National Arbitration Forum

 

DECISION

 

Solaris Pharmaceuticals Inc. v. Edward S

Claim Number: FA0609000791029

 

PARTIES

Complainant is Solaris Pharmaceuticals Inc. (“Complainant”), represented by Karen F. MacDonald, of Smart & Biggar, 2200 - 650 West Georgia Street, Box 11560, Vancouver, BC V6B 4N8, Canada.  Respondent is Edward S (“Respondent”), represented by John A. Myers, of Taylor McCaffrey LLP, 9th Floor, 400 St. Mary Avenue, Winnipeg, MB R3C 4K5.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <medisave.com>, registered with Go Daddy Software.

 

PANEL

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.

 

Honorable Richard B. Wickersham, Judge (Ret.), as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 5, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 6, 2006.

 

On September 6, 2006, Go Daddy Software confirmed by e-mail to the National Arbitration Forum that the <medisave.com> domain name is registered with Go Daddy Software and that the Respondent is the current registrant of the name.  Go Daddy Software has verified that Respondent is bound by the Go Daddy Software 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 September 7, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 27, 2006 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@medisave.com by e-mail.

 

On September 22, 2006, Respondent requested, pursuant to Supplemental Rule 6, an extension of 20 days to respond to the Complaint due to extenuating circumstances.  Complainant opposed Respondent’s request.  On September 22, 2006, the National Arbitration Forum granted Respondent an extension and set a new deadline of October 9, 2006 for a filing of a Response.  On October 6, 2006, Respondent requested an additional four days to respond.  Complainant once again opposed Respondent’s request.  The National Arbitration Forum granted an additional extension of four days to Respondent, setting a new deadline of October 13, 2006 for a filing of a Response.

 

A timely Response was received and determined to be complete on October 13, 2006.

 

Complainant filed a timely and complete Additional Submission with the National Arbitration Forum on October 18, 2006.

 

On October 19, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard B. Wickersham, Judge (Ret.), as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A. Complainant

 

This Complaint is hereby submitted for decision in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 and approved by ICANN on October 24, 1999 (ICANN Policy), and the Rules for Uniform Domain Name Dispute Resolution Policy (ICANN Rules), adopted by ICANN on August 26, 1999 and approved by ICANN on October 24, 1999, and the National Arbitration Forum (NAF) Supplemental Rules (Supp. Rules). ICANN Rule 3(b)(i).

 

            COMPLAINANT INFORMATION 

[a.]       Name:              Solaris Pharmaceuticals Inc.

[b.]       Address:           1364 Cliveden Avenue

                                    Delta, British Columbia

                                    Canada  V3M 6K2

[c.]       E-Mail: amarmann@solarisworldwide.com

 

The Complainant’s authorized representative in this administrative proceeding is:

[a.]       Name:              Timothy P. Lo / Karen F. MacDonald

                                    Smart & Biggar

[b.]       Address:           2200 – 650 West Georgia Street, Box 11560

                                    Vancouver, British Columbia

                                    Canada  V6B 4N8

[c.]       E-mail:              kfmacdonald@smart-biggar.ca

 

RESPONDENT INFORMATION

[a.]       Name:              Edward S.

[b.]       Address:           276 Victory St.

                                    Qormi 06

                                    Malta

[c.]       E-Mail: edward@medisave.com

 

DISPUTED DOMAIN NAME

[a.]       The following domain name is the subject of this Complaint:       <medisave.com>

[b.]       Registrar Information:

 

            [i.]        Registrar’s Name:         GoDaddy.com, Inc.

            [ii.]       Registrar Address:        14455 N. Hayden Rd.

                                                            Suite 219

                                                            Scottsdale, Arizona

                                                            United States of America  85260

[iii.]      Telephone Number:                  (480) 505-8899 and (480) 505-8877

[iv.]      E-Mail Address:                       Not provided

 

[c.]       Trademark/Service Mark Information:

                       


The complaint is based on the Complainant’s common law trademark and trade-name MEDISAVE (the “MEDISAVE Trademark and Tradename”) and the following design marks:

 


(collectively, the “MEDISAVE DESIGN MARKS”), as well as the Complainant’s domain name <medisave.ca>, all of which are used in association with pharmaceutical services and the online sale of pharmaceuticals.

 

The Complainant, Solaris Pharmaceuticals Inc. (“Solaris”), was incorporated on May 17, 2002.  It conducts an international retail pharmacy business.  Solaris currently occupies over 15,000 sq. ft. of operational space, and employs over 80 people.  Since the start of its business, Solaris has established a clientele of over 40,000 patients, mainly located in the United States.  Solaris offers in excess of 2500 medical products to its clients and processes close to 1,000 prescriptions per day.  Solaris maintains the highest quality standards in the conduct of its pharmacy operation.  Solaris is licensed by the Canadian International Pharmacy Association, is certified by Pharmacy Checker, and is a member of the International Pharmacy Association of British Columbia.  Solaris currently operates its international pharmacy business through three domain names: medisave.ca, candrug.com and canadadrugsonline.com.

