National Association of Boards of Pharmacy v. Johannes Doku
Claim Number: FA1109001407550
Complainant is National Association of Boards of Pharmacy (“Complainant”), represented by Marsha K. Hoover of Marshall, Gerstein, & Borun, Illinois, USA. Respondent is Johannes Doku (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <vippspharmacies.com>, <vipps-pharmacies.com>, and <vipps-accredited-pharmacies.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
Darryl C. Wilson, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 15, 2011; the National Arbitration Forum received payment on September 16, 2011.
On September 15, 2011, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <vippspharmacies.com>, <vipps-pharmacies.com>, and <vipps-accredited-pharmacies.com> domain names are registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the names. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 September 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 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@vippspharmacies.com, postmaster@vipps-pharmacies.com, and postmaster@vipps-accredited-pharmacies.com. Also on September 22, 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.
Respondent requested additional time to submit its Response and was granted an extension until October 18, 2011. A timely Response was received and determined to be complete on October 19, 2011.
On October 21, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, Esq. as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it is the owner of an incontestable United States trademark for VIPPS. Complainant states that VIPPS stands for “verification of licensure of internet pharmacy sites on the pharmacy” and that VIPPS is a certification mark that is only used by entities that have demonstrated that they are trustworthy sources for prescription medications. Complainant contends that the Respondent’s domain names contain Complainant’s registered trademark and the descriptive term “pharmacies”, and that Respondent has no rights or legitimate interests in the disputed domains. Complainant additionally asserts that the disputed domains were registered, and are being used, in bad faith.
B. Respondent
Respondent contends that the domain names in question are not exactly identical to the trade and/or service mark of the Complainant. Respondent also contends that “The vipps that appears in my domain is just a subset of the entire domain names. The question here is whether or not any domain name on this planet which happens to contain the word vipps is in trademark violation and must be relinquished to the NABP.” Respondent also asserts that VIPPS stands for Verified Internet Pharmacy Practice Site which is a complete sentence on its own that does not need further explanation. Respondent states, “The domains in dispute have nothing to do with that type of business-neither issuing seals nor claiming to be an authentic certifier of internet pharmacies. And that is the issues here.” Respondent states the he plans to do business with some of the domains and that “there are no goods or services associated with my ownership of any of the disputed domain names and the claimant fail to show that my use of the domain and the future site to which it points are likely to cause disruption, to create confusion and/or, in certain instances of ‘famous’ marks, dilute the value of their mark.” Respondent also argues that the Complainant has failed to explain how a mere parking of domain names implies that they have been acquired in bad faith. Respondent finally contends “That I am making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Complainant is the National Association of Boards of Pharmacy (NABP), a nonprofit association of state boards of pharmacy with an address in Illinois. Complainant claims that it is an independent, international, and impartial association that assists its members in developing uniform standards for protecting public health. Complainant states that it works to ensure public safety through various programs including the Verified Internet Pharmacy Practice Site program and that VIPPS is its trademark for the program. Complainant owns United States Patent & Trademark Office (USPTO) registrations for the word mark VIPPS, an associated logo, and a word mark for VET-VIPPS which relates to a companion program for veterinary pharmacies.
Respondent is an individual with an Arizona address. Respondent does not indicate any particular business though the evidence indicates that Respondent owns a relatively high number of domain names. Respondent states that he plans to do business with some of the domains and that he has a “number of websites being developed by different web developers.” The developers “are undertaking different projects for me most of which are evidenced through the domain such which comes up as ‘site under construction’.” Respondent claims that having many domain names is not unusual due to it being a pretty tedious job to come up with the best domain names for internet businesses. Respondent notes that doing so entails that he assemble many domain names and eventually select the best in consultation with other business partners. Respondent states his efforts to come up with the best domain names are why he owns so many.
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.
Complainant argues that it has rights in the VIPPS mark because it has registered the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,632,214 registered October 8, 2002). The Panel finds that this trademark registration demonstrates that Complainant has acquired rights in the VIPPS mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also 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).
