East Side Pharmacy, Inc v. BOLDfx Corp
Claim Number: FA1108001404424
Complainant is East Side Pharmacy, Inc (“Complainant”), represented by William J. Sapone of Coleman Sudol Sapone P.C., Connecticut, USA. Respondent is BOLDfx Corp (“Respondent”), represented by Rick Balzen, Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bestpetrx.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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 23, 2011; the National Arbitration Forum received payment on August 23, 2011.
On August 24, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <bestpetrx.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. 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 August 25, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 14, 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@bestpetrx.com. Also on August 25, 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.
A timely Response was received and determined to be complete on August 29, 2011.
A timely Additional Submission was received from Complainant and determined to be complete on August 31, 2011.
A timely Additional Submission was received from Respondent and determined to be complete on September 1, 2011.
On August 31, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
[a] Complainant owns a federal registration on the Supplemental Register for BEST PET RX which registration certificate recites a registration date of Oct. 19, 2010, an amendment to the Supplemental Register on Aug. 19, 2010, a filing date of Sept. 3, 2009, and a first use in commerce date of Sept. 30, 2006.
[b] Respondent’s registered domain <bestpetrx.com> is confusingly similar to Complainant’s BEST PET RX mark.
[c] Respondent has no rights or legitimate interests in this domain name.
[d] Respondent has registered and is using this domain name in bad faith.
B. Respondent
Respondent registered the domain name on October 28, 2005, which was before Complainant began using the mark BEST PET RX and before Complainant filed a trademark application for this mark. Therefore, Complainant had no rights to the BEST PET RX mark predating the date on which Respondent registered its domain name.
C. Additional Submissions
In its Additional Submission, Complainant indicates that it registered the company, Best Pet Rx, LLC, on September 23, 2005, with the State of New Jersey, three weeks before the domain was registered by respondent. In Respondent’s Additional Submission, respondent notes that Best Pet Rx, LLC is not the corporate name of Complainant, and that Complainant has not provided any evidence of a corporate relationship between itself and Best Pet Rx, LLC.
Complainant owns U.S. Trademark Registration Number 3,866,050 for BEST PET RX on the Supplemental Register. The registration certificate recites a registration date of Oct. 19, 2010, a filing date of Sept. 3, 2009, an amendment to the Supplemental Register on August 19, 2010, and a first use date in Commerce of Sept. 30, 2006.
Respondent registered its domain name on October 28, 2005, a date preceding all of the above dates.
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."
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.
Paragraph 4(a)(i) of the Policy requires Complainants to show that Respondent’s domain names are identical or confusingly similar to Complainant’s mark. This provision necessarily implies that Complainant’s rights predate the registration of Registrant’s domain name. Expert Computers, Inc. v. Name Delegation, FA 787937 (Nat. Arb. Forum Oct. 24, 2006). Respondent registered the disputed domain name on October 28, 2005, which is prior to Complainant’s first use of its trademark and prior to Complainant’s filing of its application. As Complainant has not shown that its rights predate the registration of Registrant’s domain names, Complainant has not satisfied paragraph 4(a)(i) of the Policy.
Complainant asserts that it registered the limited liability company, Best Pet Rx, LLC, on September 23, 2005 and prior to Respondent’s date of registration of the domain name <bestpetrx.com>. However, Complainant is East Side Pharmacy, Inc. and not Best Pet Rx, LLC. Further, mere registration of a company name does not establish cognizable rights under Policy ¶ 4(a)(i). See, Pedro Richaud/Schertz Car Care Center v. Roberts Properties, Inc./Mark Roberts, FA 1392248 (Nat. Arb. Forum, July 27, 2011)[1].
Because the Panel has determined that Complainant has not satisfied this requirement of Policy ¶ 4(a)(i), there is no need to determine whether Respondent has rights or legitimate interests in the domain name or whether Respondent registered or used the domain name in bad faith. Nevertheless, it should be noted that since the date of Respondent’s domain registration predates Complainant’s rights to the mark, Respondent could not have registered the disputed domain in bad faith under Policy ¶ 4(a)(iii).
As the Complainant has failed to establish the first element under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <bestpetrx.com> domain name REMAIN WITH Respondent.
David A. Einhorn, Panelist
Dated: September 9, 2011
[1] Neither has Complainant provided any evidence that it has acquired common law rights or secondary meaning in this mark. The fact that the application was amended to the Supplemental Register is evidence that the mark is descriptive and not entitled to protection absent a showing of secondary meaning.
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