Canada Drugs IT v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1205001445693
Complainant is Canada Drugs IT (“Complainant”), represented by Troy Harwood-Jones, Canada. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <canadadugs.com>, registered with Internet.Bs Corp.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 24, 2012; the National Arbitration Forum received payment on May 24, 2012.
On June 5, 2012, Internet.Bs Corp. confirmed by e-mail to the National Arbitration Forum that the <canadadugs.com> domain name is registered with Internet.Bs Corp. and that Respondent is the current registrant of the name. Internet.Bs Corp. has verified that Respondent is bound by the Internet.Bs Corp. 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 June 8, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 28, 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@canadadugs.com. Also on June 8, 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 July 3, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 transferred from Respondent to Complainant.
A. Complainant
The Complainant has established rights to the CANADA DRUGS and CANADADRUGS.COM marks. The Complainant's sole director and officer applied to the Canadian Intellectual Property Office (CIPO) for registration of the "CANADA DRUGS" and "CANADADRUGS.COM" marks on or about March 23, 2001, and received registration for both marks on May 20, 2003. A third mark "CANADADRUGS.COM & DESIGN", was registered with CIPO on September 14, 2005. In January of 2006, as part of corporate reorganization, ownership of the three aforementioned Canada Drugs Marks was assigned to the Complainant. Complainant is an integral part of the CanadaDrugs.com Group of Companies, and serves to advance the CanadaDrugs.com Group of Companies' business through control and policing of the Canada Drugs Marks.
The Complainant is the owner of the Canada Drugs Marks and controls the use of the Canada Drugs Marks by way of licensure to the CanadaDrugs.com Group of Companies.
The core business of the CanadaDrugs.com Group of Companies is the operation of an international mail order service pharmacy from a website at www.canadadrugs.com ("CanadaDrugs.com"). CanadaDrugs.com has offered pharmacy services by mail since April of 2001.
CanadaDrugs.com operates under the registered business name "CanadaDrugs.com"; such business name having been registered on September 8, 2006 by the Complainant and the Complainant's affiliated businesses, 5177007 Manitoba Ltd. and CanadaDrugs.com LP.
CanadaDrugs.com develops its customers through active marketing and advertising of the website located at www.canadadrugs.com. Since 2001, CanadaDrugs.com has spent over $30,000,000 marketing its services through various means, including advertisements in various newspapers and magazines, journals, television commercials, radio, and mailings as well as building internet traffic to its website. Given the nature of CanadaDrugs.com's business, its website is integral to the advancement of its business in the industry.
CanadaDrugs.com is an industry leader, currently operating from within a state of the art 26,000 square foot headquarters housing over 250 employees including a fully licensed pharmacy, pharmacy wholesale, and 24/7 call centre dedicated to the customers of the business. CanadaDrugs.com also operates licensed pharmacies, pharmacy wholesale businesses, and call center partners in 3 other countries, employing an additional 150 staff at those locations to support the needs of the CanadaDrugs.com business and website. CanadaDrugs.com has an established clientele of nearly 1,000,000 patients, offers over 26,000 brand name prescription products, generic prescription products and over the counter products, and fills approximately 3,000 prescriptions a day.
CanadaDrugs.com maintains the highest standards in the conduct of its business. CanadaDrugs.com has had a fully licensed pharmacy under the Manitoba Pharmaceutical Association ("MPhA") since April 2001, has an A+ (highest) rating from the Better Business Bureau, and has received certification and approval by both the Manitoba International Pharmacists Association ("MIPA") and the Canadian International Pharmacy Association ("CIPA"). CanadaDrugs.com has been recognized by numerous private, state, and certification organizations as setting the benchmark in patient safety and quality standards in the industry.
Basis of the Complaint
This Complaint is based on the following factual and legal grounds:
I. The Respondent's <canadadugs.com> domain name is confusingly similar to the Complainant's <canadadrugs.com> domain name and the Complainant's CANADA DRUGS and CANADADRUGS.COM registered Marks, pursuant to paragraph 4(a)(i) of the Uniform Domain Name Dispute Resolution Policy.
