PharmaMed LLC v. HIROSHI KOMATSU / BIG LIMITED
Claim Number: FA1610001698591
Complainant is PharmaMed LLC (“Complainant”), represented by Eric Misterovich of Revision Legal, Michigan, USA. Respondent is HIROSHI KOMATSU / BIG LIMITED (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mintrx.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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 17, 2016; the Forum received payment on October 17, 2016.
On October 18, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mintrx.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 19, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 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@mintrx.com. Also on October 19, 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 14, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 asserts common law trademark rights in MINT RX[i] and alleges that the disputed domain name is identical to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Further, that Respondent registered and used the disputed domain name in bad faith. Those allegations rest on the claim that Respondent acquired the domain name from Complainant in order to perform services for Complainant and then refused to return control to Complainant. In particular, Complainant states that it engaged a business by the name of “Credobill” to perform certain services related to credit card processing through Complainant’s website. Complainant states that Respondent then altered the registration information for the domain name and locked Complainant out of access to the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, a corporate entity, is referred to throughout the Complaint as “she”, presumably a reference to Gail Gentile (incorrectly spelled in the Complaint as Gail Gentil) who has provided a declaration in support of the Complaint wherein she describes herself as “the sole member of Pharmamed LLC”, a Florida corporation.
Ms Gentile declares that since January 2016 Complainant has conducted a (US) national online pharmacy business by reference to the name MINT RX. Ms Gentile claims that MINT RX has common law trademark status.
Annex J to the Complaint is a copy of a September 28, 2016 letter of demand from Complainant’s representative to “CredoBill” captioned, “THEFT OF DOMAIN NAME MINTRX.COM. It alleges that the domain name has been “hijacked” and that any action taken in respect of the domain name by Credobill exceeded the authority given to it by way of a “Merchant Agreement” between the parties.
Exhibit H is a copy of the Merchant Agreement. It is dated July 25, 2016 although it is not signed by either party. One party to the agreement is named as “BIG LIMITED or CREDOBILL.com”, and defined, without explanation, as “PSP” for purposes thereafter in the agreement. The other party is named as “PHARMAMEDRX LLC”, defined thereinafter as the “Merchant”. The recitals are set out in clause 2 of the agreement. Clause 2.1 states that: “The Merchant agrees to use the Services of Acquirer, in accordance with this Agreement”. There is no earlier definition of the “Acquirer”. Clauses 2.2 to 2.4 then refer to the Acquirer and/or PSP without explanation.
Clause 3.1 states that “PSP shall be an independent contractor, and not an employee or agent of the Acquirer”.
Annexure F to the agreement is set out below:
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.
For reasons which follow, no findings are required in regard to paragraph 4(a)(i) of the Policy[ii]. Panel notes however that the claim to common law trademark rights is largely unsupported by material evidence. Complainant asserts common law trademark rights by reason of use since January 2016[iii]. Putting to one side the relatively short time period during which such rights might have accrued, there is little evidence of reputation and it is unclear what mark has actually been used. The Complaint was likely to fail on this ground had it been necessary to analyze it fully.
Complainant is required to make a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[iv]
Panel finds that Complainant has failed to establish a prima facie case. The Complaint is unclear in critical ways. The domain name was registered on October 23, 2015 in the name of Ms Gentile, contrary to the claim in the Complaint that Complainant was the first owner. The current WHOIS information lists “HIROSHI KOMATSU” as the domain name registrant. Komatsu, the named Respondent, is largely ignored in the Complaint. Instead, the allegations are against Credobill, but there is no clear evidence of the relationship between Respondent and Credobill. Whilst the Panel notes that the WHOIS information lists the registrant organization as BIG LIMITED and BIG LIMITED is a party named by the Merchant Agreement, that agreement is not with the named Complainant[v], nor is it dated, nor is the agreement comprehensible in many respects. Further, Annex F to Merchant Agreement is, on its face, contradictory of Complainant’s fundamental claims since it gives PSP (and so, by definition, BIG LIMITED) full control of the domain name.
On the evidence, it is not possible for the Panel to make sufficient sense of Complainant’s case. A prima facie case that Respondent lacks rights or a legitimate interest in the domain name has not been made out and for that reason the Complainant fails.
No findings required.
Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <mintrx.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: November 26, 2016
[i] So stated in the introduction to the Complaint but used inconsistently by Complainant as MINTRX and Mint RX. Further, Complainant’s USPTO Trademark Application No. 86875605 shows the trademark as MINTRX (Annex E) and Complainant’s website shows yet a further iteration of the asserted trademark with graphic elements.
[ii] See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) finding that because Complainant must prove all three elements under the Policy, 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)
[iii] Panel notes in that regard that the USPTO trademark application was filed on January 14, 2016 on the basis of an intention to use the trademark.
[iv] See Do The Hustle, LLC v. Tropic Web, D2000- 0624 (WIPO Aug. 21, 2000).
[v] Albeit that this may be (yet another) drafting error.
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