GlobalRx, Inc. v. Global Internet MKTG c/o Jatin Jani
Claim Number: FA0902001247953
Complainant is GlobalRx, Inc. (“Complainant”), represented by Daniel
T. Tower, of
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <globalrxpharmacy.com>, registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Michael A. Albert as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 17, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 19, 2009.
On February 17, 2009, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <globalrxpharmacy.com> domain name is registered with eNom, Inc. and that the Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 March 2, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 23, 2009 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.
A timely Response was received and determined to be complete on March 10, 2009.
A timely Additional Submission was received from Complainant on March 16, 2009, and was determined to be in compliance with Supplemental Rule 7.
A timely Additional Submission was received from Respondent on March 16, 2009, and was determined to be in compliance with Supplemental Rule 7.
On March 20, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Michael A. Albert as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that:
· Complainant is an international mail order pharmacy. In 1996, it registered the domain name <www.globalrx.com>, began using the trade name GlobalRX, and began operating a commercial website at <www.globalrx.com>.
· Since 1996, Complainant has used the GLOBALRX and GLOBALRX.COM marks in commerce for pharmaceutical goods and services. It has developed those marks into strong marks that signify Complainant’s goods and services.
addition, Complainant has federal registrations for the GLOBALRX and GLOBALRX.COM
marks, as well as registrations for the GLOBALRX mark in
· The disputed domain name <globalrxpharmacy.com> is confusingly similar to Complianant’s GLOBALRX and GLOBALRX.COM marks. The only difference between the domain name and Complainant’s federally and internationally registered marks is the addition of the generic term “pharmacy,” which does not prevent confusing similarity.
· Respondent has no rights or legitimate interests in the disputed domain name. Respondent uses the domain name for its own website to sell pharmaceuticals. This site is designed to make users believe they are doing business with Complainant, when in fact users are doing business with a competitor. Respondent only registered the domain name on January 25, 2007, over ten years after Complainant began using its marks in commerce. Respondent’s activities in selling pharmaceuticals via the domain name is neither a bona fide offering of goods or services, nor a noncommercial or fair use of the domain name.
· Respondent registered and is using the disputed domain name in bad faith. Respondent is intentionally attempting to attract Complainant’s customers and other internet users for its own commercial gain by using Complainant’s marks. Respondent is using Complainant’s own marks to compete directly with Complainant in the same commercial field.
Respondent contends that:
· Respondent was formed in 2006 and started selling pharmacy products on-line using the domain name <www.globalpharm.info>. Desiring to move to a .com domain name, Respondent registered the disputed domain name <globalrxpharmacy.com> in 2007 and began selling its products on that web site.
· At the time of registration of the disputed domain name, Respondent was not aware of Complainant’s registrations in the GLOBALRX and GLOBALRX.COM marks. At the time, there were many web sites using combinations of generic and descriptive terms like “Global,” “RX,” and “pharmacy.”
· Respondent has had thousands of customers in the past three years. During that period, it has not received any criticism or other communication from Complainant. Complainant is not an on-line pharmacy, and therefore is in a different business than Respondent.
· Respondent has no interest in Complainant’s customers. Respondent has added a disclaimer to the website at the disputed domain name, saying that the website is unrelated to Complainant. It was also natural for Respondent to register the <globalrxpharmacy.com> domain name, as “Global” is part of Respondent’s company name and the rest of the domain name is related to Respondent’s business.
· The disputed domain name is not confusingly similar to marks in which Complainant has rights. Complainant says on its own website that it is not an internet pharmacy, while Respondent’s domain name contains the word “pharmacy” and says that it has been in this business since 2006. In addition, the “Global” and “RX” portions of Complainant’s marks are geographically descriptive and generic. Respondent only uses such words in its domain name in a generic sense. There are also hundreds of other competitor websites that use generic and descriptive terms like “Global,” “RX,” and “pharmacy.” Respondent provides specific examples of other domain names that include the phrase “GlobalRX” not associated with Complainant, and alleges that 248 such domain names exist.
