PDR Network, LLC v. Speedy Web
Claim Number: FA1005001324896
Complainant is PDR Network, LLC (“Complainant”), represented by Alexandre
A. Montagu, of MontaguLaw, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <physiciansdeskreference.com>, registered with DirectNIC Ltd.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on May 17, 2010.
On May 17, 2010, DirectNIC Ltd. confirmed by e-mail to the National Arbitration Forum that the <physiciansdeskreference.com> domain name is registered with DirectNIC Ltd. and that Respondent is the current registrant of the name. DirectNIC Ltd. has verified that Respondent is bound by the DirectNIC 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 May 25, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 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@physiciansdeskreference.com. Also on May 25, 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.
OnJune 16, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <physiciansdeskreference.com> domain name is confusingly similar to Complainant’s PHYSICIANS’ DESK REFERENCE mark.
2. Respondent does not have any rights or legitimate interests in the <physiciansdeskreference.com> domain name.
3. Respondent registered and used the <physiciansdeskreference.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, PDR Network,
LLC, holds multiple trademark registrations for its PHYSICIANS’ DESK REFERENCE
mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 626,998 issued May 15,
1956) in connection with a periodical reference book dealing with
pharmaceutical specialities.
Respondent, Speedy Web, registered the disputed domain name on December 29, 1999. The disputed domain name resolves to a website that features search tools and information relating to various topics in the healthcare field and also prominently features Complainant’s PHYSICIANS’ DESK REFERENCE mark.
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.
Previous panels have held that a complainant’s registration
of its mark with the USPTO is sufficient evidence of the complainant’s rights
in the mark. See Intel Corp. v. Macare, FA 660685
(Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant
had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by
registering the marks with the USPTO); see
also
Complainant argues that Respondent’s <physiciansdeskreference.com> domain name is confusingly
similar to Complainant’s PHYSICIANS’ DESK REFERENCE mark. Respondent’s disputed domain name merely
eliminates the apostrophe and the spaces from Complainant’s mark and adds the
generic top-level domain (“gTLD”) “.com” to the entirety of Complainant’s
mark. The Panel finds that the omission
of spaces and an apostrophe do not sufficiently distinguish a disputed domain
name and a mark so as to remove the disputed domain name from the realm of
confusingly similarity under Policy ¶ 4(a)(i). See
Gurney’s Inn Resort & Spa Ltd. v.
Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces
between words are not significant in determining the similarity of a domain
name and a mark because punctuation and spaces are not reproducible in a domain
name.”); see also LOreal USA Creative Inc v. Syncopate.com –
Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding
that the omission of an apostrophe did not significantly distinguish the domain
name from the mark). The Panel also
finds that the addition of gTLD is irrelevant for the purposes of Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation
of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges in its Complaint that Respondent lacks
rights and legitimate interests in the disputed domain name. Policy ¶ 4(a)(ii)
requires Complainant to make a prima
facie case in support of its allegations before the burden then shifts to
Respondent to prove it does have rights or legitimate interests in the disputed
domain name. The Panel finds that
Complainant has established a prima facie
case based on the arguments contained in the Complaint and infers from
Respondent’s failure to respond to these proceedings that Respondent does lack
rights and legitimate interests in the disputed domain name. See Swedish Match UK Ltd. v.
Admin, Domain, FA 873137 (Nat.
Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the
burden then shifts to the respondent to demonstrate its rights or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to
respond, it is presumed that Respondent lacks all rights and legitimate
interests in the disputed domain name.”). Nevertheless, the Panel will examine the
record to determine whether Respondent has any rights or legitimate interests
in the disputed domain name.
Complainant asserts that Respondent is not commonly known by the disputed domain name and that Complainant has not granted Respondent a license to use the mark in any way. The WHOIS information indicates that the registrant of the disputed domain name is “Speedy Web,” which the Panel finds is not similar enough to the disputed domain name to avoid a finding that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant states that it publishes a comprehensive index with prescription drug information that is supplied to doctors, pharmacists, and other medical professionals. Complainant further states that it uses its mark extensively both in print and online media to promote its full line of products and spends over two million dollars annually on the marketing and promotion of the PHYSICIANS’ DESK REFERENCE mark. Complainant argues that Respondent’s disputed domain name resolves to a website that offers services that directly compete with Complainant including displaying links to third-parties selling pharmaceutical products as well as links to websites that sell Complainant’s pharmaceutical index. The Panel finds that Respondent’s use of the disputed domain name for such purposes is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s use of the disputed domain name to display links to websites of Complainant’s competitors in the pharmaceutical services industry constitutes a disruption of Complainant’s business as Internet users seeking Complainant’s products and services may purchase competing products rather than those provided by Complainant. The Panel further finds that this is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant alleges that Respondent is using the confusingly
similar disputed domain name to prominently display Complainant’s PHYSICIANS’
DESK REFERENCE mark and to provide information and links to products that
compete with Complainant and with websites that sell Complainant’s own products. Complainant asserts that such a use is an
attempt to confuse Internet users as to the source, sponsorship or affiliation
with the disputed domain name. As
Respondent presumably profits from the receipt of click-through fees from the
displayed third-party links, the Panel finds that Respondent is using the
disputed domain name to take advantage of Internet users confusion for
Respondent’s intentional commercial gain which is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb.
Forum July 24, 2006) (finding that the respondent engaged in bad faith
registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain
names to operate a commercial search engine with links to the products of the
complainant and to complainant’s competitors, as well as by diverting Internet
users to several other domain names); see
also Nokia Corp. v. Private,
D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant
to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered
similar products as those sold under the complainant’s famous mark).
The Panel finds that 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 <physiciansdeskreference.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 30, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum