5127173 Manitoba Ltd., carrying on as "Canada Drugs IT" v. Suucess Incorporated
Claim Number: FA1001001302812
Complainant is 5127173 Manitoba Ltd., carrying on as "Canada Drugs IT" (“Complainant”), represented by Troy Harwood-Jones, Canada. Respondent is Suucess Incorporated (“Respondent”), represented by Michael C. Cerrati, of Finger & Fraser, P.A., USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <canadarugs.com>, registered with Fabulous.com Pty Ltd (Domain Name).
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.
Clive Lincoln Elliott as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 13, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 14, 2010.
On January 13, 2010, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <canadarugs.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the Domain Name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty 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 January 18, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 8, 2010 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on February 8, 2010.
On February 16, 2010 Complainant submitted its additional submissions.
On February 22, 2010 Respondent submitted its additional submissions in accordance with the Forum's Supplemental Rule #7.
On February 23, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Clive Elliott as Panelist.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
Complainant claims that it has established rights to the Canada Drugs Mark, initially through registration by its sole director in 2001 and further through assignment of the Mark to it in 2006. It advises that in 2003 it obtained registration of the marks “CANADADRUGS.COM” and ‘CANADA DRUGS”, and then “CANADADRUGS.COM & DESIGN” in 2005. Complainant asserts that it is an integral part of the CanadaDrugs.com Group of Companies and is used to advance the CanadaDrugs.com Group of Companies though control and policing of the Canada Drugs Mark by way of licensing.
Complainant states the its core business is the operation of an international prescription service pharmacy from its website at www.canadadrugs.com and that it has offered such services over the internet since 2001. Complainant contends that it develops its customers through active marketing and advertising of its website and that since 2001 it has spent over $30,000,000 marketing its services through various media and mailings together with building internet traffic to its website. Complainant asserts that its website is integral to the advancement of its business in the industry.
Complainant states that it is an industry leader, employing over 250 staff and operating from headquarters which includes a fully licensed pharmacy, pharmacy wholesale and 24/7 call centre dedicated to customers of the business. Complainant contends that it also operates licensed pharmacies, pharmacy wholesale businesses and call centres in three other countries employing an additional 150 staff.
Complainant states that it has had a fully licensed pharmacy under the Manitoba Pharmaceutical Association since April 2001, is a member of the Better Business Bureau On-line and has received certification and approval by both the Manitoba International Pharmacists Association and the Canadian International Pharmacy Association. In addition it also contends that it had the first pharmacy to be accredited by the Vermont-based Internet and Mail-order Pharmacy Accreditation Commission, such accreditation covering quality assurance, pharmacy management, confidentiality, consumer satisfaction, health information technology, website content, shipping and handling and customer call centre functions.
Complainant submits that the Domain Name is confusingly similar to its website and Canada Drugs Marks and that respondent has merely removed the letter “d” from the spelling of the word “Drugs” in the Domain Name. Complainant also submits that this omission of the letter “d” constitutes typosquatting and that Respondent has registered the Domain Name in an effort to take advantage of internet users’ typographical errors. Complainant argues that this alteration is not sufficient to distinguish the Domain Name from its own domain name and registered marks.
Complainant claims that Respondent has no rights or legitimate interest in the Domain Name and that it is using the Domain Name to operate a website featuring a search engine for commercial gain by a pay per click method. Complainant submits that Respondent’s website offers “related searches” which, when clicked on, transfers the user to a list of sponsored listings, which Complainant believes is evidence that Respondent lacks legitimate rights in the Domain Name.
Complainant also alleges that Respondent is not commonly known by the Domain Name but rather by “Suucess Incorporated” and that this also is evidence of its lack of rights and legitimate interests.
Complainant alleges that Respondent has a proven history of registering domain names in bad faith and evidences decisions made against Respondent in Pulitzer Newspapers, Inc v Rocky Production and Bank of America Corporation v. Saeid Yomtobian Complainant claims that prior panels have found Respondent’s conduct to amount to a pattern of cybersquatting.
