EXP Pharmaceutical Services, Corp. v. Todd Cawthorn
Claim Number: FA1111001416837
Complainant is EXP Pharmaceutical Services Corp. (“Complainant”), represented by Alexander P. Myers, California, USA. Respondent is Todd Cawthorn (“Respondent”), represented by John P. Knouse of Law Office of John P. Knouse, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <exprx.net>, registered with GoDaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Linda M. Byrne as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 21, 2011; the National Arbitration Forum received payment on November 23, 2011.
On November 23, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <exprx.net> 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 November 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 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@exprx.net. Also on November 29, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 December 20, 2011.
Complainant’s Additional Submission was timely received on December 27, 2011 and deemed compliant with Supplemental Rule 7. Respondent’s Additional Submission was received on January 3, 2012.
On December 30, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Linda M. Byrne as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it owns trademark registrations for the following marks: (a) EXP; (b) EXP Pharmaceutical Services Corp.; (c) EXP University, Commitment to Excellence; and (d) EXPHAZ.ID. Complainant began using the mark “EXP” in 1996 and created its first website under the domain name <expworld.com> in 1997. As explained in the Complaint, Complainant provides the following services: “(a) a pharmacy efficiency report prepared by a third-party vendor, (b) selling of mats used by pharmacy technicians, (c) pharmaceutical recall notification services, and (d) pharmaceutical inventorying services, as well as [Complainant’s] core reverse distribution service.”
Complainant states that it first learned of Respondent’s use of “EXP” in connection with Respondent’s pharmacy inventory services business when “one of Complainant’s customers called asking why Complainant had sent him an email asking for his business.” (A copy of the e-mail, dated October 8, 2010, memorializing this customer inquiry was attached to the Complaint).
Complainant argues that the term “RX” is the generic term for prescription, and the addition of “RX” to “EXP” actually “adds nothing to Respondents [sic] mark and in fact adds to the confusion . . .”
Concerning each party’s services, Complainant states, “Both Complainant and Respondent offer pharmaceutical inventory management services to pharmacies,” and “the “two companies market and sell to the same customers, pharmacies.”
B. Respondent
Respondent argues that the domain name <exprx.net> is not confusingly similar to a trademark owned by Complainant, that the parties’ services are different and not competitive, that “EXP” is a generic term, that there are 154 recorded U.S. filings of “EXP,” and that Complainant did not contact Respondent about this issue until 3 ½ years after Respondent had registered the domain name <exprx.net>.
Respondent dismisses Complainant’s evidence of actual confusion as a “hearsay email,” and states that “Complainant has failed to provide a statement by any actual customer of any such confusion . . .” Respondent notes that the “.net” in the domain name “was designed to identify Respondent as a network . . . designed specifically for use by independent pharmacists.”
C. Additional Submissions
In its Additional Submission, Complainant argues: 1) none of the third-party U.S. listings for “EXP” cited by Respondent are used in connection with pharmaceutical inventory services, 2) the mark “EXP” is subject to trademark protection, 3)actual confusion is not necessary for a finding of likelihood of confusion, and 4) a finding of likelihood of confusion does not require that the parties’ services are identical.
In its Additional Submission, Respondent argues: 1) the term “EXP” is not subject to trademark protection, 2) the parties’ “EXP” designs are different, and 3) Complainant has failed to establish likelihood of confusion.
This Panel finds:
1) Complainant is the owner of the EXP trademark, which is the subject of Complainant’s United States registration (Reg. No. 1,449,065, issued July 21, 1987). The description of services for this registration is “return goods management for the medical and pharmaceutical industry, namely, management of expired, overstocked, damaged, or recalled merchandise that is to be returned to manufacturers” (Reg. No. 4,084,478, registered November 1, 2011). The registration states that Complainant has used “EXP” since 1996.
2) Respondent’s <exprx.net> domain name, registered July 27, 2007, resolves to a commercial website that promotes services that relate to inventory control of pharmaceutical products.
3) Respondent is not commonly known by the <exprx.net> domain name. The WHOIS information for the disputed domain name lists the registrant as “Todd Cawthorn.”
4) On October 12, 2010, Complainant sent a letter to the Respondent demanding that all use of “EXP” be discontinued, including use of the <exprx.net> domain name. The parties were unable to resolve this matter prior to the filing of the UDRP Complaint.
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 owns a U.S. trademark registration for “EXP” in association with “return goods management for the medical and pharmaceutical industry, namely, management of expired, overstocked, damaged, or recalled merchandise that is to be returned to manufacturers” (Reg. No. 4,084,478 filed March 10, 2011; registered November 1, 2011). The registration states that Complainant has used the “EXP” mark since 1996. Complainant’s screen shots of its <expworld.com> website demonstrate Complainant’s extensive use of the EXP mark.
The Panel concludes that Complainant owns rights in its EXP mark under Policy ¶ 4(a)(i), and these rights date back to Complainant’s 1996 date of first use. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also 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).
