GlobalRx, Inc. v. ZIBA NAJAFI
Claim Number: FA1406001566518
Complainant is GlobalRx, Inc. (“Complainant”), represented by Daniel T. Tower, North Carolina, USA. Respondent is ZIBA NAJAFI (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ocglobalrxpharmacy.com>, registered with Register.com, Inc.
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 June 24, 2014; the National Arbitration Forum received payment on June 27, 2014.
On July 1, 2014, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <ocglobalrxpharmacy.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.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 July 7, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 28, 2014 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@ocglobalrxpharmacy.com. Also on July 7, 2014, 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 August 1, 2014, 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
GlobalRx is an international mail order pharmacy that advertises extensively on the Internet. GlobalRx was incorporated in North Carolina as AidsRx, Inc. on July 19, 1996. On December 9, 1996, GlobalRx registered the domain name www.globalrx.com with Network Solutions, Inc. At that time, the company first began using the trade name GlobalRx and began operating its commercial website located at www.globalrx.com.
Since 1996, GlobalRx has used the GLOBALRX mark regularly in commerce as a source identifier for the pharmaceutical goods and services which the company provides. GlobalRx has developed the GLOBALRX mark into a strong mark used in commerce by GlobalRx to signify and represent the pharmaceutical goods and services it provides, and its international reputation and brand recognition.
GlobalRx has significant common law rights in the GLOBALRX mark through its continuous and extensive use of the mark since December, 1996 in connection with its distribution and sale of pharmaceutical products and services. GlobalRx has devoted substantial efforts to advertise and promote its goods and services under the GLOBALRX mark.
The GLOBALRX mark is registered in the United States, Great Britain and Canada. GlobalRx is the owner of the mark GLOBALRX, Service Mark on the Principal Register of the United States Patent and Trademark Office (“USPTO”), Registration No. 2,147,528, registered March 31, 1998. The mark is used for mail order and Internet services featuring prescription and over the counter pharmaceuticals in international class 35. On January 27, 2005, the United States Patent and Trademark Office acknowledged GlobalRx’s Section 15 affidavit for the GLOBALRX mark. Thus, pursuant to Section 15 of the Trademark Act of 1946, 15 U.S.C. §1065, the GLOBALRX mark is incontestable. Pursuant to Section 33(b) of the Act, 15 U.S.C. §1115(b), GlobalRx’s registration is conclusive evidence of the validity of the mark and GlobalRx’s exclusive right to use the mark in commerce.
GlobalRx owns the GLOBALRX mark in the United Kingdom, registered on May 1, 2001 in the United Kingdom Patent Office, TRADE MARK No. 2232286. GlobalRx owns the GLOBALRX mark in Canada, registered on November 18, 2004, Registration No. TMA625862.
Respondent Ziba Najafi is a licensed pharmacist and manager of Global Rx Pharmacy, a compounding pharmacy in Irvine, California. In 2011, the domain name globalrxpharmacy.org, was ordered transferred to Complainant. The Respondent in that proceeding was Keshvar Zeinali, Respondent’s co-manager and pharmaceutical partner at Global Rx Pharmacy. After losing the globalrxpharmacy.com domain name pursuant to National Arbitration Forum Order, Respondent simply went out registered a new one: ocglobalrxpharmacy.com.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
[a.] The ocglobalrxpharmacy.com domain name, registered by Respondent on January 18, 2012, over fourteen years after the registration of Complainant’s mark, is confusingly similar to the GlobalRx’s federally and internationally protected GLOBALRX service mark.
Respondent’s registration of the ocglobalrxpharmacy.com domain name is a clear attempt to confuse GlobalRx’s customers, Internet users, and the general public as to the source of origin of the products which Respondent is selling at its retail pharmacy located at 4720 Barranca Parkway, Irvine, CA 92604 and through the website located at the web address www.ocglobalrxpharmacy.com. Registrant’s domain name www.ocglobalrxpharmacy.com, under applicable precedent, is confusingly similar to the GLOBALRX mark.
Respondent’s mark incorporates Complainant’s GLOBALRX mark. The only difference is the addition of a generic word “pharmacy” and the .org top-level domain name. Top level domains are irrelevant to a finding that a domain name and service mark are identical. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO Jul. 7, 2000) (addition of a generic top-level domain is “not relevant” to a determination of similarity, as it is required, necessary, and functional). The addition of a generic term like “pharmacy” also does not sufficiently distinguish the domain name from the GLOBALRX mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶4(a)(i) is satisfied).