Respondent disagrees with Complainant’s allegations that the Domain Name is confusingly similar to Complainant’s Canada Drugs marks because they differ by one letter, and submits that the Domain Name was not created by removing a letter from the word “drugs” but rather that it is the combination of two generic words “Canada” and “rugs”. Respondent asserts that this combination had created a generic and descriptive domain name which has a common meaning and a common usage and believes that the used of the word “rugs” rather than “drugs” in the Domain Name is sufficient to eliminate consumer confusion.
Respondent also submits that further evidence that there is unlikely to be any confusion is that “Canada drugs” and “Canada rugs” have distinctive sounds and differ in connotation. Respondent claims that “Canada drugs” and “Canada rugs” describe and relate to two distinct types of products (household products versus health and medicinal products) and argues that the combination of the distinct sound and connotation of the respective marks impart two separate and unrelated commercial impressions to consumers.
Respondent considers that it has legitimate rights and interest in the Domain Name as it has been using the Domain Name in connection with a bona fide offering of services prior to receiving notice of the Complainant’s dispute and in this regard states that it has used the Domain Name in connection with the offering of information on rugs and links to websites allowing consumers to purchase rugs since February 2005.
Respondent also submits that it has a legitimate interest in the Domain Name arising out of its right to resell its generic domain name at a later date. Respondent alleges that it has provided information and related links on the Domain Name relating to the purchase and sale of rugs and other furniture and contends that its registration was not in bad faith because it occurred prior to the existence of any trademark rights in the Canada Drugs marks. Respondent supports this allegation by stating that Complainant’s registrations for its various Canada Drugs marks were in March 2001, May 2003 and September 2005, whereas the Domain Name was registered in August 2000.
Respondent suggests that Complainant has used the ICANN Policy in bad faith and filed the Complaint in an attempt to harass Respondent and capitalize on Respondent’s history of domain name proceedings and has engaged in reverse domain name hijacking.
C. Complainant’s Additional Submissions
Complainant responded to the allegations contained in Respondent’s submissions by way of additional submissions.
Complainant argues that Defendant’s submissions pertaining to the distinctive sounds of the Domain Name to the complainant’s mark and the different connotations are irrelevant and submits that the ‘likelihood of confusion’ test which is applied to determine trademark infringement under trademark law is not the appropriate test to be applied to the ‘confusingly similar’ element under 4(a)(i) of the Policy. Complainant contends that the test to determine whether a disputed domain is confusingly similar is a simple comparison of the trademark and the string of words in the Domain Name.
Despite Respondent’s assertions that the Complainant’s rights in its Canadadrugs.com marks should be afforded limited protection because they are generic and highly descriptive, as well as Respondent’s further assertions that Complainant’s word marks are geographically descriptive and therefore not entitled to trademark protection, Complainant reiterates its assertion that it does not need to have US trademark registration to have rights in its mark.
Complainant submits that as well as no services are being offered on www.canadarugs.com, there is no information about rugs, and the website merely contains links for items such as “bar stools”, “chandeliers” and “rugs”, which when a user clicks on any of the links it directs them to more links for businesses.
Complainant acknowledges that while the Domain Name was registered on August 19, 2000, it believes the earliest Respondent can claim to use and ownership of the Domain Name is February 5, 2005 as, based on Respondent’s submissions, Respondent passively held the Domain Name from August 19, 2000 to February 5, 2005. Complainant asserts that it has been found by prior Policy panels that passive holding of a disputed domain name can itself constitute bad faith.
Complainant contends that by the time Respondent actually stated to use the Domain Name, Complainant had been actively selling pharmaceuticals over the internet for 4 years and had therefore establish legitimate rights in its mark before Respondent started to actively use the Domain Name.