· Respondent has rights or legitimate interests in the disputed domain name. Respondent has over 2,500 regular clients. It only registered the disputed domain name because internet service providers (“ISPs”) blocked Respondent’s original .info domain name. “Global” is part of Respondent’s corporate name, and the other parts of the domain name were simply chosen as related to Respondent’s business. There is no attempt to mislead users looking for Complainant to Respondent’s website.
· Respondent did not register or use the disputed domain name in bad faith. Respondent only registered the disputed .com domain name because of ISP blocking of its earlier .info domain name. At the time of the domain name registration, Respondent was unaware of any of Complainant’s trademark registrations. There is no intent to disrupt Complainant’s business, because Complainant and Respondent are not competitors. Respondent’s website has a unique look that is not intended to create confusion with Complainant’s website.
C. Additional Submissions
In its additional submission, Complainant contends that it has exclusive rights in its marks as shown by its federal and international trademark registrations and its continuous use of those marks since 1996, with total sales related to the mark exceeding $40 million. Complainant also contends that Respondent has no rights or legitimate interests in the disputed domain name because Respondent only registered the domain name long after Complainant established its rights, and Respondent had constructive notice of those rights. Complainant also contends that Respondent registered the domain name to compete directly with Complainant and that Respondent could have learned of Complainant’s rights through a simple internet search, both of which show bad faith.
In its additional submission, Respondent presents further argument that its intent as far back as 2006 was to show that it was a “global pharmacy,” rather than to trade on Complainant’s marks. Respondent also expands upon its contention that the “global” and “RX” portions of the disputed domain name are generic or descriptive, and that other domain names use these terms generically. Respondent also argues that it is improper to impute a duty upon domain name registrants to search trademark offices to determine if potential domain names may infringe on another party’s rights.
The Panel finds that Complaint has established that it owns protectable rights in the GLOBALRX and GLOBALRX.COM marks, both as a result of its federal and international registrations of those marks and as a result of its substantial sales of products and services related to those marks.
The Panel finds that the disputed domain name is confusingly similar to those marks.
The Panel finds that Respondent has failed to rebut Complainant’s showing that Respondent lacks rights or a legitimate interest in the disputed domain name.
Finally, the Panel finds that Complainant has provided sufficient evidence that Respondent has registered and used the disputed domain name in bad faith.
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.
The disputed domain name <globalrxpharmacy.com> is confusingly similar to Complainant’s marks. It incorporates the entirety of both of the GLOBALRX and GLOBALRX.COM marks. The only differences are the addition of the generic word “pharmacy” and the .com top-level domain name (as to the first mark). Top level domains are irrelevant to a finding that a domain name and service mark are identical. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO Jul. 7, 2000) (addition of a generic top-level domain is “not relevant” to a determination of similarity, as it is required, necessary, and functional). The addition of a generic term like “pharmacy” also does not sufficiently distinguish the domain name from the GLOBALRX marks. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
Respondent contends that the <globalrxpharmacy.com> domain name is comprised of
common, descriptive terms and as such cannot be found to be confusingly similar
to Complainant’s mark. That the components
of a mark or phrase may be common or even generic terms does not resolve the
question of whether in combination they form a protectable mark. See David Hall
Rare Coins v.
Here, Complainant has submitted evidence that it has both USPTO and international trademark registrations in the marks GLOBALRX and GLOBALRX.COM. See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that trademark registration with the USPTO creates a presumption of rights in a mark); see also Innomed Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”). In addition, Complainant has submitted evidence that it has been constantly using these marks since 1996, and has had more than $40 million in sales related to these marks. Moreover, prior decisions have found that Complainant has established rights in these marks. See GlobalRx, Inc. v. Hope Mills Universal, FA 462918 (Nat. Arb. Forum May 25, 2005); GlobalRx, Inc. v. destinos universales, FA 445549 (Nat. Arb. Forum May 6, 2005) (“Complainant has established that it has rights in the GLOBALRX mark through registration with the United States Patent and Trademark Office and through continuous use of the mark in commerce since 1996.”); see also GlobalRx, Inc. v. GlobalRxService.com, FA 338426 (Nat. Arb. Forum Nov. 24, 2004) (Complainant established rights through both registration and use in commerce); see also GlobalRx, Inc. v. Kartashov, FA 291432 (Nat. Arb. Forum Aug. 20, 2004). If Respondent wishes to pursue its contention that the GLOBALRX marks are descriptive or generic, this is not the forum to do so, at least not based on the evidence Respondent has adduced. In view of the above facts, the Panel concludes that Complainant has met its burden of establishing that it owns rights in the marks.
