Jan Drugs, Inc. v. Andrey Tsyplakov
Claim Number: FA1005001323078
Complainant is Jan
Drugs Inc. (“Complainant”), represented by Steven M. Levy,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <jandrugs.net>, registered with PSI-USA, INC. d/b/a DOMAIN ROBOT.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 5, 2010.
On May 7, 2010, PSI-USA, INC. d/b/a DOMAIN ROBOT confirmed by e-mail to the National Arbitration Forum that the <jandrugs.net> domain name is registered with PSI-USA, INC. d/b/a DOMAIN ROBOT and that Respondent is the current registrant of the name. PSI-USA, INC. d/b/a DOMAIN ROBOT has verified that Respondent is bound by the PSI-USA, INC. d/b/a DOMAIN ROBOT 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 11, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@jandrugs.net by e-mail. Also on May 11, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 9, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <jandrugs.net> domain name is identical to Complainant’s JANDRUGS mark.
2. Respondent does not have any rights or legitimate interests in the <jandrugs.net> domain name.
3. Respondent registered and used the <jandrugs.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Jan Drugs, Inc., operates a mail order pharmacy network and conducts the majority of its business online at websites resolving from its <jandrugs.com> and <jandrugs.ca> domain names. Complainant offers its products under its JANDRUGS mark. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,305,900 issued October 9, 2007) and the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA687912 issued May 17, 2007) for its JANDRUGS mark.
Respondent registered the <jandrugs.net> domain name on September 12, 2009. The disputed domain name resolves to a third-party website that offers pharmacy products and services 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.
The Panel determines Complainant has established rights in its JANDRUGS mark under Policy ¶ 4(a)(i) due to Complainant’s multiple trademark registrations with the USPTO (e.g., Reg. No. 3,305,900 issued October 9, 2007) and the CIPO (e.g., Reg. No. TMA687912 issued May 17, 2007). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant alleges that Respondent’s <jandrugs.net>
domain name is identical to Complainant’s JANDRUGS mark. The disputed domain name simply adds the
generic top-level domain (“gTLD”) “.net” to Complainant’s mark. Previous panels have held that, when a
disputed domain name differs from a complainant’s mark only by the addition of
a gTLD, the disputed domain name is identical to the complainant’s mark for
purposes of Policy ¶ 4(a)(i). See
Little Six, Inc. v. Domain For
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the <jandrugs.net> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Respondent has failed to present any evidence, and the Panel fails to find any in the record, that would support a finding that Respondent is commonly known by the <jandrugs.net> domain name. The WHOIS information identifies the domain name registrant as “Andrey Tsyplakov,” which the Panel finds is not similar to the disputed domain name. Complainant asserts that Respondent is not licensed or otherwise authorized to use Complainant’s JANDRUGS mark. Consequently, the Panel finds that Respondent is not commonly known by the <jandrugs.net> domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Respondent’s <jandrugs.net> domain name resolves to a third-party website that offers pharmaceutical products and services that compete with Complainant’s pharmaceutical products and services. The Panel finds Respondent’s use of an identical disputed domain name for this purpose is not evidence of a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). 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.”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the <jandrugs.net> domain name to resolve to a third-party website that features pharmaceutical products and services that compete with Complainant’s products and services. Internet users interested in utilizing Complainant’s mail order pharmacy may instead purchase similar products and services from the competing third-party website because of Respondent’s use of the identical disputed domain name. The Panel finds Respondent’s use of the <jandrugs.net> domain name disrupts Complainant’s mail order pharmacy business, which constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding 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).
Complainant alleges that Respondent benefits in some way from its use of the <jandrugs.net> domain name. Complainant contends that either Respondent operates the competing third-party website or receives compensation for the redirecting of Internet users to the website. Internet users interested in Complainant’s mail order pharmacy may become confused as to Complainant’s affiliation with or sponsorship of the disputed domain name containing Complainant’s JANDRUGS mark. Respondent is attempting to profit from that confusion in some way. The Panel finds Respondent’s use of the <jandrugs.net> domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to 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 Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jandrugs.net> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 23, 2010
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