e-Scripts.MD, LLC v. USA Prescription,
Inc.
Claim Number: FA0205000114277
PARTIES
Complainant
is eScripts.MD, LLC, Marietta, GA
(“Complainant”) represented by M. Darren
Traub, of Isenberg & Hewitt,
P.C. Respondent is USA Prescription, Inc., Davie, FL
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <escriptsmd.com>, registered with
Intercosmos Media Group, Inc.
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.
Hon.
Ralph Yachnin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on May 15, 2002; the Forum received a hard copy of the Complaint
on May 20, 2002.
On
May 16, 2002, Intercosmos Media Group, Inc. confirmed by e-mail to the Forum
that the domain name <escriptsmd.com>
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
May 20, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 22,
2001 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@escriptsmd.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 28, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Ralph Yachnin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”) finds
that the Forum has discharged its responsibility under Paragraph 2(a) of the
Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to
employ reasonably available means calculated to achieve actual notice to
Respondent.” Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <escriptsmd.com>
domain name is confusingly similar to Complainant’s E-SCRIPTS-MD common law
mark.
2. Respondent has no rights or legitimate
interests in the <escriptsmd.com> domain name.
3. Respondent registered and used the <escriptsmd.com>
domain name in bad faith.
B. Respondent did not submit a Response.
FINDINGS
Complainant owns and operates a website
that facilitates online patient-to-physician evaluations, whereby a patient is
able to access Complainant’s secure website to fill out a medical history.
Complainant forwards the history to an appropriate licensed physician,
diagnosis is made and suitable action is taken. Complainant has been marketing
its services nationwide under the trade name E-SCRIPTS-MD for nearly three
years. Complainant has advertised, both directly and through over 800
affiliates worldwide, its services, conducted at its primary website,
<e-scripts-md.com>. Presently, Complainant has over 30,000 patients
nationwide and conducted over $20,000,000 in sales in the year 2001.
Respondent registered the disputed domain
name June 22, 2001. Complainant’s investigation revealed that Respondent’s
disputed domain name redirects Internet users to Respondent’s competing
website, <select-pharmacy.com>. Respondent operates in the same industry
as Complainant and is one of Complainant’s largest competitors.
DISCUSSION
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 the 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 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; and
(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.
Complainant maintains rights in its
E-SCRIPTS-MD mark. Complainant has conducted extensive diagnostic and
pharmaceutical operations under the E-SCRIPTS-MD mark over the past three
years, accruing $20,000,000 in sales last year. Complainant’s mark is not
generic, and Complainant’s intense use of its mark has made Complainant’s mark
distinct in the online prescription and diagnosis business. Furthermore,
Complainant has common law rights in the E-SCRIPTS-MD mark because Complainant
spent significant time, effort and expenditure in connection with the
development and promotion of the E-SCRIPTS-MD mark, thereby satisfying Policy ¶
4(a)(i) requirements. See Great
Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001)
(finding that the Uniform Domain Name Dispute Resolution Policy does not
require “that a trademark be registered by a governmental authority for such
rights to exist”); see also British Broad. Corp. v. Renteria, D2000-0050
(WIPO Mar. 23, 2000) (noting that the UDRP “does not distinguish between
registered and unregistered trademarks and service marks in the context of
abusive registration of domain names” and applying the UDRP to “unregistered
trademarks and service marks”).
Respondent’s <escriptsmd.com>
domain name is confusingly similar to Complainant’s E-SCRIPTS-MD mark because
the absence of punctuation, including hyphens, has been held to be
inconsequential when conducting a “confusingly similar” analysis. Respondent’s disputed
domain name does not transform itself into a distinct mark merely by deleting
two hyphens from Complainant’s mark. See Chernow Comms. Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000)
(holding “that the use or absence of punctuation marks, such as hyphens, does
not alter the fact that a name is identical to a mark"); see also Teradyne Inc. v. 4Tel Tech., D2000-0026
(WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered
mark is an insubstantial change. Both the mark and the domain name would be
pronounced in the identical fashion, by eliminating the hyphen").
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Respondent has failed to come forward
with a Response. Therefore, it is presumed that Respondent has no rights or
legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names). Furthermore, when Respondent fails to submit a Response
the Panel is permitted to make all inferences in favor of Complainant. See Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw
adverse inferences from Respondent’s failure to reply to the complaint).
Respondent conducts business in the exact
same industry as Complainant and represents one of Complainant’s largest
competitors. Respondent operates a competing pharmaceutical website located at
the <select-pharmacy.com> domain, which is where the disputed domain name
reroutes Internet users. Respondent registered the confusingly similar domain
name in an attempt to opportunistically trade on the goodwill associated with
Complainant’s E-SCRIPTS-MD mark. Furthermore, because Complainant and
Respondent are competitors, Respondent’s registration of a confusingly similar
domain name implies that Respondent was attempting to commercially benefit from
Complainant’s fame. Respondent’s actions fail to demonstrate rights or
legitimate interests in the contested domain name under Policy ¶¶ 4(c)(i) and
4(c)(iii). See Vapor Blast Mfg.
Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001)
(finding that Respondent’s commercial use of the domain name to confuse and
divert Internet traffic is not a legitimate use of the domain name); see
also Big Dog Holdings, Inc. v. Day,
FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when
Respondent was diverting consumers to its own website by using Complainant’s
trademarks); see also Chip Merch.,
Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the
disputed domain names were confusingly similar to Complainant’s mark and that
Respondent’s use of the domain names to sell competing goods was illegitimate
and not a bona fide offering of goods).
Respondent is
not commonly known as “escriptsmd” or <escriptsmd.com> pursuant to
Policy ¶ 4(c)(ii). In fact, Complainant’s investigation has provided the Panel
with uncontested evidence that Respondent is USA Pharmacy, Complainant’s
competitor. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb.
5, 2001) (finding no rights or legitimate interests because Respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent and Complainant operate in the identical online
diagnosis and pharmaceutical industry, thereby offering similar services and
goods. Respondent’s registration of a domain name confusingly similar to
Complainant’s mark implies that Respondent registered the domain name for the
purpose of disrupting the business of Complainant. Respondent’s actions
evidence bad faith under Policy ¶ 4(b)(iii). See Mission Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7,2000)
(defining “competitor” as "…one who acts in opposition to another and the
context does not imply or demand any restricted meaning such as commercial or
business competitor”); see also Surface
Prot. 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).
Additionally, Respondent registered and used the disputed
domain name in order to attract, for commercial gain, Internet users searching
for Complainant’s services and products. A significant portion of consumers
will likely be misled to Respondent’s competing website. Respondent
commercially benefits from the unfair use of Complainant’s mark in a
confusingly similar domain name. Respondent has intentionally attempted to
attract Internet users to its website by creating a likelihood of confusion
with Complainant, thereby exhibiting bad faith under Policy ¶ 4(b)(iv). See
Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the
Respondent directed Internet users seeking the Complainant’s site to its own
website for commercial gain); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb.
Forum Oct. 11, 2000) (finding that the Respondent registered the domain name
<statefarmnews.com> in bad faith because Respondent intended to use
Complainant’s marks to attract the public to the web site without permission
from Complainant).
The Panel finds that Policy ¶ 4(a)(iii) has
been satisfied.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that the requested relief should be hereby GRANTED.
Accordingly,
it is Ordered that the <escriptsmd.com>
domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: July 1, 2002
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