Complainant’s evidence in this proceeding establishes that it holds the United States Patent and Trademark Office (“USPTO”) registration for the GLOBALRX mark. See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that trademark registration with the USPTO creates a presumption of rights in a mark); see also Innomed Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”). Complainant’s evidence clearly demonstrates that it has been constantly using this mark since 1996, and has had more than $55 million in sales related to this mark. Moreover, prior decisions have found that Complainant has established rights in these mark. See GlobalRx, Inc. v. Hope Mills Universal, FA 462918 (Nat. Arb. Forum May 25, 2005); GlobalRx, Inc. v. destinos universales, FA 445549 (Nat. Arb. Forum May 6, 2005) (“Complainant has established that it has rights in the GLOBALRX mark through registration with the United States Patent and Trademark Office and through continuous use of the mark in commerce since 1996.”); see also GlobalRx, Inc. v. GlobalRxService.com, FA 338426 (Nat. Arb. Forum Nov. 24, 2004) (Complainant established rights through both registration and use in commerce); see also GlobalRx, Inc. v. Kartashov, FA 291432 (Nat. Arb. Forum Aug. 20, 2004). Thus, this Panel should find that Complainant has met its burden of establishing that it owns rights in the mark.
The registration of the www.ocglobalrxpharmacy.com domain name and the use of the domain name in conjunction with Respondent’s marketing of its retail business confuses GlobalRx’s customers, Internet users, and the general public as to the origin of the goods being sold. The registration of the www.ocglobalrxpharmacy.com domain name and the use of the domain name in conjunction with the sale of pharmaceutical goods and services is a blatant violation of federal law and infringes on GlobalRx’s federally protected intellectual property rights in the incontestable GLOBALRX mark.
GlobalRx’s registrations for its GLOBALRX mark with the United States Patent and Trademark Office establish Complainant’s rights in the mark. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption.); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis for making the Complaint in the first place); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered mark hold a presumption that they are inherently distinctive and have acquired secondary meaning.”)
The ocglobalrxpharmacy.com domain name is confusingly similar to GlobalRx’s federally protected mark because the only difference is the addition of “pharmacy” to GlobalRx’s federally and internationally protected GLOBALRX mark. Adding generic terms that describe Complainant’s products or services has consistently been found to be inconsequential in determining the similarity between the mark and a domain name. See G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002).
[b.] Respondent has no rights or legitimate interests in the domain name which is the subject of this proceeding. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).
Respondent has no rights or legitimate interests in the disputed domain name. Pursuant to established precedent, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii), and then 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); 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.”)
Respondent has created the www.ocglobalrxpharmacy.com domain name by adding the suffix “pharmacy” and the prefix “oc” to Complainant’s federally protected incontestable mark. Respondent has never been the owner or licensee of the GLOBALRX mark, and has no legitimate right to use Complainant’s mark. The WHOIS record indicates that Respondent registered the disputed domain name on April 8, 2008, over ten years after the Complainant registered the GLOBALRX mark with the USPTO, and over eleven years after 1996, when Complainant established common law rights in the GLOBALRX mark.
Respondent is using the www.ocglobalrxpharmacy.com domain name in connection with the marketing and sale of pharmaceutical products, and thus is in competition with Complainant. Previous panels have found that sales offerings in competition with complainants were not bona fide offerings of goods or services nor legitimate noncommercial or fair uses of disputed domain names. 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 Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“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.”).
Respondent has no rights in the ocglobalrxpharmacy.com domain name, registered by Respondent on January 18, 2012, over thirteen years after Complainant registered the GLOBALRX mark. Complainant has held the United States federal registration for the GLOBALRX mark since March 31, 1998. This registration provides Respondent, a United States resident, with constructive notice of Complainant’s interest in the mark and prior rights. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000). Given this notice, and the widespread fame and significant use by Complainant of the GLOBALRX mark, Respondent cannot argue that the use of a trademark owned by a third party to advertise its own goods or services is a bona fide goods or services, even where the services offered under the mark may be legitimate in other respects. “The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.” See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sep. 27, 2000); see also State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sep. 11, 2000) (use of another’s well-known or famous trademark as a domain name does not constitute a bona fide offering of goods or services). Respondent cannot use the trademark of another as its domain name in order to provide its services.
Respondent operates a website which is designed to confuse, and has confused GlobalRx’s customers and the general public as to the source of origin of the goods sold through the website located at www.ocglobalrxpharmacy.com. Respondent’s website makes customers of GlobalRx, Internet users, and the general public believe that they are doing business with GlobalRx when, in fact, they are doing business with a competitor that has copied GlobalRx’s federally protected mark and has converted the mark to its own use. The www.ocglobalrxpharmacy.com web address itself is evidence of infringement. Respondent has simply taken the federally protected GLOBALRX mark and then added the word “pharmacy” in order to form the ocglobalrxpharmacy.com domain name. Respondent’s registration and use of the ocglobalrxpharmacy.com domain name as it confuses GlobalRx’s customers as to the source, sponsorship, origin and affiliation of products and services marketed on Respondent’s website.
Respondent has violated federal law by registering the ocglobalrxpharmacy.com domain name and by using the domain name in conjunction with the promotion of its pharmacy. Respondent cannot be considered to have any rights or legitimate interests in its web content. The fact that Respondent registered the ocglobalrxpharmacy.com domain name address on April 8, 2008, over ten years after GlobalRx registered the GLOBALRX mark as a Service Mark on the Principal Register of the U.S. Patent and Trademark Office, over eleven years after the first use of the Mark in commerce, and well after January 27, 2005, when the U.S. Patent and Trademark Office found the GLOBALRX mark to be incontestable, is prima facie evidence that Respondent has no rights or legitimate interests in the mark.