The Panel finds that Complainant has shown that the domain name is confusingly similar to its trademarks under ICANN Policy ¶ 4(a)(i).
Respondent has no rights or legitimate interests in the disputed domain name. Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the <globalrxpharmacy.com> domain name nor has it ever been the owner or licensee of the GLOBALRX mark. The WHOIS record for the disputed domain name lists Respondent as “Global Internet MKTG c/o Jatin Jani.” Respondent has not contradicted any of this evidence. Likewise, no evidence of record suggests that Respondent has ever been commonly known by any variant on the GLOBALRX mark or by the <globalrxpharmacy.com> domain name. See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant also alleges that Respondent is using the <globalrxpharmacy.com> domain name to offer pharmaceutical products for sale in competition with Complainant. While Respondent argues that there is no direct competition between itself and Complainant due to a statement on Complainant’s own website that it “is NOT an internet pharmacy,” the Panel agrees with Complainant that even if the services offered by Complainant and Respondent on their websites are not identical, they are close enough to be in direct competition. Previous panels have found that sales offerings in competition with complainants were not bona fide offerings of goods or services nor legitimate noncommercial or fair uses of disputed domain names. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”).
Respondent’s primary argument in response is that it is offering a legitimate internet pharmacy at the disputed domain name with a large number of real customers, and that it only registered the disputed domain name as the first available one that used generic terms relevant to its business.
It may in fact be the case that the online pharmacy offered by Respondent at <globalrxpharmacy.com> is a legitimate business. This possibility, however, does not render Respondent’s use of the <globalrxpharmacy.com> domain name legitimate. Complainant correctly argues that its United States federal registrations of the GLOBALRX and GLOBALRX.COM marks provides Respondent, a United States resident, with constructive notice of Complainant’s interest in the mark and prior rights. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000). Given this notice, and the widespread fame and significant use by Complainant of the GLOBALRX and GLOBALRX.COM marks, the Panel concludes that Respondent did not simply stumble across the words “global rx” to describe its business. Instead, it is far more likely that Respondent purposefully chose the words to direct Internet traffic aimed at Complainant’s web site to its own services.
The use of a trademark owned by a third party
to advertise one’s own goods or services cannot be an offering of bona fide goods or services, even where
the services offered under the mark may be legitimate in other respects. “The unauthorized providing of information
and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or
services.” See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb.
Forum Sep. 27, 2000); see also State
The Panel finds that Respondent has no rights or legitimate interests in the domain name under ICANN Policy ¶ 4(a)(ii).
Respondent’s <globalrxpharmacy.com> domain name resolves to Respondent’s commercial website, where Respondent makes money through the on-line sale of prescription drugs. Respondent’s use of Complainant’s GLOBALRX and GLOBALRX.COM marks in the domain name creates a likelihood of confusion and suggests an attempt to attract Internet users to Respondent’s website for Respondent’s commercial gain. This is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another’s mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
As noted above, Respondent had notice of Complainant’s rights before engaging in this behavior. The Panel does not find it credible that Respondent chose the disputed domain name as a random set of generic words to describe Respondent’s business, as Respondent asserts.
The Panel finds that Respondent has registered and used the domain name in bad faith under ICANN Policy § 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <globalrxpharmacy.com> domain name be TRANSFERRED from Respondent to Complainant.
Michael A. Albert, Panelist
Dated: April 3, 2009
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