Top Rx, Inc. v. Saravanan Hoxworth
Claim Number: FA1204001440420
Complainant is Top Rx, Inc. (“Complainant”), represented by Leonard C. Dunavant, Tennessee, USA. Respondent is Saravanan Hoxworth (“Respondent”), Phillippines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <toprx-usa.com>, registered with ABSYSTEMS INC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 23, 2012; the National Arbitration Forum received payment on April 23, 2012.
After numerous requests, the Registrar, ABSYSTEMS INC., has not confirmed to the National Arbitration that the <toprx-usa.com> domain name is registered with ABSYSTEMS INC. or that the Respondent is the current registrant of the name. Registrar’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute.
On May 11, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 2012 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@toprx-usa.com. Also on May 11, 2012, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 name be cancelled.
A. Complainant makes the following assertions:
1. Respondent’s <toprx-usa.com> domain name is confusingly similar to Complainant’s TOP RX mark.
2. Respondent does not have any rights or legitimate interests in the <toprx-usa.com> domain name.
3. Respondent registered and used the <toprx-usa.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns a trademark registration with the United States Patent and Trademark Office for its TOP RX mark (Reg. No. 2,812,886 registered February 10, 2004). Complainant has used the mark in its wholesale distributorship business in the pharmaceuticals industry since 1988.
Respondent uses the <toprx-usa.com> domain name to advertise pharmaceutical products over the Internet in the United States.
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.
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.”).
The Panel finds that Complainant has secured rights in its TOP RX mark through its trademark registration with the USPTO. The Panel also notes that Policy ¶ 4(a)(i) does not compel Complainant to register its mark in the country where Respondent resides and operates. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s <toprx-usa.com> domain name is confusingly similar to Complainant’s TOP RX mark. The disputed domain name uses the TOP RX mark in its entirety, and merely removes the space, and adds a hyphen, the geographic term “usa,” and the generic top-level domain (“gTLD”) “.com. In U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007), the panel found that eliminating the punctuation and the space between the words of a mark and adding a gTLD does not adequately alter the domain name from the mark. In Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003), the panel held that the addition of hyphens does not affect the determination of confusing similarity pursuant to Policy ¶ 4(a)(i). In Seiko Epson Corp. v. St Kitts Registry, FA 1093102 (Nat. Arb. Forum Dec. 3, 2007), the panel stated that the disputed domain name was confusingly similar because adding a geographic term such as “usa” does not distinguish the domain name from the mark. The Panel finds that the changes made to the <toprx-usa.com> domain name fail to distinguish the disputed domain name from the TOP RX mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims that Respondent has no rights or legitimate interests in the disputed domain name. The Panel WHOIS information identifies “Saravanan Hoxworth c/o YourNameMonkey.com” as the domain name registrant. The panel in Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), found that the respondent was not commonly known by the disputed domain name when the WHOIS information did not provide evidence otherwise. In Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003), the panel stated that the respondent was not commonly known by the disputed domain name, the respondent registered the domain name under an unrelated name. Respondent has not submitted any evidence to the record that disputes the claim that it is not commonly known by the disputed domain name. Thus, the Panel finds that Respondent is not commonly known by the <toprx-usa.com> domain name and consequently does not possess any rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii).
The Panel notes that the website resolving from the disputed domain name offers pharmaceutical products for sale, and that Complainant alleges in its Policy ¶ 4(a)(iii) paragraph that Respondent advertises its products to induce customers in the U.S. to use its website to make purchases. The Panel finds that operating a website in order to compete with Complainant by selling similar or identical products to those sold by Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).
Complainant contends in its Policy ¶ 4(a)(iii) paragraph that Respondent’s resolving website is likely infected with spyware. The Panel finds that using a disputed domain name to divert users to an infected website that has the potential to cause computer viruses does not qualify as 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 Hilton Hotels Corp. v. Padonack, FA 1043687 (Nat. Arb. Forum Sept. 6, 2007) (holding that the use of a disputed domain name to host a website that attempted to download a virus when accessed did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name); see also Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, by registering a domain name to cause consumer confusion and attract Internet traffic to its site, and thereby make a profit by selling competing products, Respondent registered and uses the <toprx-usa.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See 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 Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent used <land-cruiser.com> to advertise its business, which sold goods in competition with Complainant. This establishes bad faith as defined in Policy ¶ 4(b)(iv).”).
The Panel also finds that maintaining a website that distributes a virus or malware to Internet users’ computers is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Nat. Arb. Forum December 17, 2010) (finding that a domain name attracting Internet users to a resolving website that attempts to download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii)”)
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <toprx-usa.com> domain name be CANCELLED.
Sandra J. Franklin, Panelist
Dated: June 12, 2012
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