II. The Respondent does not have any rights or legitimate interest in the <canadadugs.com> domain name pursuant to paragraph 4(a)(ii) of the Uniform Domain Name Dispute Resolution Policy.
Ill. The Respondent has registered and is using the <canadadugs.com> domain name in bad faith pursuant to paragraph 4(a)(iii) of the Uniform Domain Name Dispute Resolution Policy.
I. Respondent's <canadadugs.com> Domain Name Is Confusingly Similar to Complainant's CANADA DRUGS and CANAOAORUGS.COM Registered Marks
The Complainant submits that the <canadadugs.com> domain name is confusingly similar to the Complainant's CANADA DRUGS and CANADADRUGS.COM registered marks pursuant paragraph 4(a)(i) of the Uniform Domain Name Dispute Resolution Policy, hereinafter "Policy".
(a) Established Rights in the Mark
The Complainant established common law rights in the CANADA DRUGS Mark dating back to 2001 and established statutory rights to the CANADA DRUGS and CANADADRUGS.COM marks in 2003 through registration of the marks with the Canadian Intellectual Property Office. Registration of the mark in Canada is sufficient for Complainant to meet its burden of establishing rights in its mark under Policy ¶4(a)(i).
See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates; rather, it is sufficient that a complainant can demonstrate registration of its mark in some jurisdiction).
(b) Confusing Similar
The omission of the Letter "r" in <canadadugs.com> does not distinguish the disputed domain name from <canadadrugs.com> or from complainant's CANADA DRUGS or CANADADRUGS.COM registered marks. Most ICANN panels resolve the issue of confusing similarity through a simple comparison of the mark in issue with the alphanumeric string comprising the domain name. (See AT&T Intellectual Property, L.P. v. webmasters411.com, FA1286049 (Nat. Arb. Forum Nov 23 2009)). This Panel must, therefore, compare the Complainant's CANADA DRUGS and CANADADRUGS.COM registered marks with Respondent's <canadadugs.com> domain name to determine whether or not the latter is confusingly similar.
Respondent's <canadadugs.com> domain name is confusingly similar to Complainant's registered marks. Respondent has taken the Complainant's CANADA DRUGS and CANADADRUGS.COM registered marks and has merely deleted the letter "r" from the word "drugs" to form its domain name, <canadadugs.com>. It is well established that the omission of a letter or misspelling of a word in a mark does not distinguish a disputed domain name from the mark of a Complainant. See The Gap, Inc. v. Jasper Developments c/o domain manager, FA 1006001332380 (Nat. Arb. Forum Aug. 4, 2010) where Complainant argued that the disputed domain name <bananarepulic.com> was confusingly similar to its BANANA REPUBLIC mark because the disputed domain name merely omitted the letter "b" from the word "republic" and omitted the space between the terms in its mark. Reasoning that the misspelling of Complainant's mark by omitting a single letter did not differentiate the disputed domain name from the Complainant's mark, the arbitrator found that the disputed mark was confusingly similar to the Complainant's mark
For the reason set forth above, Complainant submits that ¶4(a)(i) of the Policy has been satisfied and that the disputed domain name is identical or confusingly similar to Complainant's CANADA DRUGS and CANADADRUGS.COM registered marks.
II. Respondent Lacks Rights or a Legitimate Interest in <canadadugs.com>
Complainant submits that Respondent has no rights or legitimate interest in the <canadadugs.com> domain name pursuant to Policy ¶4(a)(ii).
Under paragraph 4(a)(ii) of the Policy the Complainant must first make out a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name. The threshold for such showing is low. Once a prima facie case is established, the burden then shifts to Respondent who must demonstrate that it has rights or legitimate interests in the at issue domain name.
Complainant asserts that there is no evidence to support Respondent having a legitimate right or interest in the disputed domain name and asserts that the facts surrounding the disputed domain name prove that the Respondent, in fact, lacks a legitimate interest or right in the disputed domain name to satisfy Policy ¶4(a)(ii).
