MedcoSouth Healthcare Company, LLC v. quality herbals
Claim Number: FA1012001364307
Complainant is MedcoSouth Healthcare Company, LLC (“Complainant”), represented by Wm. Alex Furman of Greenberg Traurig, LLP, Colorado, USA. Respondent is quality herbals (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <femanoll.com>, <femmanol.com>, <femanolofficialsite.com>, <femnol.com>, <femanal.com>, <femenol.com>, <femanex.com>, <femmanex.com>, <femanex.net>, and <femanexofficialsite.com>, registered with GoDaddy.com, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 20, 2010; the National Arbitration Forum received payment on December 20, 2010.
On December 22, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <femanoll.com>, <femmanol.com>, <femanolofficialsite.com>, <femnol.com>, <femanal.com>, <femenol.com>, <femanex.com>, <femmanex.com>, <femanex.net>, and <femanexofficialsite.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2011 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@femanoll.com, postmaster@femmanol.com, postmaster@femanolofficialsite.com, postmaster@femnol.com, postmaster@femanal.com, postmaster@femenol.com, postmaster@femanex.com, postmaster@femmanex.com, postmaster@femanex.net, and postmaster@femanexofficialsite.com. Also on January 5, 2011, 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 January 27, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <femanoll.com>, <femmanol.com>, <femanolofficialsite.com>, <femnol.com>, <femanal.com>, <femenol.com>, <femanex.com>, <femmanex.com>, <femanex.net>, and <femanexofficialsite.com> domain names are confusingly similar to Complainant’s FEMANOL mark.
2. Respondent does not have any rights or legitimate interests in the <femanoll.com>, <femmanol.com>, <femanolofficialsite.com>, <femnol.com>, <femanal.com>, <femenol.com>, <femanex.com>, <femmanex.com>, <femanex.net>, and <femanexofficialsite.com> domain names.
3. Respondent registered and used the <femanoll.com>, <femmanol.com>, <femanolofficialsite.com>, <femnol.com>, <femanal.com>, <femenol.com>, <femanex.com>, <femmanex.com>, <femanex.net>, and <femanexofficialsite.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, MedcoSouth Healthcare Company, LLC, manufactures and distributes dietary supplements including a dietary supplement for women that it markets under the FEMANOL mark. Complainant distributes this dietary supplement over the Internet and through resellers. Complainant owns a United States Patent and Trademark Office (“USPTO”) registration for the FEMANOL mark (Reg. No. 3,615,920 issued May 5, 2009).
Respondent, quality herbals, registered the <femanex.com> domain name on August 5, 2008 and the remaining domain names on November 9, 2009. The <femanex.com> domain name resolves to Respondent’s commercial website selling a competing dietary supplement called “Femenex” and copying a majority of the content from Complainant’s official website. The other disputed domain names initially redirected Internet users to the <femanex.com> domain name. Several of the disputed domain names have since been changed to no longer redirect to the <femenex.com> domain name but instead to resolve to standard parking pages.
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.
Complainant owns a USPTO trademark registration for the FEMANOL mark (Reg. No. 3,615,920 issued May 5, 2009). The Panel finds this USPTO trademark registration is sufficient to prove Complainant’s rights in the FEMANOL mark pursuant to Policy ¶ 4(a)(i). See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”).
Complainant argues that Respondent’s <femanoll.com>, <femmanol.com>, <femanolofficialsite.com>, <femnol.com>, <femanal.com>, <femenol.com>, <femanex.com>, <femmanex.com>, <femanex.net>, and <femanexofficialsite.com> domain names are confusingly similar to Complainant’s mark. The <femanoll.com>, <femmanol.com>, <femanolofficialsite.com>, <femnol.com>, <femanal.com>, and <femenol.com> domain names all differ from Complainant’s mark because of one or more of the following minor changes: the addition of a single letter, the deletion of a single letter, the replacing of one letter with a different letter, the addition of the generic terms “official” and “site,” and the appending of the generic top-level domain (“gTLD”) “.com.” The Panel finds that misspelling Complainant’s mark by adding, deleting or replacing a single letter does not alleviate confusing similarity. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”). The Panel also finds that the addition of generic terms to Complainant’s mark does not prevent a finding of confusing similarity. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). Finally, the Panel finds that attaching a gTLD has no effect on a Policy ¶ 4(a)(i) analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Thus, the Panel finds that Respondent’s <femanoll.com>, <femmanol.com>, <femanolofficialsite.com>, <femnol.com>, <femanal.com>, and <femenol.com> domain names are confusingly similar to Complainant’s FEMANOL mark pursuant to Policy ¶ 4(a)(i).
The Panel does not find, however, that Complainant has rights in a “femenex” mark or that Respondent’s <femanex.com>, <femmanex.com>, <femanex.net>, and <femanexofficialsite.com> domain names are confusingly similar to Complainant’s FEMANOL mark.
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(i) with respect to the <femanoll.com>, <femmanol.com>, <femanolofficialsite.com>, <femnol.com>, <femanal.com>, and <femenol.com> domain names. 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.").