Respondent’s <exprx.net> domain name differs from Complainant’s EXP mark by the additions of the letters “r” and “x” and the generic top-level domain (“gTLD”) “.net.” The Panel concludes that these additions do not adequately distinguish the disputed domain name from Complainant’s mark. See Roche Prods. Ltd. v. Uvarov, D2011-1797 (WIPO Dec. 8, 2011) (finding that “Rx” is inter alia used as an abbreviation for the word prescription and that inclusion of descriptive term “Rx” in domain name does not prevent confusion); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
In addition to the term “RX” being an abbreviation for prescription, a screen shot of the website associated with the <exprx.net> domain name demonstrates the “EXP” used prominently having a different font than “RX.” In short, the Panel concludes that the addition of “RX” to “EXP,” and the use of the top level domain .net, do not sufficiently prevent likelihood of confusion. Indeed, Respondent’s use of “RX” may in fact exacerbate confusion in view of the fact that the services of both parties relate to the pharmaceutical industry.
In its Response, Respondent describes its services as “providing intra-networked inventory management services . . . to enable independent pharmacies through private membership in its network to deal directly with one another to avoid returns entirely through store to store transfers of pharmaceuticals.” Although Complainant’s services may not be identical (“return goods management for the medical and pharmaceutical industry . . .”), this Panel concludes that the two parties’ services are related enough to be likely to cause confusion.
In view of the above, the Panel concludes that Respondent’s <exprx.net> domain name is confusingly similar to Complainant’s EXP mark under Policy ¶ 4(a)(i).
The WHOIS information lists “Todd Cawthorn” as the registrant of the <exprx.net> domain name. Based on the WHOIS information, Respondent is not commonly known by the EXP mark or by the <exprx.net> domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
In this case, each page of the website associated with the <exprx.net> domain name features “EXPRX.net” prominently. The home page for the <exprx.net> website also features the slogan “An Innovation in Inventory Management for Independent Pharmacies.”
Based on the screen shots for the <exprx.net> website, and based on the parties’ description of their respective services, both parties provide a type of pharmaceutical inventory services. According to Complainant’s <expworld.com> website, Complainant is in the “pharmaceutical reverse distribution industry specializing in expired pharmaceutical product returns processing, professional waste disposal and customized reporting services.”
The Panel agrees with Complainant that even if the services offered by Complainant and Respondent on their websites are not identical, they are close enough to be highly related and in direct competition in certain circumstances. Previous panels have found that sales offerings in competition with complainant’s services were not bona fide offerings of goods or services nor legitimate, noncommercial or fair uses of disputed domain names. See Global Rx, Inc. v. Global Internet Mktg., FA 1247953 (Nat. Arb. Forum April 3, 2009) (determining that Respondent’s <globalrxpharmacy.com> domain name was not used legitimately); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (concluding that 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) (finding that 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).
Although the parties’ services are not identical, they are highly related. The Panel determines that it is likely that the same pharmaceutical or health care organizations could hire either (or possibly both) Complainant and Respondent to control pharmaceutical inventory. In view of the fact that the disputed domain name competes and/or has the potential for interfering with Complainant’s business, this Panel concludes that Respondent does not make a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <exprx.net> domain name. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”) .
In view of the above, the Panel finds that Complainant made a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. The Respondent has not proved otherwise. Therefore, the Panel finds that the second element of the Policy is fulfilled.
The UDRP Policy, paragraph 4(b)(iv) states that if by using the domain name someone has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on someone’s web site or location, that shall be evidence of the registration and use of a domain name in bad faith.
The Panel finds the fact that <exprx.net> was registered eleven years after the Complainant began to use the EXP trademark to be an indication of bad faith. Also, the Panel finds it highly improbable that the Respondent has selected arbitrarily the disputed domain name without having prior knowledge of the Complainant’s rights and business. In accordance therewith, it is the Panel’s view that the Respondent has registered the disputed domain name in awareness of the Complainant’s rights.
Respondent contends that the <exprx.net> domain name contains a common term, EXP, that has many meanings apart from Complainant’s EXP mark, such as expert, expense, expected, export, expansion, experiment, exposure, expiration, and experience. Respondent contends that the registration and use of a domain name containing the “exp” common term is not necessarily done in bad faith. However, Respondent does not provide a logical explanation, nor do the screen shots explain, how “EXP” is an acronym for one of the foregoing common terms. This Panel concludes that the most likely scenario is that Respondent registered and uses “EXP” to trade off the good will of Complainant’s “EXP” trademark.
As explained above, this Panel concludes that Respondent’s registration and use of the <exprx.net> domain name competes and/or interferes with Complainant. As such, Respondent’s registration and use disrupts Complainant’s business, constituting bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant); see also Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
In Complainant’s Additional Submission, Complainant alleges that Respondent attempts to take advantage of confusion created as to Complainant’s affiliation with the <exprx.net> domain name. Complainant is not required to prove actual confusion, but Complainant submitted evidence that one customer was actually confused as to Complainant’s affiliation with the <exprx.net> domain name. The Panel infers that Respondent profits from the operation of its business from the <exprx.net> domain name, and concludes that Respondent is attempting to commercially benefit by creating Internet user confusion. As such, this Panel finds that Respondent registered and uses the <exprx.net> domain name in bad faith under Policy ¶ 4(b)(iv). See GlobalRx, Inc. v. Global Internet Mktg., FA 1247953) (Nat. Arb. Forum April 3, 2009) (finding bad faith because respondent’s domain name suggests an attempt to attract Internet users to respondent’s website for commercial gain); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also 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 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).
The Panel finds that the disputed domain name was registered and is being used in bad faith. The third element of the Policy is thus fulfilled.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <exprx.net> domain name be TRANSFERRED from Respondent to Complainant.
Linda M. Byrne, Panelist
Dated: January 13, 2012
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