Top Rx, Inc. v. Direct Privacy ID 195B9
Claim Number: FA1110001412277
Complainant is Top Rx, Inc. (“Complainant”), represented by Leonard C. Dunavant of Evans Petree, PC, Tennessee, USA. Respondent is Direct Privacy ID 195B9 (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <toprxpharmacy.com>, registered with Directnic, Ltd.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 20, 2011; the National Arbitration Forum received payment on October 20, 2011.
On October 20, 2011, Directnic, Ltd confirmed by e-mail to the National Arbitration Forum that the <toprxpharmacy.com> domain name is registered with Directnic, Ltd and that Respondent is the current registrant of the name. Directnic, Ltd has verified that Respondent is bound by the Directnic, Ltd 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 October 24, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 14, 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@toprxpharmacy.com. Also on October 24, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 21, 2011, 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 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:
[a.] The domain name is confusingly similar to the MARK in which the Complainant has rights. The Respondent is using the domain name to advertise the sale of pharmaceutical products over the internet in the United States.
[b.] The Respondent has no rights or legitimate interest in the domain name. As the owner of the registered mark “Top Rx”, Complainant has the exclusive right to the use of the name in connection with pharmaceutical sales in the United States. Respondent’s use of the domain name allows it to traffic off of the good name of Complainant and is not for a legitimate business purpose. The use of the domain name “toprxpartners” by the Respondent has caused actual confusion in the marketplace.
[c.] The domain name was registered and is being used in bad faith. The Respondent is apparently in the pharmaceutical sales business and is selling its products using the domain name as an inducement to potential customers including customers in the United States of America where the Complainant has been operating under the name Top-Rx for nearly eighteen years and has developed a well-respected and well-known company and whose customers will only be confused by Respondent’s use of the domain name.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Top Rx, Inc., is a wholesale distributor of pharmaceuticals and related products. Complainant owns a federal trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,812,886 registered February 10, 2004) for the TOP RX mark. Complainant uses the mark to market and promote its business as the mark also serves as its company name.
Respondent, Direct Privacy ID 195B9, registered the disputed domain name on May 23, 2011. The disputed domain name resolves to a website offering pharmaceutical products for sale.
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."
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.”).
Paragraph 4(a) of the Policy requires Complainant to 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 contends it has established its rights in the TOP RX mark by registering it with the USPTO (Reg. No. 2,812,886 registered February 10, 2004). Previous panels have determined that registering a mark with the USPTO meets the rights requirement held in Policy ¶4(a)(i). See 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); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶4(a)(i) through registration of the mark with the USPTO). Therefore, the Panel finds Complainant has established its rights in the TOP RX mark under Policy ¶4(a)(i).
Complainant also contends Respondent’s <toprxpharmacy.com> domain name is confusingly similar to its TOP RX mark. The disputed domain name includes the entire mark while adding the generic top-level domain (“gTLD”) “.com” and a term descriptive of Complainant’s business, “pharmacy.” The Panel finds adding a gTLD and a term that describes Complainant’s business does not sufficiently differentiate the disputed domain name from Complainant’s mark, making them confusingly similar under Policy ¶4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark).
The Panel finds Policy ¶4(a)(i) satisfied.
The Panel finds Complainant has made a prima facie case against Respondent indicating Respondent lacks rights or legitimate interests in the disputed domain name. As a result of this finding, Respondent now bears the burden of proving it has rights or legitimate interests in the disputed domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶4(c)). Respondent has failed to submit a Response, which allows the Panel to accept all of Complainant’s allegations against Respondent as true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). Out of an abundance of caution, the Panel will examine the record in its entirety to determine whether Respondent has rights or legitimate interests in the disputed domain name in accordance with the factors listed in Policy ¶4(c).
Complainant claims Respondent is not commonly known by the disputed domain name. Respondent has offered no evidence to contradict Complainant’s claims. The WHOIS information identifies the registrant of the disputed domain name as “Direct Privacy ID 195B9.” Based upon the evidence on record, the Panel finds Respondent is not commonly known by the disputed domain name under 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 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 claims Respondent is not engaging in a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name resolves to a web page that offers pharmaceutical products for sale. Respondent’s website is a direct competitor with regard to these products because Complainant is a wholesaler of pharmaceuticals. Thus, the Panel finds Respondent is not engaging in a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶4(c)(i) and 4(c)(iii), respectively. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“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 Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s disputed domain name disrupts its business, providing supporting evidence of bad faith registration and use by Respondent. The disputed domain name resolves to a web page that offers pharmaceutical products for sale. The products for sale from Respondent’s website compete directly with Complainant’s own product offerings. Internet users may arrive at the website and then purchase drugs from Respondent rather than Complainant, whom they were actually seeking out. The Panel finds this use disrupts Complainant’s business and provides affirmative evidence of bad faith registration and use by Respondent under Policy ¶4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).
Complainant also claims Respondent registered and is using the disputed domain name for its own commercial gain, constituting bad faith registration and use. The disputed domain name resolves to a web page offering pharmaceutical products for sale. Respondent presumably collects revenue from the sale of these products. The Panel finds Respondent registered and is using the disputed domain name for its own commercial gain, constituting bad faith registration and use under 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 Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant).
Respondent has also registered the domain name using a so-called “privacy” registration. While there are a large number of possible reasons to do so, such reasons do not generally apply in the commercial context. Registering a domain name anonymously in a commercial context raises the rebuttable presumption of bad faith registration and use…which Respondent has failed to even attempt to rebut.
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 that the <toprxpharmacy.com> domain name be CANCELLED.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: November 21, 2011
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