Canada Drugs.com Partnership, carrying on
business as CanadaDrugs.com v. Domain Asia Ventures
Claim
Number: FA0404000263171
Complainant is Canada Drugs.com Partnership, carrying on business as CanadaDrugs.com (“Complainant”), represented
by Troy Harwood-Jones, 24 Terracon Place, Winnipeg, MB, R2J 4G7, Canada. Respondent is Domain Asia Ventures (“Respondent”), 255 Xiaoxue Road, Xiamen,
Fujian, China 361001.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwcanadadrugs.com>, registered with Moniker
Online Services, 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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on April 26, 2004; the Forum received a hard copy of the
Complaint on April 27, 2004.
On
April 26, 2004, Moniker Online Services, Inc. confirmed by e-mail to the Forum
that the domain name <wwwcanadadrugs.com> is registered with Moniker
Online Services, Inc. and that Respondent is the current registrant of the
name. Moniker Online Services, Inc. has verified that Respondent is bound by
the Moniker Online Services, 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
May 4, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 24, 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@wwwcanadadrugs.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
June 1, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed James A. Carmody, 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."
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 <wwwcanadadrugs.com>
domain name is confusingly similar to Complainant’s CANADADRUGS.COM and CANADA
DRUGS marks.
2. Respondent does not have any rights or
legitimate interests in the <wwwcanadadrugs.com> domain name.
3. Respondent registered and used the <wwwcanadadrugs.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Canada Drugs.com Partnership carrying on business as CanadaDrugs.com, is a Canadian
pharmacy of choice for purchasing discount prescription drugs and
medication. Complainant has offered its
pharmacy services over the Internet since April 2001. Complainant’s business name was registered with the Manitoba
Companies office on February 27, 2003.
Complainant applied for trademark registration of the marks
on March 23, 2001. Complainant’s
trademark registrations were granted by the Canada Registrar of Trade-marks for
CANADADRUGS.COM (Reg. No. TMA581,899, issued May 20, 2003) and CANADA DRUGS
(Reg. No. TMA581,915, issued May 20, 2003).
Complainant owns
registrations for the <canadadrugs.com> domain name, where consumers can
access Complainant’s services online.
Respondent
registered the disputed domain name on April 30, 2003 and is using the domain
name to direct users to pharmacy and related service provider websites.
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
established with extrinsic proof in this proceeding that it has rights to the
CANADADRUGS.COM and CANADA DRUGS marks as evidenced by its registration with
the Canada Registrar of Trade-Marks and by continuous use of its marks in
commerce for three years. 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).
Furthermore,
Complainant applied for its trademark registrations prior to Respondent’s
registration of the disputed domain name.
Therefore, Complainant’s rights in the marks relate back to the
application date, predating Respondent’s registration of the <wwwcanadadrugs.com>
domain name. See FDNY Fire Safety
Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum Mar. 26, 2003)
(finding that Complainant’s rights in the FDNY mark relate back to the date
that its successful trademark registration was filed with the U.S. Patent and
Trademark Office); see also J. C. Hall Co. v. Hallmark Cards, Inc., 340
F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal
Register is prima facie proof of continual use of the mark, dating back to the
filing date of the application for registration).
The domain name
registered by Respondent, <wwwcanadadrugs.com> is confusingly
similar to Complainant’s CANADA DRUGS and CANADADRUGS.COM marks because the
only difference is the mere addition of “www” to the domain name. The “www” prefix does not significantly
distinguish the domain name from the mark.
See Elder Mfg. Co., Inc. v.
Recker, FA 98414 (Nat. Arb. Forum Sep. 10, 2001) (“In the matter at bar it
is beyond refute that Respondent’s domain names are virtually identical, and
thus confusingly similar to Elder’s trademarks. Any superficial differences
between the domain names and the Elder trademarks are de minimis and of no
legal consequence”); see also 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).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent has no rights or legitimate interests in the domain
name that contains in its entirety Complainant’s mark. Due to Respondent’s failure to respond to
the Complaint, the Panel will assume that Respondent lacks rights and
legitimate interests in the disputed domain name. The burden shifts to Respondent to show that it does have rights
or legitimate interests once Complainant establishes a prima facie case
pursuant to Policy ¶ 4(a)(ii). See
Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376
(WIPO May 14, 2001) (stating that “[p]roving that the Respondent has no rights
or legitimate interests in respect of the Domain Name requires the Complainant
to prove a negative. For the purposes of this sub paragraph, however, it is
sufficient for the Complainant to show a prima facie case and the burden of
proof is then shifted on to the shoulders of Respondent. In those
circumstances, the common approach is for [R]espondents to seek to bring
themselves within one of the examples of paragraph 4(c) or put forward some
other reason why they can fairly be said to have a relevant right or legitimate
interests in respect of the domain name in question”); see also G.D.
Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding
that where Complainant has asserted that Respondent has no rights or legitimate
interests with respect to the domain name it is incumbent on Respondent to come
forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the respondent”).
Respondent is
using the <wwwcanadadrugs.com> domain name to redirect Internet
users to a site that hosts a search engine to link viewers to a variety of
websites, including sites that offer the same type of goods and services that
Complainant offers online. Respondent’s
use of a domain name that is confusingly similar to Complainant’s CANADA DRUGS
and CANADADRUGS.COM marks to redirect users interested in Complainant’s
products to a commercial website that offers identical pharmacy options and
related services is not a use in connection with a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or
fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See eBay Inc. v. Sunho Hong,
D2000-1633 (WIPO Jan. 18, 2001) (stating that the "use of complainant’s
entire mark in infringing domain names makes it difficult to infer a legitimate
use"); see also Computer
Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum
Sept. 8, 2000) (finding that Respondent’s website, which is blank but for links
to other websites, is not a legitimate use of the domain names); see also Tercent Inc.
v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that Respondent’s use of the
disputed domain name to host a series of hyperlinks and a banner advertisement
was neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the domain name).
Moreover,
Respondent has offered no evidence and there is no proof in the record
suggesting that Respondent is commonly known by the <wwwcanadadrugs.com>
domain name. Thus, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See Medline, Inc.
v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“Considering the
nonsensical nature of the [<wwwmedline.com>] domain name and its
similarity to Complainant’s registered and distinctive [MEDLINE] mark, the
Panel concludes that Policy ¶ 4(c)(ii) does not apply to Respondent”); see
also Hartford Fire Ins. Co. v.
Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that
Respondent has no rights or legitimate interests in domain names because it is
not commonly known by Complainant’s marks and Respondent has not used the
domain names in connection with a bona fide offering of goods and services or
for a legitimate noncommercial or fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the disputed domain name to advertise pharmacy products and related
services. Complainant’s business is an
online Canadian pharmacy. The Panel
finds that, by creating confusion around Complainant’s mark, Respondent is
attempting to disrupt the business of a competitor. Respondent’s use of Complainant’s mark to sell goods similar to
Complainant’s goods and services 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 Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO
Feb. 5, 2001) (finding that, given the competitive relationship between
Complainant and Respondent, Respondent likely registered the contested domain
name with the intent to disrupt Complainant's business and create user
confusion).
Respondent
registered the domain name for commercial gain. Respondent’s domain name diverts Internet users wishing to search
under Complainant’s well-known mark to Respondent’s commercial website through
the use of a domain name confusingly similar to Complainant’s mark. Respondent’s practice of diversion,
motivated by commercial gain, through the use of a confusingly similar domain
name evidences bad faith registration and use pursuant to Policy ¶
4(b)(iv). See G.D. Searle & Co.
v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding
that Respondent registered and used the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain
name to attract Internet users to its commercial website); see also Kmart v.
Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent
profits from its diversionary use of Complainant's mark when the domain name
resolves to commercial websites and Respondent fails to contest the Complaint,
it may be concluded that Respondent is using the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv)); see also H-D Michigan, Inc. v. Petersons
Auto., FA 135608 (Nat. Arb.
Forum Jan. 8, 2003) (finding that the disputed domain name was registered and
used in bad faith pursuant to Policy ¶ 4(b)(iv) through Respondent’s
registration and use of the infringing domain name to intentionally attempt to
attract Internet users to its fraudulent website by using Complainant’s famous
marks and likeness).
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 <wwwcanadadrugs.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 14, 2004
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