Solaris’ retail pharmacy was set up in February 2002, with operational premises 15 minutes from the Canada/USA border, in order to facilitate the international scope of Solaris’ business through its mail order business, which was launched in May 2002.  In anticipation of the scope of Solaris’ international retail pharmacy, the domain name medisave.ca was registered for Solaris on May 5, 2002.  At the same time, Solaris registered two other domain names for carrying out its business.

 

At the time the Medisave Business was launched, Solaris engaged a U.S. company, Sydel Agency (“SA”), who hired approximately four agents in various locations throughout the United States to generate business for the Medisave Business.  Solaris engaged SA from January 2003 to August 2003, at which time it took over all marketing aspects of the Medisave Business and worked on developing aggressive online marketing strategies.  At all times during its agreement with SA, Solaris controlled the Medisave Business and the associated web site, trade-marks and trade-name.

 

Solaris has expended significant money in advertising the Medisave Business, the MEDISAVE Trade-mark and Trade name, the MEDISAVE Design Marks and the medisave.ca domain name.  Since taking over full marketing of the Medisave Business, Solaris has spent over CDN $261,000 on GoogleTM advertisement services and over US$213,000 for other online “pay-per-click” advertising.  Solaris has also spent over US$45,000 on other marketing aspects, including search engine optimization strategies and local newspaper and radio advertising in the United States.

 

The MEDISAVE Trade-mark and Trade name, the MEDISAVE Design Marks and the medisave.ca domain name have, since launch of the Medisave Business, been prominently displayed on the associated web site, invoices and other advertising.

 

In products sold through the Medisave Business, Solaris is highly competitive in its pricing among other competitors in the marketplace.  Comparative pricing for the top eleven prescription drugs sold in the USA in 2004, obtained from <http://www.rxlist.com/top200_sales_2004.htm>, showing that drugs sold through <medisave.ca> are the most competitively priced in 35 out of the 51 doses/quantities listed (­­67%), as compared to the other online pharmacies listed.  As consumers are extremely price sensitive and are constantly price shopping, they are led to purchase from companies that offer them the best rates and service, which is why the Medisave Business has done well in the online pharmacy industry.

           

Many customers are drawn to the Medisave Business as a result of the highly competitive pricing, leading edge customer service and fast delivery times relative to others in the marketplace.  Customers of the Medisave Business have indicated high satisfaction with the services offered in association with the Medisave Business.

             

As a result of its competitive pricing, search engine optimization strategies and high-customer satisfaction, the Medisave Business has generated substantial revenues.  Since launch of the Medisave Business, Solaris has generated the following approximate sales (in U.S. dollars) since January 2003 from the Medisave Business:

 

 

WORLDWIDE SALES

US SALES

2003

 

 

First Quarter

$42,000

$40,000

Second Quarter

$81,000

$80,000

Third Quarter

$192,000

$180,000

Fourth Quarter

$324,000

$318,000

2004

 

 

First Quarter

$510,000

$500,000

Second Quarter

$575,000

$540,000

Third Quarter

$750,000

$741,000

Fourth Quarter

$1,035,000

$1,000,000

2005

 

 

First Quarter

$1,325,000

$1,300,000

Second Quarter

$1,260,000

$1,250,000

Third Quarter

$1,259,000

$1,250,000

Fourth Quarter

$1,350,000

$1,330,000

2006

 

 

First Quarter

$915,000

$900,000

Second Quarter

$825,000

$805,000

Third Quarter (to July 31, 2006)

$279,000

$274,000

TOTAL

$10,722,000

$10,508,000

 

At the time the Medisave Business was first launched, the domain name <medisave.com> was owned by an entity called Farmers Insurance, located in California.  As Farmers Insurance did not operate a business in competition with the Complainant, the Complainant at the time had no issue with the usage of the <medisave.com> domain name by Farmers Insurance.  Farmers Insurance had the domain name <medisave.com> registered to itself up until April 21, 2005.

 

At least as early as October 2005, the <medisave.com> domain name began to be used as a link to the web site located at canadadrugs.com, which is an international pharmacy business operated by a competitor of the Complainant, namely an entity operating under the trade-name “CanadaDrugs.com”.  The Complainant complained of this activity to CanadaDrugs.com, who advised the Complainant that <CanadaDrugs.com> did not own or have control over the <medisave.com> domain name.

 

Then, in or about January 2006, the <medisave.com> domain name began to be used as a portal advertising and providing links to six different online pharmacy web sites, including the <CanadaDrugs.com> web site and three web sites owned by an entity called Pivotal Partners Inc. (“Pivotal Partners”).  Each of the web sites that appeared on <medisave.com> were, and are, competitors of the Complainant. 

 

In October 2005 and up until January 30, 2006, the domain name <medisave.com> was registered to DBP.  The Complainant contacted DBP in January, 2006 and advised it of Solaris’ rights in and to the MEDISAVE Trade-mark and Trade name, and the <medisave.ca> domain name.  DBP released the underlying registrant information, which showed Farmers Insurance as the registrant of the <medisave.com> domain name.

 

Upon contacting Farmers Insurance regarding the <medisave.com> domain name, the Complainant was advised that Farmers Insurance no longer owned the <medisave.com> domain name and had no control over its use.  Farmers Insurance did not know who the new registrant was.