(a) The Respondent is Not Using <canadadugs.com> in Connection with a Bona fide Offering of Goods or Services
Prior to receiving Complainant's demand letter in the immediate proceeding the Respondent was not using or preparing to use the disputed domain name in connection with a bona fide offering of goods or services. First, the Respondent is not selling "dugs" or offering services of "dugs" on the website. "Dugs" is not used as a noun, but rather is a blatant misspelling of "drugs". Second, the <canadadugs.com> domain resolves to a commercial search engine and links that us direct internet users to webpages of Complainant's competitors offering pharmaceutical products for sale. Prior arbitration panels have found that a Respondent's diversionary use of a complainant's mark (regardless of whether the diversion is to Complainant's competitors) sufficient to deny a Respondent's claim of legitimate rights or interest in the domain name. Respondent's use of the <canadadugs.com> domain name to divert Internet users seeking the www.canadadrugs.com website to its own website where it serves up links to competing businesses is, therefore, clearly not a bona fide use of the disputed domain name and supports a finding that Respondent lacks legitimate rights or interest in the <canadadugs.com> domain name. See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (holding that diversionary use of a website deprives a Registrant of claiming protection of having a legitimate interest or right in the domain name but when the disputed domain name is used to divert internet users to the competitors of a Complainant the conclusion that a Respondent lacks legitimate rights or interest in the disputed domain name is reinforced).
See also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that a respondent's use of a disputed domain name to redirect Internet users to a financial services website, which competed with the business of a complainant, was not a bona fide offering of goods or services).
(b) The Respondent is Not Commonly Known as "canadadugs.com"
WHOIS information is relevant to resolving the issue of whether Respondent is commonly known as the disputed domain name. Nowhere in the WHOIS information for <canadadugs.com> does it indicate that Respondent is or was commonly known as "canadadugs.com". According to the WHOIS information, the owner of <canadadugs.com> is "Fundacion Private Whois". The burden is therefore on Respondent to introduce evidence into the record that it is commonly known as "canadadugs.com". Absent the introduction of credible evidence, Respondent cannot assert a legitimate right or interest in the disputed domain name by claiming that it is commonly known as "canadadugs.com".
See e.g., Citizens Financial Group, Inc. v. Namespro.ca Private WHOIS, FA0905001260840 (Nat. Arb. Forum June 16, 2009) (stating Respondent is listed in the WHOIS information as "Namespro.ca Private WHOIS," which does not indicate that Respondent is commonly known by the <citziensbank.com> domain name. Respondent has not offered any evidence to indicate otherwise. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii).
See also DaimlerChrysler AG v. Cinquemille Corp., FA 0710001094616 (Nat. Arb. Forum Nov., 2007) (finding that respondent was not commonly known by the <mercdes-benz.com> domain name because nowhere in Respondent's WHOIS information or elsewhere in the record was there any indication that Respondent is or ever was commonly known by the disputed domain name.
(c) The Respondent is Not Making Legitimate Non-commercial or Fair Use of <canadadugs.com>
As aforementioned, the disputed domain name resolves to a website that offers links to third party businesses, many of which appear to be offering products in direct competition with Complainant. Respondent's attempt to divert Internet users seeking Complainant's website to a website offering links to Complainant's competitors is not a legitimate non-commercial or fair use under Policy 4(c)(iii).
See Encyclopaedia Britannica, inc. v Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of the complainant's mark).
(d) Respondent is Engaged in Typosquatting
Typosquatting is the intentional misspelling of words to intercept and siphon off traffic from its intended destination, by preying on lnternauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith. Respondent's deliberate omission of the letter "r" from the word "drugs" in Complainant's CANADA DRUGS and CANADADRUG.COM marks constitutes typosquatting. Typosquatting is evidence that a Respondent has no rights or legitimate interest in the disputed domain name.
See Encyclopaedia Britannica, inc. v Zuccarini, D2000-0330 (WIPO June 7, 2000) (defining typosquatting); See also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>,<ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark, and that this "typo-squatting" is evidence that Respondent lacks rights or legitimate interests in the disputed domain names").
