Top RX, Inc. v. Bill Phelan d/b/a Chuyi ZHU
Claim Number: FA0707001042480
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 <toprx24.org>, registered with Beijing Innovative Linkage Technology Ltd.
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 Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 19, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 24, 2007. The Complaint was submitted in both Chinese and English.
On August 7, 2007, Beijing Innovative Linkage Technology Ltd. confirmed by e-mail to the National Arbitration Forum that the <toprx24.org> domain name is registered with Beijing Innovative Linkage Technology Ltd. and that Respondent is the current registrant of the name. Beijing Innovative Linkage Technology Ltd. has verified that Respondent is bound by the Beijing Innovative Linkage Technology Ltd. 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 August 14, 2007, a Chinese language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 4, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 7, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <toprx24.org> domain name is confusingly similar to Complainant’s TOP RX mark.
2. Respondent does not have any rights or legitimate interests in the <toprx24.org> domain name.
3. Respondent registered and used the <toprx24.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Top RX, Inc., holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the TOP RX mark (Reg. No. 2,812,886 issued February 10, 2004). Complainant utilizes the mark in connection with its wholesale distributorship featuring pharmaceuticals in International Class 35.
Respondent registered the <toprx24.org> domain name on May 7, 2007. Respondent is using the disputed domain to feature advertisement links to pharmaceutical goods that compete 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 asserts rights in the TOP RX mark through
registration with the USPTO. The Panel
finds that Complainant’s timely registration of the mark establishes rights in
the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum
The <toprx24.org> domain name that Respondent registered contains Complainant’s mark in its entirety and adds the number “24” and the generic top-level domain “.org.” The Panel finds that such additions to Complainant’s registered mark fail to sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); see also Omnitel Pronto Italia S.p.A. v. Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding that the contested <omnitel2000.com> domain name is confusingly similar to the OMNITEL trademark); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established with extrinsic proof in this
proceeding that it has rights and legitimate interests in the mark contained in
the disputed domain name. Complainant
asserts that Respondent has no such rights to or legitimate interests in the <toprx24.org> domain
name. Once Complainant makes a prima facie case in support of its
allegations, the burden shifts to Respondent to show that it does possess
rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). In this case, Complainant has made out a prima facie case under Policy ¶ 4(a)(ii). See Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376
Respondent is using the <toprx24.org>domain name to feature advertisement links to pharmaceutical goods that compete with Complainant. The Panel finds that such use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate, noncommercial use pursuant to Policy ¶ 4(c)(iii). See Compaq Info. Techs. Group v. Jones, FA 99091 (Nat. Arb. Forum Oct. 4, 2001) (finding that the respondent had no rights or legitimate interests in a domain name that it used to redirect Internet users to a commercial website as part of that website’s affiliate program, where the resultant website contained banner ads as well as various links to offers for free merchandise, including merchandise from the complainant's competitor); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Complainant also asserts that Respondent is not commonly
known by the <toprx24.org> domain
name. The Panel finds, absent contrary
evidence, that Respondent is not commonly known by the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent acted in bad faith by registering and using a domain name that contains a confusingly similar version of Complainant’s mark. Respondent’s disputed domain name resolves to a website that offers links to competing pharmaceutical goods. The Panel finds that such use amounts to a disruption of Complainant’s business, which supports a finding of registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent’s disputed domain name resolves to a website featuring links to competing pharmaceutical goods. Presumably, Respondent receives click-through revenue from its diversionary use of the disputed domain name. The Panel finds that Respondent’s use amounts to an attraction for commercial gain, which evinces registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
The Panel finds that Complainant 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 <toprx24.org> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: September 20, 2007
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