 

Shortly after DBP released the contact information on Farmers Insurance, <medisave.com> was re-registered to DBP, by the real entity controlling the domain.  Upon contacting DBP again regarding the discrepancy in apparent ownership, updated information for the underlying registrant was released by DBP on or about April 4, 2006, which showed the Respondent as the current registrant.  According to the historical registrant information, the Respondent registered <medisave.com> only as of April 4, 2006.

 

On April 3, 2006, the day before the Respondent’s contact information was released by DBP and the date on which DBP advised the underlying owner that it would be releasing the underlying registrant information, the domain name <medisave.com> was “parked”.  Starting on or about April 4, 2006, the domain name <medisave.com> became linked to the domain name <medisave.net>, where a company called Medisave (UK) Ltd. appears to be operating a business selling medical and nursing supplies.

 

Medisave (UK) Ltd. appears to be operating a legitimate business in Europe, Australia and New Zealand through the domain names medisave.net, medisave.co.uk, medisave.co.nz, medisave.com.au, medisave.ie, medisave.es, medisave.it, medi-save.nl, medi-save.de, medisave.dk, medisave.fr, medisave.gr, medisave.pl, medi-save.ch, medisave.se, medisave.be and medisave.lu.   However, the domain name registration for <medisave.com> has completely different registrant information from all of the “medisave” domain names legitimately owned and operated by Medisave (UK) Ltd., strongly suggesting that Medisave (UK) Ltd. does not in fact own or control the <medisave.com> domain name.

 

The Complainant also conducted further investigations into the web site being operated in association with the <medisave.com> domain name, and it appears that at one point it may have been controlled by Pivotal Partners, who, as indicated above, owns and operates competing online pharmacies through various domain names.  On or about January 31, 2006, the IP address, name server and domain server for medisave.com was identical to that of pivotalpartners.com, owned by Pivotal Partners.  Further, on or about January 31, 2006, the name server and domain server for medisave.com was identical to that of <canpharm.com>, owned by North Pharmacy Inc. (a related company to Pivotal Partners); and <canadamedicineshop.com>, owned by WorldWide Exports and registered by Monty Sikka of North Pharmacy Inc., also a principal of Pivotal Partners.

 

Given the above, it appears that a competitor of the Complainant, or another individual with an adverse interest to the Complainant, registered the domain name <medisave.com> on April 21, 2005, and has used the domain name since at least as early as October 2005 to redirect legitimate customers of Solaris to other competing online pharmacies.  Once DBP was unwilling to shield the underlying registrant’s identity any further, additional false registrant information was provided, and the domain name was used to re-direct online traffic to a legitimate business that appears to have no connection to the entity who actually has control over the <medisave.com> domain name.

 

Further, the Complainant submits that its rights in the MEDISAVE Trade-mark and Trade-name, the MEDISAVE Design Marks and the <medisave.ca> domain name pre-date registration of the disputed domain name by the Respondent, namely April 4, 2006, and also in advance of April 21, 2005, when the domain name was registered by an entity (possibly the Respondent) who had no legitimate interest in the domain name.

 

With regard to the <medisave.com> domain name, it is clear that the domain name so nearly resembles the MEDISAVE Trade-mark and Trade-name, the MEDISAVE Design Marks and the medisave.ca domain name in appearance, sound and ideas suggested, that it is likely to be mistaken for the MEDISAVE Trade-mark and Trade-name, the MEDISAVE Design Marks and the medisave.ca domain name.  In fact, with the exception of the .com, which previous WIPO Administrative Panels have held to be of no trademark significance as it is a generic top level domain name, the disputed domain name is identical to the MEDISAVE Trade-mark and Trade-name, the MEDISAVE Design Marks and the medisave.ca domain name.

 

In summary, it is respectfully submitted that as the disputed domain name <medisave.com> so nearly resembles the Complainant’s MEDISAVE Trade-mark and Trade-name, MEDISAVE Design Marks and <medisave.ca> domain name in appearance, sound and ideas suggested, that the disputed domain name is confusingly similar to the MEDISAVE Trade-mark and Trade-name, the MEDISAVE Design Marks and the medisave.ca domain name under Policy ¶ 4(a)(i); Rule 3(b)(ix)(1).

 

The Complainant asserts that it has attempted to submit a copy of this Complaint, together with the cover sheet as prescribed by NAF’s Supplemental Rules, by courier to the Respondent (domain-name holder), at the Respondent’s address listed herein, in accordance with ICANN Rule 2(b).  Given that the Respondent’s address does not appear to exist, it is expected that the Complaint will be returned as undeliverable.  The Complainant also asserts that a copy of this Complaint, together with the cover sheet as prescribed by NAF’s Supplemental Rules, has been sent or transmitted to the Registrar of the domain name, in accordance with NAF Supp. Rule 4(e). 

 

The Complainant will submit, with respect to any challenges to a decision in the administrative proceeding canceling or transferring the domain name, to the location of the principal office of the concerned registrar, namely the State of Arizona.

Complainant agrees that its claims and remedies concerning the registration of the domain name, the dispute, or the dispute’s resolution shall be solely against the domain-name holder and waives all such claims and remedies against (a) the National Arbitration Forum and panelists, except in the case of deliberate wrongdoing, (b) the registrar, (c) the registry administrator, and (d) the Internet Corporation for Assigned Names and Numbers, as well as their directors, officers, employees, and agents.

