TOP RX, LLC v. Samuel Sherman / Holy Family Hospital
Claim Number: FA1702001715821
Complainant is TOP RX, LLC (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Samuel Sherman / Holy Family Hospital (“Respondent”), Israel.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <edtoprx.com>, registered with Upperlink Limited.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 3, 2017; the Forum received payment on February 3, 2017.
On February 6, 2017, Upperlink Limited confirmed by e-mail to the Forum that the <edtoprx.com> domain name is registered with Upperlink Limited and that Respondent is the current registrant of the name. Upperlink Limited has verified that Respondent is bound by the Upperlink Limited 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 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 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@edtoprx.com. Also on February 6, 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 David A. Einhorn 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 is a national wholesale distributor of pharmaceuticals. Complainant uses the TOP RX mark in conjunction with its business practices. Complainant registered its TOP RX mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,812,886, registered Feb. 10, 2004). Respondent’s <edtoprx.com> domain name is confusingly similar to Complainant’s TOP RX mark because it incorporates the mark in its entirety, eliminating the space and adding the descriptive term “ED.” Complainant notes that the term “ED” is a common abbreviation for the phrase “erectile dysfunction,” which is a phrase associated with Complainant’s business.
Respondent does not have rights or legitimate interests in <edtoprx.com>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the TOP RX mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <edtoprx.com> resolves to a website offering products in direct competition with Complainant’s business.
Respondent registered and is using <edtoprx.com> in bad faith. The disputed domain name disrupts Complainant’s business by diverting internet users to Respondent’s website offering competing goods. Additionally, <edtoprx.com> confuses users because it creates the false impression that Respondent is associated with Complainant. Respondent registered <edtoprx.com> with actual knowledge of Complainant and its rights to the TOP RX mark.
B. Respondent
Respondent did not submit a response. The Panel notes that Respondent registered <edtoprx.com> domain name on January 22, 2016.
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.”).
Complainant is a national wholesale distributor of pharmaceuticals. Complainant uses the TOP RX mark in conjunction with its business practices. Complainant claims it registered its TOP RX mark with USPTO (e.g., Reg. No. 2,812,886, registered Feb. 10, 2004). The general consensus among Panels is that USPTO registrations are sufficient to show rights in a mark. 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”). Therefore, the Panel concludes that Complainant’s USPTO registration shows sufficient rights in the TOP RX mark.
Complainant asserts that Respondent’s <edtoprx.com> domain name is confusingly similar to Complainant’s TOP RX mark because it incorporates the mark in its entirety, eliminating the space and adding the descriptive term “ED”. Complainant notes that the term “ED” is a common abbreviation for the phrase
“erectile dysfunction,” which is a phrase associated with Complainant’s business. Typically, Panels have held that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i). Hence, the Panel finds that Respondent’s <edtoprx.com> domain name is confusingly similar to Complainant’s TOP RX mark.
Complainant contends that Respondent does not have rights or legitimate interests in <edtoprx.com>. Complainant maintains that Respondent is not commonly known by the disputed domain name. WHOIS information associated with this case identifies Respondent as “Samuel Sherman” of “Holy Family Hospital.” Panels have concluded that the respondent was not commonly known by the disputed domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name. Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006). Absent a response or information to the contrary, the Panel determines that Respondent is not commonly known by the <edtoprx.com> domain name.
Complainant avers it has not authorized or licensed Respondent to use the TOP RX mark in any regard, nor is Respondent affiliated with Complainant. Complainant contends that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. To support its argument, Complainant demonstrates that Respondent’s <edtoprx.com> domain name resolves to a website offering products in direct competition with Complainant’s business. The “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).” General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016). Because Respondent is competing in the same industry as Complainant, the Panel concludes that Respondent has no rights or legitimate interests in the <edtoprx.com> domain name pursuant to Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant maintains that Respondent registered and is using the <edtoprx.com> domain in bad faith. As previously indicated, the <edtoprx.com> domain name resolves to a website offering pharmaceutical products in direct competition with Complainant. Complainant contends that the disputed domain name disrupts Complainant’s business by diverting internet users to
Respondent’s website offering competing goods. Panels have found bad faith under Policy ¶ 4(b)(iv) where, as here, the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark. MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000). Additionally, the <edtoprx.com> domain name confuses users because it creates the false impression that Respondent is associated with Complainant. Panels have found bad faith where the respondent's use of the disputed domain name resolves to a website which is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services or goods offered at the site. Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000).
Thus, this Panel finds that Respondent registered and is using this domain name in bad faith pursuant to 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 <edtoprx.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: March 22nd, 2017
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