Maxor National Pharmacy Services Corporation v. Maria Varela
Claim Number: FA1206001448512
Complainant is Maxor National Pharmacy Services Corporation (“Complainant”), represented by Chris Stewart of Law Office of Chris Stewart, P.C., Texas, USA. Respondent is Maria Varela (“Respondent”), Canary Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <maxorpharmacies.com>, registered with Backslap Domains, 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 June 13, 2012; the National Arbitration Forum received payment on June 13, 2012.
On Jun 13, 2012, Backslap Domains, Inc confirmed by e-mail to the National Arbitration Forum that the <maxorpharmacies.com> domain name is registered with Backslap Domains, Inc and that Respondent is the current registrant of the name. Backslap Domains, Inc has verified that Respondent is bound by the Backslap Domains, 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 June 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 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@maxorpharmacies.com. Also on June 18, 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 18, 2012, 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.
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’s Contentions
1) Complainant registered the MAXOR PHARMACIES mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,927,951 on October 17, 1995);
2) Respondent’s <maxorpharmacies.com> domain name is confusingly similar to Complainant’s MAXOR PHARMACIES mark;
3) Respondent did not register the disputed domain name until May 21, 2004;
4) Respondent has not been commonly known by the disputed domain name;
5) Respondent offered to sell the disputed domain name to Complainant for $1,500.00;
6) Respondent is not a licensee or in any other way affiliated with Complainant;
7) Respondent is intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation, or endorsement of Respondent’s website;
8) Respondent’s disputed domain name resolves to a website that promotes Complainant’s competitors;
9) Respondent was on notice of Complainant’s rights in the MAXOR PHARMACIES mark;
10) Respondent registered the disputed domain name primarily for the purpose of disrupting Complainant’s business.
B. Respondent
Respondent did not to submit a Response in this proceeding.
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.”).
Complainant registered the MAXOR PHARMACIES mark with the USPTO (Reg. No. 1,927,951 on October 17, 1995) and submits a printout from the USPTO website to verify its claim. Based upon the evidence provided, the Panel concludes that Complainant established its rights in the MAXOR PHARMACIES mark under Policy ¶ 4(a)(i) when Complainant registered the mark with the USPTO. 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 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 also claims that Respondent’s <maxorpharmacies.com> domain name is confusingly similar to Complainant’s MAXOR PHARMACIES mark. The Panel notes that the disputed domain name includes the entire mark, merely removing the space between terms. The Panel concludes that the two marks are identical for the purposes of Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names”).
Complainant has thus satisfied Policy ¶ 4(a)(i)
Complainant asserts that Respondent has not been commonly known by the disputed domain name. Complainant states that Respondent is not a licensee of Complainant’s mark, nor is Respondent affiliated with Complainant in any way. The Panel notes that the WHOIS information identifies the registrant of the disputed domain name as “Maria Varela.” Based upon the evidence on record, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant also asserts that Respondent resolves the disputed domain name to a website promoting competing pharmacy services, such as Walgreens. The Panel notes that the printout provided from the resolving website indicates that the website offers links to both unrelated and competing third parties. Previous panels have held that promoting third party services via links does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). Therefore, this Panel concludes that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).
Complainant has thus satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent was on notice of Complainant’s rights in the MAXOR PHARMACIES trademark registration. The Panel infers knowledge by Respondent of Complainant’s mark, since Respondent registered a domain name identical to Complainant’s mark. The Panel therefore finds that Respondent registered the mark in bad faith.
Complainant alleges that Respondent offered to sell the disputed domain name to Complainant for $1,500.00. Complainant states that Respondent’s offer reflects an amount greater than the costs associated with registering the disputed domain name. Complainant submits an e-mail conversation between Respondent and Complainant where Respondent offered to sell the domain name for the amount specified. The Panel concludes that Respondent’s offer to sell the disputed domain name demonstrates bad faith registration and use under Policy ¶ 4(b)(i). See Prudential Ins. Co. of Am. v. TPB Fin., FA 105218 (Nat. Arb. Forum Apr. 8, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(i) where the respondent offered to sell the domain name for $900).
Complainant also alleges that Respondent registered and uses the disputed domain name for the primary purpose of disrupting Complainant’s business. Complainant states that the disputed domain name resolves to a website offering links to its competitors in the pharmacy industry, including Walgreens. The Panel notes that the printout provided by Complainant of the resolving website indicates that the website offers links to third party businesses, some of which offer pharmacy services. The Panel therefore finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant contends that Respondent is intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Complainant’s disputed domain name resolves to a website offering links to its competitors in the pharmacy industry. The Panel infers from this use that Respondent generates revenue via click-through fees charged for each Internet user diverted to one of the linked websites. Therefore, the Panel further finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant has thus 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 <maxorpharmacies.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: August 1, 2012
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