 

Complainant certifies that the information contained in this Complaint is to the best of Complaint's knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.

 

B. Respondent

 

On or about September 7, 2006, the Respondent received notification that a complaint had been filed from the National Arbitration Fourm (NAF) in accordance with the Uniform Domain Name Dispute Resolution Policy as adopted by the Internet Corporation for Assigned Names and Numbers (ICANN).

 

The Respondent hereby responds to the statements and allegations in Complaint and respectfully requests the Administrative Panel to deny the remedy requested by Complainant.

 

In its Complaint, the Complainant has requested that the domain name <medisave.com> be transferred to the Complainant.  In order to succeed with its Complaint, the ICANN Policy requires the Complainant to prove cumulatively each of the following three elements:

(a)                the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(b)               the Respondent has no rights or legitimate interest in respect of the domain name; and

(c)                the domain name has been registered and is being used in bad faith.

 

Each of the aforesaid three elements must be proven by the Complainant to warrant relief.  The Respondent submits that none of the above tests have been met by the Complainant and the following evidence and argument clearly establish that fact.

 

The Complainant’s written submissions are based largely on a speculative theory that the domain name <medisave.com> is being used for some improper use.  That is simply not the case.

 

While Respondent is not able to comment on the entire registration history of the domain name in dispute, since its own acquisition of the domain name <medisave.com>, which pre-dates the filing of the Complaint, its use of the domain name in no way offends the rights of the Complainant.

 

As noted in Complainant’s written submissions, the domain name <medisave.com> became linked to the domain name <medisave.net>.  It was at that time that the beneficial ownership of the domain name <medisave.com> became the property of Medisave (U.K.) Ltd.   G.B.Y. Group Limited and its administrative contact, Edward S., are simply the bare trustee for Medisave (U.K.) Ltd.

 

Medisave (U.K.) Ltd., has been the registrant of the domain name <medisave.net> since July 20, 2000.  By its own evidence, the Complainant has admitted that it only started to use the term MEDISAVE in association with its on-line pharmacy business in January 2003, some 29 months after Medisave (U.K.) Ltd. had registered its domain name.

 

Medisave (U.K.) Ltd. is a worldwide wholesaler of nursing and medical supplies.  It does not operate in the same channels of trade as the Complainant.

 

It is clear, based on the evidence adduced by the Complainant, that Medisave (U.K.) Ltd., has been using the common-law mark MEDISAVE as part of its name and that this use pre-dates the Complainant’s use of the word MEDISAVE in association with its domain name <medisave.ca>.

 

Based on the information set out in the search results referred to above, it is clear that the trademark MEDISAVE registered to Rexall Brands (citing the use dating back to November 24, 1992), the Complainant has no trademark rights to assert against the Respondent at all.  The Complainant failed to bring this to the attention of the administrative panel in its written submissions, for good reason.  This prior registration in the pharmacy channel of trade is fatal to the Complainant’s case.

 

Further, when a Respondent can show that the alleged trademarks are used by a number of other entities in the marketplace, such evidence is persuasive of the generic and descriptive nature of the marks.

 

Although it is acknowledged that the Complainant has filed evidence in relation to its use of the word mark and design mark <medisave.ca> in association with its on-line pharmacy business, there is no evidence whatsoever that even one consumer has been confused or misled into believing there is any relationship between the <medisave.com> domain and <medisave.ca>.  As a consequence, there is no evidence that Medisave (U.K.) Ltd.’s domain name <medisave.com>, which directs consumers to <medisave.net> is confusingly similar to <medisave.ca>.

 

There is no evidence before the administrative panel that the Respondent is using the domain name <medisave.com> to attract internet users to business which competes directly with the Complainant’s business.

 

The Respondent acquired its right, title and interest to the disputed domain name and has a legitimate interest in using the name to attract internet consumers to its site through the disputed domain name.  The Respondent relies on the evidence filed by the Complainant to show its bona fide use prior to any objection being filed.

 

The Complainant and Respondent in this case are capable of peacefully coexisting and are likely to continue in that same manner without creating any confusion. 

 

The Respondent has used the domain name in good faith in relation to its ongoing legitimate business activities.

 

A high level of proof has been imposed on a Complainant where a bad faith allegation rests on the Respondent’s intentional attempt to attract, for commercial gain, Internet users to its site by creating a likelihood of confusion with the Complainant’s mark.  The element of intent has been held to be a critical aspect of the claim.  The presence of a likelihood of confusion or dilution is not sufficient to find bad faith under the Policy.

 

For all of the above reasons, the Respondent respectfully requests that the requested relief be denied.

 

C. Additional Submissions

 

Additional Submission of the Complainant, submitted October 18, 2006:

 

Pursuant to ¶ 7 of the National Arbitration Forum's Supplemental Rules (the "Supplemental Rules") to the Internet Corporation for Assigned Names and Numbers ("ICANN") Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Complainant herein submits additional written statements and documents to the Forum and to the Respondent.