The Panel finds that Complainant has not satisfied Policy ¶ 4(a)(i) with respect to the <femanex.com>, <femmanex.com>, <femanex.net>, and <femanexofficialsite.com> domain names. Therefore, these disputed domain names will not be analyzed under Policy ¶ 4(a)(ii) and ¶ 4(a)(iii) and Complainant’s claim for relief with respect to these <femanex.com>, <femmanex.com>, <femanex.net>, and <femanexofficialsite.com> disputed domain names is denied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <femanoll.com>, <femmanol.com>, <femanolofficialsite.com>, <femnol.com>, <femanal.com>, and <femenol.com> domain names. Once Complainant has put forth a prima facie case, the burden shifts to Respondent to demonstrate it rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has adequately established a prima facie case in these proceedings. Since Respondent has failed to respond to the allegations against it, the Panel may assume that Respondent lacks any rights or legitimate interests in the <femanoll.com>, <femmanol.com>, <femanolofficialsite.com>, <femnol.com>, <femanal.com>, and <femenol.com> domain names. The Panel, however, elects to consider the evidence on record in light of the Policy ¶ 4(c) factors to determine if Respondent has any rights or legitimate interests in the <femanoll.com>, <femmanol.com>, <femanolofficialsite.com>, <femnol.com>, <femanal.com>, and <femenol.com> domain names. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that “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 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.”).
The WHOIS information for the <femanoll.com>, <femmanol.com>, <femanolofficialsite.com>, <femnol.com>, <femanal.com>, and <femenol.com> domain names lists the registrant as “quality herbals.” The Panel finds that name has no association with the domain names. The Panel thus concludes that Respondent is not commonly known by the disputed domain names and lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See 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); 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 WHOIS information, suggesting that respondent was commonly known by the disputed domain name).
Complainant alleges that Respondent’s <femanoll.com>, <femmanol.com>, <femanolofficialsite.com>, <femnol.com>, <femanal.com>, and <femenol.com> domain names initially redirected Internet users to Respondent’s commercial website selling the competing Femenex product at the <femenex.com> domain name. The Panel finds that using Complainant’s mark in domain names that redirect to Respondent’s competing commercial website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant argues that recently Respondent has stopped the disputed domain names from redirecting to the <femenex.com> domain name, instead having several of the disputed domain names resolve to standard parking pages. The Panel finds that hosting a pay-per-click links page at the infringing disputed domain names does not constitute a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
Complainant contends that the <femanoll.com>, <femmanol.com>, <femnol.com>, <femanal.com>, and <femenol.com> domain names are all misspellings of Complainant’s FEMANOL mark that differ by only one letter from Complainant’s mark. The Panel finds that registering these disputed domain names is an attempt to capitalize on common misspellings made by Internet users and constitutes typosquatting. The Panel finds this typosquatting to be evidence of Respondent’s lack of rights and legitimate interests according to Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied with respect to the <femanoll.com>, <femmanol.com>, <femanolofficialsite.com>, <femnol.com>, <femanal.com>, and <femenol.com> domain names.
Complainant asserts that Respondent used the <femanoll.com>, <femmanol.com>, <femanolofficialsite.com>, <femnol.com>, <femanal.com>, and <femenol.com> domain names to redirect Internet users to Respondent’s competing commercial website at the <femenex.com> domain name. Complainant argues that these actions disrupted Complainant’s business because Respondent’s disputed domain names diverted Internet users seeking Complainant to a website selling a competing dietary supplement. The Panel thus finds that Respondent’s efforts show bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to 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 argues that Respondent registered the <femanoll.com>, <femmanol.com>, <femanolofficialsite.com>, <femnol.com>, <femanal.com>, and <femenol.com> domain names in order to drive traffic to the <femenex.com> domain name, its commercial website selling a competing dietary supplement. Complainant alleges that the use of Complainant’s mark in the disputed domain names aims to capitalize on Complainant’s goodwill, create user confusion and profit Respondent through increased traffic and sales. The Panel finds these activities evidence bad faith registration and use according to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
Complainant also contends that Respondent recently modified several of the disputed domain names so that they no longer redirect to the <femenex.com> domain name but now resolve to standard parking pages. The Panel finds that Respondent’s efforts to attract Internet users through its use of Complainant’s mark, create confusion as to the source or affiliation of Respondent’s website, and profit from the pay-per-click fees indicates bad faith registration and use under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
The Panel has previously concluded that Respondent has engaged in typosquatting through the use of the confusingly similar disputed domain names. The Panel finds this typosquatting to be evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’. . . through Respondent’s persistent practice of ‘typosquatting’”); see also Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied with respect to the <femanoll.com>, <femmanol.com>, <femanolofficialsite.com>, <femnol.com>, <femanal.com>, and <femenol.com> domain names.
Having established all three elements required under the ICANN Policy as to the <femanoll.com>, <femmanol.com>, <femanolofficialsite.com>, <femnol.com>, <femanal.com>, and <femenol.com> domain names, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <femanoll.com>, <femmanol.com>, <femanolofficialsite.com>, <femnol.com>, <femanal.com>, and <femenol.com> domain names be TRANSFERRED from Respondent to Complainant.
Having failed to establish all three elements required under the ICANN Policy as to the <femanex.com>, <femmanex.com>, <femanex.net> and <femanexofficialsite.com> domain names, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <femanex.com>, <femmanex.com>, <femanex.net>, and <femanexofficialsite.com> domain names REMAIN WITH Respondent.
James A. Carmody, Esq., Panelist
Dated: January 28, 2011
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