For the reason set forth above, Complainant submits that 4(a)(ii) of the Policy has been satisfied and that Respondent lacks rights or a legitimate interest in the <canadadugs.com> domain name.
Ill. Respondent Has Registered and Is Using <canadadugs.com> in Bad Faith
Complainant submits that Respondent has registered and is using the <canadadugs.com> domain name in bad faith pursuant to Policy ¶(a)(iii)
Paragraph 4(b) of the Uniform Domain Name Dispute Resolution Policy sets forth four circumstances which evidence that a Respondent has registered and is using a domain name in bad faith. The four circumstances enumerated in Paragraph 4(b) are not exclusive evidence of bad faith, however. The arbitrator or arbitration panel may look to the totality of the circumstances surrounding the registration of the disputed domain name when determining whether the domain name was registered and is being used in bad faith.
See Digi International Inc. v DDI Systems, FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
See also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (stating that bad faith can be inferred from the "totality of the circumstances").
(a) Respondent Is Using the <canadadugs.com> Domain Name to Intentionally Attract Users Seeking Complainant's <canadadrugs.com> website For Respondent's Commercial Gain
One of the circumstances that evidences bad faith is a Registrant's use of the disputed domain name to intentionally attract internet users to the website for commercial gain by creating confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of the disputed web site of location or of a product or service on the disputed site. Uniform Domain Name Dispute Resolution Policy ¶4(b)(iv).
As discussed above, Respondent has registered a domain name that is confusingly similar to Complainant's registered marks to capitalize on an internet user misspelling of canadadrugs.com. In the event the internet user omits typing the "r" in canadadrugs.com, he or she is directed to Respondent's web site which offers links to various websites offering pharmaceutical products and a search engine. The businesses posting links on Respondent's website vary and, at times, Respondent is posting links to businesses offering pharmaceutical products in direct competition with Complainant. Complainant presumes that Respondent benefits commercially from the search engine and from click-through fees generated from the links contained on its webpage. Respondent's use of a confusingly similar domain name for the purpose of directing an internet user to its website whereby it receives revenue is evidence of bad faith because Respondent is taking advantage of the confusing similarity between the disputed domain name and Complainant's mark within the meaning of Policy ¶4(b)(iv).
See Ass'n of Junior Leagues lnt'l lnc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the Respondent's use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy paragraph 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).
(b) The <canadadugs.com> Domain Name Demonstrates Typosquatting
Respondent's use of "dugs" in the domain name is highly suspect as "dugs" is not descriptive of any of the links displayed on <canadadugs.com>. Respondent has intentionally misspelled Complainant's marks to deliberately capitalize of internet users making an error when typing "canadadrugs.com". Typosquatting has been deemed by prior arbitration panels as inherently parasitic and is further evidence of Respondent's bad faith registration and use pursuant to Policy ¶4(a)(iii).
See National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball, v. Zuccarini, WIPO Case No. 2002-1011 (WIPO Jan. 21, 2003) ("Typosquatting ... is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on lnternauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith).