 

It has been held that Policy ¶ 4(a)(i) does not require a complainant to demonstrate "exclusive rights" but only that the complainant has a bone fide basis for making the Complaint in the first place. This is true even in light of substantial evidence of third party usage of similar trade-marks or trade-names.  See Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (common law rights to trade-mark upheld despite existence of other similar trade names); see also CanadaDrugs.com Partnership carrying on business as CanadaDrugs.com v ASM Bioventure, FA 568743 (Nat. Arb Forum Nov. 29, 2005).

 

Furthermore, as previously indicated in the Complaint, it is sufficient for a Complainant to show, on a balance of probabilities, that it has common law rights in a trade-mark or trade-name for the purposes of meeting this branch of the test. See Whitstrand Invs. Ltd. T/A DataDirection v. Direction Research Group Ltd., D2005-0101 (WIPO May 3, 2005); see also Celebration Shoes Ltd. v. Bridal Shoe Path, D2001-1123 (WIPO Nov 8, 2001); see also Smart Design LLC v. Hughes, supra.

 

The Complainant submits that it has shown, on a balance of probabilities, through its extensive use, sales and advertising, that it has common law rights to the MEDISAVE Trade-mark and Trade-name, the MEDISAVE DESIGN MARKS and the domain name <medisave.ca>, and that it therefore has a bone fide basis for making the Complaint.

 

The mere existence of a trade-mark registration does not mean that the mark is in fact being used.  Canadian case law is very clear that State of the Register evidence in Canada is only relevant insofar as one may make references from it about the state of the marketplace.  However, such inferences can only be drawn when a large number of relevant registrations are located.

 

The Respondent has been able to point to one Internet site indicating a pharmacy supposedly using the name MEDISAVE. There is no evidence regarding the scope of this entity's business or whether it has any reputation in Canada, the U.S. or elsewhere in the world.

 

The Respondent has also attempted to rely on the lack of evidence of confusion to argue that the domain name <medisave.com> is not identical or confusingly similar to the Complainant's trade-marks and trade-name. However, the correct test for "confusing similarity" under Policy ¶ 4(a) is a literal comparison of the disputed domain name and the Complainant's mark, without having regard to whether or not there is a "likelihood of confusion." Previous panels have held that the addition of a generic top level domain name is of no trade-mark significance, and that the Complainant need not establish evidence of confusion to satisfy this branch of the test.

 

As outlined in the Complaint, the previous entity(ies) controlling the <medisave.com> domain name had a record of misuse of the domain name. Upon being advised by DBP that its registrant information would be released to the Complainant, the Respondent, allegedly on behalf of GBY Group, was brought in to take over official ownership of the domain name and a link was set up from the domain name to a legitimate business with which the Respondent and GBY Group continue to have no discernible relationship.

 

Such actions reflect a clear effort by Pivotal Partners (through the Respondent, Edward S., and GBY Group) to disrupt the business of the Complainant.

 

It is submitted that the Complainant has shown that the Respondent, Edward S., has no right or legitimate interest to the <medisave.com> domain name, such that the burden is now on the Respondent to show that it has a right or legitimate interest. It is also submitted that the Respondent has not done so.

 

The only entity that could possibly even argue legitimate interest is Medisave (UK) Ltd., but they are not the registered owner of the domain name. The whole basis for the argument by the Respondent, Edward S., and the alleged owner, GBY Group, that they have a right or legitimate interest is based on the activities of Medisave (UK) Ltd.

 

However, neither the Respondent nor GBY Group have shown any association, current or pre-existing, between themselves and Medisave (UK) Ltd. (other than the highly suspect Agreement) which would lead to a finding that the Respondent or GBY Group had any right or legitimate interest in and to the <medisave.com> domain name by virtue of Medisave (UK) Ltd.'s alleged legitimate right. The Respondent and GBY Group have not shown that there is any legitimate reason for either of them to have entered into an agreement to hold the domain name in trust for Medisave (UK) Ltd., other than to continue disrupting the business of the Complainant.

 

Therefore, it is submitted that neither the Respondent nor GBY Group have shown that they meet any of the criteria enunciated in Policy ¶ 4(c), nor that there is any other basis for a right or legitimate interest being claimed through Medisave (UK) Ltd.

 

The evidence clearly shows that the Respondent's acquisition and use of the <medisave.com> domain name is only another link in the pattern of behavior relating to this domain name intended to disrupt the business of the Complainant. Further, instead of helping the Respondent's position, it is submitted that the "trust" alleged by the Respondent in fact adds to the evidence of bad faith registration and use, as it shows the Respondent, and his predecessor's, intentions to maintain control over the domain name while attempting to falsify a legitimate usage.

 

ADDITIONAL SUBMISSION OF RESPONDENT, submitted October 23, 2006, by John M. Myers, Counsel for Respondent:

 

Pursuant to ¶ 7 of the National Arbitration Forum's Supplemental Rules (the "Supplemental Rules") to the Internet Corporation for Assigned Names and Numbers ("ICANN") Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Respondent herein submits additional written statements and documents to the Forum and to the Complainant.

 

With respect to the Respondent's position that it has legitimate rights in and to the domain name <medisave.com>, there is no evidence before the Administrative Panel relating to the original registration of this domain name.

 

The Trade-marks Act, which is a Federal Statute in Canada, specifically contains the following provisions:

 

§ 19 Rights conferred by registration - Subject to sections 21, 32, and 67, the

registration of a trade-mark in respect of any wares or services, unless shown

to be invalid, give to the owner of the trade-mark the exclusive right to the

use throughout Canada of the trade-mark in respect of those wares or

services. [emphasis added]

 

As can be seen from the clear language of § 21(1), if a party has used in good faith a confusing trade-mark or trade-name in Canada before the date of filing of another party's application for registration of that same trade-mark, the court could permit the continued use of a confusing trade-mark in a defined territorial area concurrently with the use of a registered trade-mark.

 

The Complainant continually submits that it has common law rights to its MEDISAVE trade-mark and trade name, but as stated above, those alleged rights would not exist in a vacuum. They would have to exist within the context of other trade-mark uses in Canada. In this case, the existing Rexall registration trumps whatever rights the Complainant alleges it has.

 

It should also be noted that neither the Complaint nor the Complainant's Further Submission contains any evidence of any registered trade-mark. The Canadian Intellectual Property Office data base reveals that Solaris Pharmaceuticals Inc. has never had any active applications or registrations for any trade-mark.

 

The Respondent relies on the following passage from the Hotels Unis de France case where the Administrative Panel said, at ¶ 6.1:

 

For the Complainant's business name and domain name to be trademarks to which the Policy applies, the Panel would need to be persuaded that those names are unregistered trademarks. This, in turn, would require evidence showing that, by virtue of extensive use of the names, a significant proportion of consumers of hotel reservation services have come to associate the names exclusively with the services provided by the Complainant. The Complainant has not provided evidence to this effect and, accordingly, the Panel is not willing to find that the Complainant has trademark rights in either its business name or its domain name. [emphasis added]

 

The Respondent respectfully submits that the reasoning in the Hotels Unis de France case is directly applicable to the case at bar. The Complainant's evidence does not come anywhere close to showing that consumers of mail order pharmacies services associate the name MEDISAVE exclusively with the services provided by the Complainant.

 

With respect to the issue of confusing similarity, the Policy is premised on the assumption that little comparison is made of the disputed domain name and the Complainant's trade-mark. In the case at bar, the Respondent has demonstrated that the Complainant is advocating rights in and to a name that does not rise to the standard of being a trade-mark. All the Complainant has done in this case is to add a geographic domain signifier to another party's registered trade-mark. Based on that simple addition, the Complainant tries to argue that it has some distinctive trade-mark rights. As noted in the cases relied on by the Complainant, the use of a domain name identifier like “.com” or “.ca” has no trade-mark significance.  It has been held in Canada that domain names are not trade-marks at all if they are simply being used as an address on the internet. A party requesting a trade-mark in a domain name has an obligation to show that the domain name being requested is in fact being used as a trade-mark insofar as how consumers interact with the proposed mark. The Respondent submits that the evidence before the Administrative Panel in this case suggests that <medisave.ca> is being used as an address on the Internet by the Complainant, but not as a trade-mark.

 

The Complainant continues on page six of its Further Submission to make unsubstantiated allegations that the Respondent is somehow involved in disrupting the business of the Complainant. There is simply no evidence before the Administrative Panel to that effect. As can be seen from the Trust Agreement, as of April 4, 2006, Medisave (UK) Ltd. became the beneficial owner of <medisave.com>. There is no evidence whatsoever that the party that is the beneficial owner and that controls the domain name has disrupted the business of the Complainant. In fact there is no evidence whatsoever before the Administrative Panel that there has ever been a disruption of the business of the Complainant throughout the registration of the domain name dating back to the initial registrant Farmer's Insurance. There is simply no evidence before the Administrative Panel that there has ever been a consumer that wanted to purchase prescription drugs from <medisave.ca> that ended up purchasing pharmaceuticals from a pharmacy in some manner connected to <medisave.com>. The Complainant has shown itself capable of using a private investigator to search for information. There is no reason why the private investigator could not have been deployed to create an evidentiary basis for the disruption allegations. This lack of any concrete evidence is critical to evaluating the Complainant's constant references to a disruption of its business.

 

In its Further Submission, the Complainant fails to acknowledge the extensive registrations that are already held by Medisave (UK) Ltd. and its legitimate interest in securing <medisave.com> to its family of marks. That is what was accomplished by the Agreement that was entered with G.B.Y. Group Limited. With respect to Edward S., it is acknowledged in the recitals to the Agreement that Edward S. is the administrative contact and that Medisave (UK) Ltd. is acquiring all right, title and interest to the domain name <medisave.com>.

 

The balance of the Complainant's submissions on pages nine and ten simply repeat the unfounded allegations that the Respondent is attempting to disrupt the business of a competitor. The Complainant continues to speculate on what the Respondent's intentions were or what it must have known. Repeating the same speculative allegations over and over do not turn those speculative allegations into facts, they remain what they are, speculative allegations.

 

The Administrative Panel is reminded that in order for the Complainant to succeed in its complaint, the ICANN Policy requires the complainant to prove cumulatively each of the following three elements:

 

(a)                The domain name registered by the Respondent is identical or confusingly similar to a trade-mark or service-mark in which the Complainant has rights;

(b)               The Respondent has no rights or legitimate interest in respect of the domain name; and

 

(c)                The domain name has been registered and is being used in bad faith.