Complainant believes that because Respondent does not have a legitimate interest in the Domain Name, the Complainant cannot be found to have requisite knowledge required for a finding of reverse name hijacking and Complainant supports this by reason that Respondent is not using the Domain Name in connection with a bona fide offering of services. Complainant also states by way of support that prior to commencing the present action Complainant conducted a WHOIS search which showed that Respondent is not commonly known by the domain name ‘canadarugs.com’ as WHOIS lists ‘Suucess Inc’ as the registered contact.
D. Respondent’s additional submission
In reply to Complainant’s further submissions Respondent suggests that the apparent distinctions in sound, connotation and commercial impression among the Domain Name and Complainant’s marks are relevant and should not be ignored. Respondent submits that such a comparison is relevant in this proceeding where the Domain Name is comprised of two generic terms, which with a common usage and meaning, rather than a misspelling and contents that the difference of one letter is significant.
Respondent acknowledges that Complainant has the ability to establish rights in its marks through common law usage and further does not dispute the alleged date that Complainant’s marks acquired secondary meaning. Respondent argues that there is no evidence that Complainant was using its descriptive marks in a trademark manner on its website in 2001 and believes that the registration and use of a domain name does not constitute trademark use and that whilst Complainant alleges that its marks eventually obtained secondary meaning, it fails to indicate when such acquisition occurred.
Respondent reiterates that any secondary meaning, if acquired at all, did not happen until after April 2005 which is approximately five years after the registration of the Domain Name.
Respondent claims that Complainant’s allegations that Respondent’s earliest claim to use and ownership of the Domain Name is February 5, 2005 is inaccurate and misleading as its ownership of the Domain Name commenced upon registration on August 19, 2000 and supports this by making reference to archived images of previous websites located on the Domain Name dating back to October 12, 2001, which whilst the prior uses differed from the current form, shows that the Domain Name was utilized shortly after its registration in August 2000.
Respondent submits that it has a legitimate interest in the Domain Name by virtue of the fact that it was the first to register a generic and highly descriptive domain that is descriptive of products or services that could be sold under the Domain Name. Respondent also submits that the cases cited by Complainant regarding passive holding differ substantially from the present facts and that Complainant’s marks were not well known or in existence at the time of registration and that Respondent’s identity has not been concealed and the generic and highly descriptive nature of the Domain Name makes it conceivable that the Domain Name may be used in good faith in connection with rugs and other furniture-related goods and services.
For the reasons set out below the Panel finds that Complainant has failed to satisfy the three elements required under the ICANN Policy and accordingly that that relief shall be denied.
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.
Identical or Confusingly Similar:
Respondent contends the Domain Name is not confusingly similar to Complainant’s CANADA DRUGS mark. Respondent contends the Domain Name is composed of two distinct terms, “Canada” and “rugs.” Respondent contends that rugs is an independent word distinct in look and meaning from the “drugs” term in Complainant’s CANADA DRUGS mark, despite the fact that the two terms differ by only one letter. In some cases the alteration or addition of a single letter can have a significant impact on a word or term, for example test and best.
The Panel finds that the Domain Name is not confusingly similar to Complainant’s CANADA DRUGS mark. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002) ("Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter."); see also Google, Inc. v. Wolfe, FA 275419 (Nat. Arb. Forum July 18, 2004) (“The <froogles.com> domain name is not confusingly similar to Complainant's GOOGLE mark. The dissimilar letters in the domain name are sufficiently different to make it distinguishable from Complainant's mark because the domain name creates an entirely new word and conveys an entirely singular meaning from the mark.”); see also Tire Discounters, Inc. v. TireDiscounter.com, FA 679485 (Nat. Arb. Forum June 14, 2006) (“Because the mark is merely descriptive, small differences matter. In the Internet context, consumers are aware that domain names for different websites are often quite similar and that small differences matter.”).