The Complainant submits that Policy ¶4(a)(iii) has been satisfied and that the Respondent has registered and is using the <canadadugs.com> domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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 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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
Complainant argues it owns trademark registrations with the Canadian Intellectual Property Office (“CIPO”) for the CANADA DRUGS mark (Reg. No. TMA581,915 registered May 20, 2003) and the CANADADRUGS.COM mark (Reg. No. TMA581,899 registered May 20, 2003). Trademark registrations with CIPO prove Complainant has rights in the mark for the purposes of Policy ¶4(a)(i). See Dollar Fin. Group v. Bankshire Corp., FA1013686 (Nat. Arb. Forum July 30, 2007) (“Complainant has established rights in the MONEY MART mark under Policy ¶4(a)(i) through registration of the mark with both the USPTO and CIPO.”). According to the findings of prior panels, the Panel may also determine that CIPO trademark registrations are sufficient even though Respondent is not located in Canada. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant claims the omission of the letter “r” in the <canadadugs.com> domain name does not sufficiently distinguish the disputed domain name from the CANADADRUGS.COM mark. As previous panels have determined that removing a single letter from a mark does not differentiate the disputed domain name according to Policy ¶4(a)(i), this Panel holds Respondent’s <canadadugs.com> domain name is confusingly similar to Complainant’s CANADADRUGS.COM mark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 argues the WHOIS information for the <canadadugs.com> domain name does it indicate Respondent is commonly known as the disputed domain name. Complainant contends, according to the WHOIS information, the owner of the disputed domain name is “Fundacion Private Whois.” Complainant claims “absent the introduction of credible evidence, Respondent cannot assert a legitimate right or interest in the disputed domain name by claiming that it is commonly known as ‘canadadugs.com.’” The Panel agrees with Complainant’s assertions and concludes Respondent is not commonly known by the disputed domain name. Respondent does not possess rights and legitimate interests under Policy ¶4(c)(ii). See Citizens Fin. Group, Inc. v. Namespro.ca Private WHOIS, FA 1260840 (Nat. Arb. Forum June 16, 2009) (finding no rights and interests under Policy ¶4(c)(ii) where the WHOIS information did not indicate Respondent was commonly known by the disputed domain name).
Complainant alleges Respondent is not selling “dugs” or offering services of “dugs” on the resolving website. The disputed domain name resolves to a commercial search engine and links directing Internet users to the web pages of Complainant’s competitors offering pharmaceutical products for sale. Complainant notes the links displayed relate to erectile dysfunction, weight loss drugs, etc. and have titles such as “Buy Prescription Drugs” and “Canada Pharmacies.” Complainant asserts this diversionary use of Complainant’s mark to lead consumers to competing businesses cannot be characterized as either a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶4(c)(i) and 4(c)(iii). See 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)). The Panel agrees.
Complainant argues Respondent’s deliberate omission of the letter “r” from the word “drugs” in Complainant’s CANADADRUGS.COM mark constitutes typosquatting, which is evidence that Respondent has no rights or legitimate interests in the disputed domain name. This Panel disagrees with Complainant. While there is authority to the contrary, the UDRP does not regulate “typosquatting” except when it otherwise violates the policy.
It is also difficult to see how Respondent could have acquired any rights to this domain name because Respondent is holding the domain name as a nominee for an undisclosed third party. As such, Respondent disavows (by implication) having acquired any rights in the domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant contends Respondent registered a disputed domain name that is confusingly similar to Complainant’s registered mark to capitalize on Internet users’ misspellings of Complainant’s mark and domain name, CANADADRUGS.COM. These Internet users are then diverted to Respondent’s website, which displays a variety of links to businesses offering pharmaceutical products competing with Complainant. Complainant argues Respondent benefits commercially from the search engine and click-through fees generated from the links on the website. Complainant concludes Respondent’s use of the disputed domain name is taking advantage of the confusing similarity between Complainant’s mark and the disputed domain name for its own commercial gain, which is evidence of bad faith within the meaning of Policy ¶4(b)(iv). This Panel agrees. See 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).
Complainant alleges Respondent has intentionally misspelled the word “drugs” in the disputed domain name to capitalize on Internet users’ mistakes. As Complainant argued under Policy ¶4(a)(ii), this type of domain name registration is characterized as “typosquatting,” which has been deemed by prior arbitration panels “as inherently parasitic” and evidence of bad faith registration and use. This Panel disagrees. Without confusion with competitor (or other factors), the UDRP does not prohibit “typosquatting.”
Finally, this Panel is concerned Respondent is holding the domain name as a nominee for an undisclosed third party. This Panel has never found a convincing reason to hold a domain name in this manner when dealing in a commercial context (although there may certainly be circumstances where it would be reasonable in a personal context). Such a domain name registration raises a rebuttable presumption of bad faith registration and use in this Panel’s mind. Respondent has done nothing to rebut this presumption. This alone is sufficient to find bad faith, under the facts of this case.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered the <canadadugs.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, July 17, 2012
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