 

The Respondent respectfully submits that it has demonstrated that the Complainant does not have rights to a trade-mark or service-mark in MEDISAVE because of the existing registered use of the mark by Rexall Brands Corp. which gives Rexall exclusive rights. That should end the inquiry and on that basis alone, the Complaint should be dismissed. If the Administrative Panel believes it must go on to examine the second and third branches of the test, the Respondent submits that it has demonstrated on a balance of probabilities that the beneficial owner of the domain name <medisave.com> is Medisave (UK) Ltd. and that it has a legitimate interest in respect of the disputed domain name. Finally, with respect to the issue of bad faith, the Administrative Panel is asked to consider the speculative nature of the Complainant's allegations in this area relating to both the acquisition and use of <medisave.com>, and give them no weight. It should be noted that medisave.com has only been used by Medisave (UK) Ltd. to direct consumers to Medisave (UK) Ltd.'s principal website, <medisave.net>, which offers products and services that do not compete with the Complainant's business nor in the Complainant's geographic market.

 

The remedy requested by the Complainant, namely the transfer of the domain name <medisave.com> to Solaris Pharmaceuticals Inc., is simply not justified in the circumstances of this case, and the Respondent respectfully requests that the Complainant's Complaint be dismissed.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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.

 

FINDINGS

 

Identical and/or Confusingly Similar  Policy ¶ 4(a)(i).

 

Respondent points out in its Response that in the United States and Canada, other parties have registered the MEDISAVE and MEDI-SAVE marks, respectively.  In the United States, Respondent alleges that Medical Scientists, Inc. holds a trademark registration for the MEDISAVE mark in connection with software (Reg. No. 2,535,298 issued February 5, 2002, filed June 1, 1999).  In Canada, Respondent contends that Rexall Brands Corp. holds a trademark registration for the MEDI-SAVE mark in connection with “mail order drug dispensing services, drugstore services; drugstore dispensing services” (Reg. No. TMA408,287 issued February 19, 1993).  Because other parties hold trademark registrations in the MEDISAVE mark and Complainant does not, the Panel finds that Complainant’s mark has not acquired secondary meaning in connection with Complainant’s products and services and as a result, Complainant cannot establish common law rights in the mark for purposes of Policy ¶ 4(a)(i).  See U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”); see also Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that the complainant failed to prove trademark rights at common law because it did not prove the CYBERIMPRINTS.COM mark was used to identify the source or sponsorship of goods or services or that there was strong customer identification of the mark as indicating the source of such goods or services); see also Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005) (finding no common law rights where the complainant did not present any credible evidence establishing acquired distinctiveness).

 

Moreover, the WHOIS information lists Respondent’s registration date as November 17, 1995 and Respondent asserts in its Response that it has held the <medisave.com> domain name registration since 2000.  Complainant asserts that it started using the MEDISAVE mark in 2002 and that Respondent did not register the disputed domain name until 2006.  In spite of the discrepancy in the true registration date, the Panel determines that Respondent’s registration predates Complainant’s use of the MEDISAVE mark, in which case Complainant has failed to satisfy Policy ¶ 4(a)(i).  See Bus. Architecture Group, Inc. v Reflex Publ’g., FA 97051 (Nat. Arb. Forum June 5, 2001) (the complainant did not adequately demonstrate common law rights that predated the domain name registration); see also Trujillo v. 1Soft Corp., FA 171259 (Nat. Arb. Forum Sept. 10, 2003) (“As Complainants have not shown that their rights pre-date Registrant's domain name, Complainants have not satisfied paragraph 4(a)(i) of the Policy.”).

 

The Panel concludes that Complainant has failed to satisfy Policy ¶ 4(a)(i) because it does not have rights in the MEDISAVE mark that predate Respondent’s registration of the <medisave.com> domain name, the Panel may decline to analyze the other two elements of the Policy.  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 01059 GmbH v. VARTEX Media Mktg. GmbH/Stefan Heisig, D2004-0541 (WIPO Sept. 10, 2004) (holding that if the complainant does not satisfy Policy ¶ 4(a)(i) by showing it has rights in a mark, the panel need not consider whether the respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) or whether it registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii)).

 

Rights or Legitimate Interests Policy ¶ 4(a)(ii).

 

The Panel holds that Complainant has failed to establish a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).  See The Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name); see also Digital Interactive Systems Corp. v. W, FA 708968 (Nat. Arb. Forum July 3, 2006) (concluding that the complainant failed to establish a prima facie case against the respondent because the respondent provided sufficient evidence to convince the panel that it was using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)).

 

Respondent claims that “Edward S.” is “simply the bare trustee for Medisave (U.K.) Ltd.” and that Medisave (U.K.) Ltd. is the beneficial owner of the <medisave.com> domain name.  Respondent claims that it has been the registrant of the disputed domain name since July 20, 2000, before Complainant began using the MEDISAVE mark.  Respondent also claims to have registered the various other domain names in association with its business, including <medisave.net>, <medisave.com.au>, <medisave.co.uk> and <medisav.dk>.  The Panel finds that Respondent’s use of the MEDISAVE mark as its trade name, as well as its use of numerous domain names containing the mark combined with various top-level domains, indicates that Respondent is commonly known by the <medisave.com> domain name according to Policy ¶ 4(c)(ii).  See Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (holding that the respondent had rights or legitimate interests in the disputed domain name where its business name was “Anytime OnLine Traffic School” and that it was therefore not far-fetched to use <aoltrafficschool.com> as a domain name for its business); see also VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the respondent has rights and a legitimate interest in the domain name since the domain name reflects the respondent’s company name). 

