Duane Reade, Inc. v. Duke, Inc a/k/a na
Claim
Number: FA0404000253025
Complainant is Duane Reade, Inc. (“Complainant”), represented
by Hallie Brown, of Lowenstein Sandler P.C.,
65 Livingston Avenue, Roseland, NJ 07068.
Respondent is Duke, Inc a/k/a na (“Respondent”), 17 North Chatsworth Avenue, #4D, Larchmont, NY
10538.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwduanereade.com>, registered with Enom,
Inc.
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on April 13, 2004; the Forum received a hard copy of the
Complaint on April 15, 2004.
On
April 14, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain
name <wwwduanereade.com> is registered with Enom, Inc. and that
Respondent is the current registrant of the name. Enom, Inc. has verified that
Respondent is bound by the Enom, Inc. 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 19, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 10, 2004 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@wwwduanereade.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 Forum transmitted
to the parties a Notification of Respondent Default.
On
May 25, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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."
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 makes the following assertions:
1. Respondent’s <wwwduanereade.com>
domain name is confusingly similar to Complainant’s DUANE READE mark.
2. Respondent does not have any rights or
legitimate interests in the <wwwduanereade.com> domain name.
3. Respondent registered and used the <wwwduanereade.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is a
drug store chain that provides both over-the-counter and prescription
medications and medical products and supplies in retail stores and online. Complainant markets its goods and services
under the DUANE READE mark, which has been used since 1961 and is registered
with the U.S. Patent and Trademark Office (“USPTO”). Complainant holds several registrations with the USPTO for the
DUANE READE mark, including Reg. Nos. 1,092,555 and 1,105,420 (registered on
May 30, 1978 and November 7, 1978, respectively).
Respondent
registered the <wwwduanereade.com> domain name on August 23,
2003. Respondent operates a website
located at the <healthydrugs.com> domain name that purports to sell and
distribute prescription drugs.
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
rights in the DUANE READE mark through registration with the USPTO. 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. Respondent has the burden of refuting this
assumption).
Respondent’s <wwwduanereade.com>
domain name is confusingly similar to Complainant’s mark because the domain
name fully incorporates the mark and takes advantage of Internet users who
mistakenly omit the period between the prefix “www” and Complainant’s
mark. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1,
2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly
similar to Complainant’s registered trademark BANK OF AMERICA because it “takes
advantage of a typing error (eliminating the period between the www and the
domain name) that users commonly make when searching on the Internet”); see
also Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002)
(holding that the letters "www" are not distinct in the
"Internet world" and thus Respondent 's <wwwmarieclaire.com>
domain name is confusingly similar to Complainant's MARIE CLAIRE trademark).
Also, the
addition of the generic top-level domain “.com” is irrelevant in determining
whether the <wwwduanereade.com> domain name is confusingly similar
to Complainant’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the generic top-level domain (gTLD) “.com” after the name
POMELLATO is not relevant); see also 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).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to contest the allegations of the Complaint; therefore, the Panel
presumes that Respondent lacks rights and legitimate interests in the <wwwduanereade.com>
domain name. See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the <wwwduanereade.com>
domain name. Moreover, Respondent
is not licensed or authorized to register or use domain names that incorporate
Complainant’s mark. Therefore, the
Panel concludes that Respondent lacks rights and legitimate interests in the
domain name pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior
rights in the domain name precede Respondent’s registration; (3) Respondent is
not commonly known by the domain name in question).
Respondent’s <wwwduanereade.com>
domain name is confusingly similar to Complainant’s mark and resolves to a
website that offers goods that compete with those offered by Complainant. Respondent’s domain name disrupts
Complainant’s business and 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). See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (holding that Respondent’s appropriation of Complainant’s mark to market
products that compete with Complainant’s goods does not constitute a bona fide
offering of goods and services); see also Ameritrade Holdings Corp.,
Inc. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that
Respondent’s use of the disputed domain name to redirect Internet users to a
financial services website, which competed with Complainant, was not a bona
fide offering of goods or services).
Moreover,
Respondent’s use of the <wwwduanereade.com> domain name
constitutes typosquatting because it takes advantage of inadvertent
typographical errors committed by Internet users who attempt to access
Complainant online but instead are directed to websites unrelated to
Complainant. Respondent’s typosquatting
is evidence that it lacks rights and legitimate interests in the domain
name. See Diners Club Int’l
Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb.
Forum June 23, 2003) (holding that Respondent’s <wwwdinersclub.com> domain
name, a typosquatted version of Complainant’s DINERS CLUB mark, was evidence in
and of itself that Respondent lacks rights or legitimate interests in the
disputed domain name vis á vis Complainant); see also RE/MAX Int’l, Inc. v.
Seocho, FA 142046 (Nat. Arb. Forum Feb. 25, 2003) (finding that Respondent
has no rights or legitimate interests in the <wwwremax.com> domain name
as it is merely using Complainant’s mark to earn profit from pop-up
advertisements).
Furthermore,
Respondent’s <wwwduanereade.com> domain name resolves to a website
that purports to sell and distribute prescription drugs. Thus, Respondent is using a domain name
confusingly similar to Complainant’s mark for commercial gain, which is further
evidence that Respondent lacks rights and legitimate interests in the domain
name. See WeddingChannel.com Inc. v.
Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that
Respondent’s use of the disputed domain name to redirect Internet users to websites
unrelated to Complainant’s mark, websites where Respondent presumably receives
a referral fee for each misdirected Internet user, was not a bona fide offering
of goods or services as contemplated by the Policy); see also Black &
Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24,
2002) (holding that Respondent’s use of the disputed domain name to redirect
Internet users to commercial websites, unrelated to Complainant and presumably
with the purpose of earning a commission or pay-per-click referral fee, did not
evidence rights or legitimate interests in the domain name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <wwwduanereade.com>
domain name resolves to a website that sells goods that compete with those
offered by Complainant. Respondent’s
use of the domain name disrupts Complainant’s business and is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by
attracting Internet users to a website that competes with Complainant’s
business); see also EBAY, Inc. v.
MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that Respondent registered
and used the domain name <eebay.com> in bad faith where Respondent has
used the domain name to promote competing auction sites).
Also, Respondent’s
typosquatting constitutes bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Black &
Decker Corp. v. Khan, FA 137223
(Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name
was registered to “ensnare those individuals who forget to type the period
after the “www” portion of [a] web-address,” evidence that the domain name was
registered and used in bad faith); see also Nat’l Ass’n of Prof’l
Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003)
(“Typosquatting is the intentional misspelling of words with intent to
intercept and siphon off traffic from its intended destination, by preying on
Internauts who make common typing errors.
Typosquatting is inherently parasitic and of itself evidence of bad
faith.”).
Furthermore,
Respondent’s <wwwduanereade.com> domain name resolves to a website
that sells prescription drugs. Thus,
the Panel finds that Respondent is using a domain name confusingly similar to
Complainant’s mark for commercial gain and therefore constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See ESPN, Inc. v.
Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith
where Respondent linked the domain name to another website <iwin.com>,
presumably receiving a portion of the advertising revenue from the site by
directing Internet traffic there, thus using a domain name to attract Internet
users for commercial gain); see also State
Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11,
2000) (finding that Respondent registered the domain name
<statefarmnews.com> in bad faith because Respondent intended to use
Complainant’s marks to attract the public to the web site without permission
from Complainant).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <wwwduanereade.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
June 8, 2004
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