the website, Internet users encounter offerings related product/brand designs and contact information.
The Panel recalls that the registration date for the <empowerpharmacy.com> domain name is January 29, 2006, which predates the date on which Complainant acquired registered rights in the mark with the USPTO (Reg. No. 5,021,918, first use July 21, 2009, filed Dec. 31, 2015, registered Aug. 16, 2016). Further, Complainant claims that its first use of the mark occurred in 2009. As such, it does not appear that Complainant’s trademark was ever in use when the disputed domain name was registered.
Complainant contends that it has common law trademark rights dating back to its first use date July 21, 2009. Complainant submitted Annexes 5 through 10 which are mere relevant government's licenses which do not confer any protectable trademark rights and its relevant article features published in 2016. As such, the Panel finds that none of the Complainant's submitted exhibits proves its common law trademark rights dating back to July 21, 2009. Therefore, even if Complainant's assertion that Respondent registered the domain name on or about March 27, 2010 when registrant information changed were established, not on January 29, 2006 the date of the creation of the disputed domain name, the Panel would not find that Respondent registered the disputed domain name in bad faith.
The Panel observes a general view of the UDRP panels that although a trademark can form a basis for a UDRP action under the first element irrespective of its date, when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established, the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right. See John Ode dba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, D2001-0074 (WIPO, May 1, 2001) and Digital Vision, Ltd. v. Advanced Chemill Systems, D2001-0827 (WIPO Sep. 23, 2001).
Therefore, the Panel determines that Complainant failed to establish Respondent’s registration of the disputed domain name in bad faith and concludes that Respondent did not register the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
As the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(iii), the Panel declines to analyze the other element of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <empowerpharmacy.com> domain name REMAIN WITH Respondent.
Ho Hyun Nahm, Esq., Panelist
Dated: November 9, 2016
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