 

Furthermore, Respondent argues that it uses the <medisave.com> domain name in connection with its business as a “worldwide wholesaler of nursing and medical supplies,” and therefore does not operate in the same markets or attract the same customers as Complainant.  The Panel finds that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because Respondent is not a competitor of Complainant and is not deliberately diverting Internet users seeking Complainant’s products and services to its own website for commercial gain.  See Kelly v. Qsoft Consulting Ltd., D2003-0221 (WIPO Apr. 30, 2003) (finding that the respondent had concurrent rights and legitimate interests in the <mygaydar.com> domain name where, at the time that the administrative proceeding was commenced, both parties had “homonymous trademark rights to the GAYDAR mark” through their respective use of the mark in the U.S. and the U.K.); see also Warm Things, Inc.  v. Weiss, D2002-0085 (WIPO Apr. 18, 2002) (finding that the respondent was making a bona fide offering of goods or services at the <warmthings.com> domain name as the respondent was operating in a field unrelated to the complainant or its products).

 

Respondent claims that two entities, Rexall Brands Corp. and Medical Scientists, Inc., hold valid trademark registrations for the MEDISAVE mark in Canada and the United States, respectively, and that many other parties use the mark for a wide variety of products and services.  Based on Respondent’s claims, the Panel holds that the <medisave.com> domain name is made up of commonly used terms and as a result, Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that the respondent has rights and legitimate interests in the domain name where “Respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with Complainant’s business”); see also Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in Kaleidoscopes).

 

In addition, Respondent alleges that it actually registered the <medisave.com> domain name in the year 2000, two years before Complainant asserts it began using the MEDISAVE mark.  Consequently, the Panel finds that Complainant cannot establish rights in the MEDISAVE mark that predate Respondent’s registration of the disputed domain name.  See Parachute, Inc. v. Jones, FA 94947 (Nat. Arb. Forum July 12, 2000) (denying transfer of the domain name because the respondent’s use of the PARACHUTE mark and the domain name in question preceded any use of the service mark by the complainant); see also Warm Things, Inc.  v. Weiss, D2002-0085 (WIPO Apr. 18, 2002) (finding that the respondent had rights or legitimate interests in a domain name when its registration of that domain name occurred before the complainant had established rights in its alleged mark).

 

Registration and Use in Bad Faith Policy ¶ 4(a)(iii).

 

The Panel determines that Respondent has rights or legitimate interests in the <medisave.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Brasserie Alamaza S.A.L. v. Orbyt, D2004-0799 (WIPO Jan. 13, 2005) (holding that it is not necessary for the panel to make a finding of bad faith under Policy ¶ 4(a)(iii) where the respondent has sufficiently established its rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii)); see also Lockheed Martin Corp. v. The Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name).

 

Moreover, Respondent asserts that it registered the <medisave.com> domain name in furtherance of its nursing and medical supplies business under the name “Medisave (U.K.) Ltd.,” and not to disrupt Complainant’s business or divert Internet users to its own website for commercial gain.  The Panel finds that Respondent’s use of the <medisave.com>  domain name to operate a non-competing does not constitute bad faith registration and use, because it has not violated any of the factors listed in Policy ¶ 4(b).  See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding no bad faith registration or use of the domain name <racegirl.com> where no evidence was presented that the respondent intended to divert business from the complainant or for any other purpose prohibited by UDRP Rules).

 

Additionally, Respondent asserts that it registered the <medisave.com> domain name in 2000 and not in 2006 as Complainant alleges.  The Panel believes Respondent’s assertion, and finds that Respondent’s registration and use of the <medisave.com> predates any rights Complainant has in the MEDISAVE mark and therefore, Respondent did not register and use the disputed domain name in bad faith under Policy ¶ 4(a)(i).  See Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that it is “impossible” for the respondent to register disputed domain name in bad faith if the complainant's company did not exist at the time of registration); see also Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark). 

 

Respondent further provides evidence of other parties in the United States and Canada using the MEDISAVE and MEDI-SAVE marks, including two entities holding trademark registrations in the mark.  Accordingly, the Panel finds Respondent did not register and use the <medisave.com> domain name in bad faith based on the mark’s common use by other parties.  See Lowestfare.com LLC v. US Tours & Travel, Inc., AF-0284 (eResolution Sept. 9, 2000) (finding no bad faith where the respondent was using the descriptive domain name <thelowestfare.com> to lead consumers to a source of lowest fares in good faith); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (“As to both registration and use, the generic nature of the disputed domain name itself rebuts any allegation by Complainant that Respondent registered or used the disputed domain name in bad faith.”).  

 

 

 

DECISION

Having failed to established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <medisave.com> domain name shall remain with Respondent.

 

 

___________________________________________________

 

Richard B. Wickersham, Judge (Ret.), Panelist
Dated:  November 6, 2006

 

 

 

 

 

 

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