Top RX, Inc. v. Robert Catts d/b/a BayouSouth
Claim Number: FA0706001008565
Complainant is Top RX, Inc. (“Complainant”), represented by Leonard
C. Dunavant, Jr., of Evans & Petree, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <toprx.org>, registered with Intercosmos Media Group 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 14, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 18, 2007.
On June 15, 2007, Intercosmos Media Group Inc. confirmed by e-mail to the National Arbitration Forum that the <toprx.org> domain name is registered with Intercosmos Media Group Inc. and that Respondent is the current registrant of the name. Intercosmos Media Group Inc. has verified that Respondent is bound by the Intercosmos Media Group 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 June 25, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 16, 2007 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@toprx.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 19, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <toprx.org> domain name is identical to Complainant’s TOPRX mark.
2. Respondent does not have any rights or legitimate interests in the <toprx.org> domain name.
3. Respondent registered and used the <toprx.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Top RX, Inc., is a wholesale distributor of pharmaceutical products. Complainant has registered the TOP RX mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,812,886 issued February 10, 2004, filed August 16, 2002).
Respondent is using the <toprx.org> domain name, which it registered on May 21, 2003, to operate an online pharmacy in direct competition with Complainant.
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. 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 (Nat. Arb. 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.”).
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’s trademark registration for the TOP RX mark,
which it filed with the USPTO before Respondent registered the disputed domain
name, demonstrates that Complainant has rights in the mark pursuant to Policy ¶
4(a)(i). The Panel holds that trademark
rights date back to the filing date, and thus Complainant’s rights in the TOP
RX mark predate Respondent’s registration of the disputed domain name. See Hershey
Respondent’s <toprx.org> differs from Complainant’s TOP RX in two small, indistinguishable ways. Respondent has eliminated the space between the terms in the mark and added the generic top-level domain (“gTLD”) “.org.” Both are merely functional changes required to transform the TOP RX mark into a domain name, and the panels in both George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) and U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) found that the elimination of spaces and addition of a gTLD did not sufficiently distinguish domain names from a complainant’s mark. Consequently, the Panel finds that Respondent’s <toprx.org> domain name is identical to Complainant’s TOP RX mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights or legitimate interests in the domain name at issue. Complainant bears the initial burden of proof under Policy ¶ 4(a)(ii) of making out a prima facie case that Respondent lacks rights and legitimate interests. Once it has done so, the burden effectively shifts to Respondent to show that it does have rights or legitimate interests. In this case, the Panel finds that Complainant has made out a prima facie case sufficient to shift the burden to Respondent. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant under Policy ¶ 4(c), the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (finding that Policy ¶ 4(a)(ii) requires that the complainant must show that the respondent has no rights to or legitimate interests in the subject domain name and that once the complainant makes this showing, the burden of production shifts to the respondent to rebut the complainant’s allegations).
Respondent has not responded to this Complaint, which allows the Panel to presume that Respondent lacks rights and legitimate interests in the <toprx.org> domain name. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”). Nevertheless, the Panel will still analyze the evidence with respect to the factors listed in Policy ¶ 4(c) to determine if Respondent does have rights or legitimate interests.
The WHOIS information reveals the registrant of the <toprx.org> domain name to be “Robert Catts d/b/a BayouSouth,” and there is no other
evidence in the record suggesting that Respondent is commonly known by the <toprx.org> domain name. Consequently, the Panel finds that Respondent
does not have rights or legitimate interests pursuant to Policy ¶
4(c)(ii). See
Respondent is using the disputed domain name to maintain a website in direct competition with Complainant. In DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002), the panel determined that the respondent’s use of the <dlj.com> domain name to divert Internet users to the <visual.com> domain name, where services that competed with the complainant were advertised, was not 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). In this case, therefore, Respondent has not used the <toprx.org> 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) by maintaining a competing website. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s operation of a website in direct competition with Complainant indicates that it has registered and is using the <toprx.org> domain name in order to disrupt Complainant’s business under the TOP RX mark. In Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006), the panel found that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website. The panel in Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 23, 2006) also found bad faith registration and use under Policy ¶ 4(b)(iii) where the respondent was maintaining a website in direct competition with the complainant. Because similar circumstances exist in the present case, the Panel finds that Respondent has registered and is using the <toprx.org> domain name in bad faith according to Policy ¶ 4(b)(iii).
Respondent’s conduct also falls within the parameters of bad
faith registration and use under Policy ¶ 4(b)(iv), for Respondent is
intentionally diverting Internet users seeking Complainant’s pharmaceutical
products to its own competing website for commercial gain. Respondent is taking advantage of the
likelihood of confusion between the disputed domain name and Complainant’s mark
in order to profit from the goodwill associated with the TOP RX mark. The Panel finds such registration and use to
be in bad faith according to Policy ¶ 4(b)(iv).
See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006)
(finding that the respondent’s use of the <arizonashuttle.net> domain
name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract
Internet traffic to Respondent’s website offering competing travel services
violated Policy ¶ 4(b)(iv)); see also Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23,
2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the
respondent was using the <dellcomputerssuck.com> domain name to divert
Internet users to respondent’s website offering competing computer products and
services).
The Panel finds that Complainant has satisfied 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 <toprx.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 30, 2007
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