Complainant alleges that Respondent’s <vippspharmacies.com>, <vipps-pharmacies.com> and <vipps-accredited-pharmacies.com> domain names are confusingly similar to Complainant’s VIPPS mark because each of the disputed domain names makes one or more of the following additions to Complainant’s mark: the descriptive term “pharmacies,” one or more hyphens, the generic term “accredited,” and the generic top-level domain (“gTLD”) “.com.” In Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005), the Panel found that “the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.” In Am. Int’l Group, Inc. v. AIG-Services, FA 1013505 (Nat. Arb. Forum Aug. 2, 2007), the Panel also stated that the addition of a hyphen, the descriptive term “services,” and the gTLD “.com” did not alleviate any confusing similarity between the disputed domain name and the mark. Based on these decisions and the evidence presented, the Panel finds that in this case Respondent’s <vippspharmacies.com>, <vipps-pharmacies.com>, and <vipps-accredited-pharmacies.com> domain names are confusingly similar to Complainant’s VIPPS mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Complainant has met this requirement.
Complainant asserts, and Respondent agrees, that there is no license or other business relationship between Complainant and Respondent. Complainant also states, and Respondent agrees, that there is no relationship between Respondent and the VIPPS mark or the disputed domain names containing that mark. Complainant states that Respondent does not purport to own a pharmacy and has not been certified to use the VIPPS certification mark. Respondent agrees with Complainant in that regard as well. Furthermore, the Panel finds that the WHOIS information, which identifies the registrant of all three disputed domain names as “Johannes Doku,” does not reflect any association between Respondent and the disputed domain names. Relying on the WHOIS information, Complainant’s assertions, and the lack of other information in the record supporting Respondent’s rights, the Panel concludes that Respondent is not commonly known by the disputed domain names and thus lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant contends that Respondent has never used the disputed domain names for a bona fide business or a legitimate noncommercial or fair purpose. Complainant argues that even searching the Internet Archive WayBack Machine, it never found any active use of the disputed domain names by Respondent. Respondent notes that he does not use the marks at issue but may do so in the future. Although Respondent seems to believe, as he contends as much, that merely parking the disputed domains and making plans to use them is a legitimate interest, he is mistaken for purposes of this prong of the UDRP policy. Simply purchasing domain names and alleging that web site developers have been employed to work on unspecified websites that may entail some of the domain names does not constitute demonstrable preparations that give rise to an inference of legitimate use. Complainant therefore asserts that Respondent does not have rights and legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii). Supported by previous panel decisions in Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006), and TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003), that found no rights in the absence of an active use, the Panel finds that Respondent has not shown rights and legitimate interests under Policy ¶4(c)(i) or 4(c)(iii) as there is no evidence of a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Complainant has proven this element.
Complainant contends that Respondent has registered numerous domain names that infringe on the Complainant’s trademark rights as well as the trademark rights of others. Respondent admits that he owns numerous marks but disputes the assertion of infringement both in the instant case as well as Complainant’s other allegations. The Panel finds that the question of Respondent’s alleged infringement of others marks is not germane to this proceeding. However, Respondent’s admission of ownership of a large number of domain names without any commensurate use is relevant to Complainant’s assertions regarding the Respondent’s registration of the three disputed domain names that are presently at issue. The Respondent’s behavior is indicative of a pattern of bad faith registration on the part of Respondent. Previous panels, in cases such as Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000), and Albertson's, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002), have found that registering several infringing domain names satisfies the burden of proving bad faith under Policy ¶ 4(b)(ii). The Panel finds that Respondent’s registration of three domain names misappropriating Complainant’s VIPPS mark demonstrates a bad faith pattern of registration and use pursuant to Policy ¶ 4(b)(ii).
Complainant also asserts that Respondent has made no use of the disputed domain names and that this inactivity shows bad faith. Complainant argues that Respondent’s asserted intention to use the disputed domain names for a “personal project” sometime in the future does not erase its bad intent or establish a bona fide use as the Policy requires demonstrable preparations to use the disputed domain names before any notice of the dispute. Based on these assertions and evidence, the Panel finds that Respondent’s failure to actively use the disputed domain names indicates bad faith registration and use under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <vippspharmacies.com>, <vipps-pharmacies.com>, and <vipps-accredited-pharmacies.com> domain names be TRANSFERRED from Respondent to Complainant.
Prof. Darryl C. Wilson, Esq., Panelist
Dated: November 3, 2011
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