Having concluded that Complainant has not satisfied this element of the Policy because the Domain Name is not confusingly similar to the mark, the Panel may decline to analyze the other two elements of the Policy. However, for reasons of completeness, the Panel considers it appropriate in this particular case to address the other two elements of the Policy.
Rights and Legitimate Interests:
Respondent contends it is making a bona fide offering of goods on the website resolving from the Domain Name. Respondent contends it is offering links to products such as rugs and other home interior decorating accessories that relate to the terms comprising the Domain Name, “Canada rugs.” It is open to the Panel to find that in circumstances of this kind Respondent has engaged in a bona fide offering of goods and services under the Policy. See Brasserie Alamaza S.A.L. v. Orbyt, D2004-0799 (WIPO Jan. 13, 2005) (finding that the respondent’s use of a disputed domain name was bona fide under Policy ¶ 4(c)(i) where the website only displayed links to jewelry products and the complainant used its mark to sell beverage products, including beer); see also Target Brands, Inc. v. ALDnet Media Group & Harrison, FA 227647 (Nat. Arb. Forum Mar. 24, 2004) (holding that the respondent’s use of the <targetwholesale.com> domain name to offer search engine services to wholesale vendors and their customers was a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)).
Respondent also argues that the terms of the <canadarugs.com> domain name are common, geographic, generic and/or descriptive, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. The Panel accepts that there is merit in this argument and finds that Respondent has established rights or legitimate interests in the Domain Name pursuant to the Policy. See 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); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
Furthermore, Respondent asserts it is not engaged in the practice of typsquatting as the Domain Name does not in fact misspell Complainant’s CANADA DRUGS mark, but rather consists of the terms “Canada Rugs.” These questions often come down to a fine balance between competing positions. The whole question of whether Respondent has a legitimate interest in the Domain Name and whether it has engaged in the practice of typosquatting has to be considered in context. This question is directly informed by the question of timing.
The Domain Name was registered in 2000 and Respondent asserts that it was utilized for the first time shortly after its registration. It is common ground that in 2000 Complainant had not commenced any form of use or registration of the CANADA DRUGS mark. Accordingly, as of that date Complainant simply had no interest to protect and Respondent was, at least vis-a-vis these parties, fully entitled to register the Domain Name. Even if Respondent passively held the Domain Name for a number of years before actively using it the fact remains that it was “first in” in terms of acquiring a public interest in the Domain Name. Further, nowhere in its extensive written submissions does Complainant explain why the complaint was lodged some 10 years after registration of the Domain Name.
When all of these considerations are analysed the Panel concludes that Respondent has rights or legitimate interests in the Domain Name.
Registration and Use in Bad Faith:
Complainant has failed to meet the burden of proof of bad faith registration and use under the Policy. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Having concluded that Respondent has rights or legitimate interests in the Domain Name pursuant to the Policy the Panel also finds that Respondent did not register or use the Domain Name in bad faith pursuant to the Policy. See Lockheed Martin Corp. v. 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); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Respondent contends that the Domain Name is comprised entirely of common terms that have many meanings apart from use in Complainant’s CANADA DRUG mark. Moreover, Respondent contends that the registration and use of a domain name comprising such common terms is not necessarily done in bad faith. The Panel is satisfied that as at the date of registration in 2000 Respondent was entirely free to register the Domain Name, which consisted of common terms. Further, at the date of registration Complainant had itself not exhibited any interest in the Domain Name. See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
The final factor which the Panel takes into account is that if Complainant had serious misgivings about Respondent’s actions in relation to the Domain Name it should have taken action sooner. The inference that the Panel draws from the lengthy period of inaction is that Complainant either felt it lacked sufficient rights in the Domain Name to successfully bring some form of action against Respondent or alternatively it sat on its hands while Respondent used the Domain Name.
In these circumstances the Panel concludes that a finding that Respondent both registered and used the Domain Name in bad faith is inappropriate.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Clive Elliott Panelist
Dated: March 8, 2010
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