The www.ocglobalrxpharmacy.com domain name is confusingly similar to Complainant’s federally protected GLOBALRX mark because Respondent is using the domain name to compete directly with GlobalRx. The website located at www.ocglobalrxpharmacy.com is a portal by which Respondent markets and promotes the goods and services offered at its pharmacy. Such use has consistently and frequently been found neither to be a bona fide offering of goods nor services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and mark, its use of the names was not in connection with the offering of goods or services or any other fair use); see also G.D. Searle & Co. v. Mahoney, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding Respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from Complainant does not constitute a bona fide offering of goods or services under Policy ¶4(c)(i)); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services).
[c.] The evidence in this proceeding clearly shows that, by its registration and use of the ocglobalrxpharmacy.com domain name at issue in this proceeding, Respondent has acted in bad faith. ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii).
Respondent registered the domain name at issue in this proceeding in an effort to get around this forum’s prior Order. See GlobalRx, Inc. v. Keshvar Zeinali FA 1405044 (October 10, 2011). Both of these disputes have been between GlobalRx, Inc. and Global Rx Pharmacy in Irvine, California. The Respondent in the prior proceeding, Ziba Najafi, is a licensed pharmacist at Global Rx Pharmacy in Irvine, CA. Her partner, Keshvar Zeinali, was the respondent in the earlier proceeding involving Respondent’s registration and use of globalrxpharmacy.com. Ziba Najafi registered the ocglobalrxpharmacy.com domain name after her partner, Keshvar Zeinali, was stripped of that domain name by Order of this forum. This type of intentional conduct to avoid the impact of a previous Order of this forum constitutes bad faith registration of the domain name at issue in this proceeding.
Respondent has acted in bad faith by intentionally attempting to attract, for commercial gain, GlobalRx’s customers and Internet users to Respondent’s web sites by creating a likelihood of confusion with Complainant’s GLOBALRX mark. Respondent has, in bad faith, used Complainant’s federally protected mark to confuse Internet users as to the source, sponsorship, and affiliation of Respondent’s web site and the pharmaceutical products and services offered at Respondent’s retail store and web site.
Respondent is using the confusingly similar ocglobalrxpharmacy.com domain name to compete with Complainant. Respondent’s conduct diverts Internet users to Respondent’s competing website, disrupts Complainant’s business and constitutes bad faith registration and use under Policy ¶4(b)(iii). See Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that the respondent registered and used the domain name primarily for the purpose of disrupting the business of the complainant by offering personal e-mail accounts under the domain name <openmail.com> which is identical to the complainant’s services under the OPENMAIL mark); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶4(b)(iii)).
Respondent is using the www.ocglobalrxpharmacy.com website to advertise and promote the goods and services offered at its pharmacy, thereby using GlobalRx’s incontestable federally protected mark to compete with GlobalRx. GlobalRx is a mail order and retail pharmaceutical company. By creating confusion around Complainant’s GLOBALRX mark, Respondent has disrupted GlobalRx’s business.
Respondent’s use of Complainant’s mark within its domain name in order to sell goods and services similar to Complainant’s goods and services is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from Complainant's mark suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business).
The fact that Respondent commercially benefits from using the www.ocglobalrxpharmacy.com website by employing a domain name that incorporates Complainant’s GLOBALRX mark wholesale is evidence that Respondent registered and used the domain names in bad faith pursuant to Policy ¶4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶4(b)(iv) through Respondent’s registration and use of the domain name to intentionally attempt to attract Internet users to its fraudulent website by using Complainant’s famous mark and likeness); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).
Respondent’s use of the ocglobalrxpharmacy.com website to promote the pharmaceutical products and services that it offers has caused confusion among Internet users as to Complainant’s sponsorship or affiliation with the ocglobalrxpharmacy.com website and is thus evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv). See Outdoor Cap Company, Inc. v. Texas International Property Associates, FA 0706001015455 (August 30, 2007; See also Am Univ v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another’s mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith”.)
Finally, Respondent was on constructive notice of Complainant’s registered GLOBALRX mark when it registered the domain name at issue, which was over 13 years after GlobalRx registered the GLOBALRX mark with the USPTO. Respondent’s actual or constructive knowledge of Complainant’s GLOBALRX mark at the time of registration of the disputed domain name is further evidence of bad faith pursuant to Policy ¶4 (a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002)(finding that because the link between the Complainant’s mark and the content advertised on the Respondent’s website was obvious, the Respondent “must have known about the Complainant’s mark when it registered the subject domain name”); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademark, actually or constructively.”)
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 prove 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 claims rights in the GLOBALRX mark under Policy ¶4(a)(i) based on its trademark registration and length of use in association with its business. Complainant is an international mail order pharmacy that advertises extensively on the Internet. Complainant has used the GLOBALRX mark extensively in commerce since 1996 in connection with its distribution and sale of pharmaceutical products and services. As evidence of ownership and use, Complainant has provided registration information for the GLOBALRX mark with the United State Patent & Trademark Office (“USPTO”) (Reg. No. 2,147,528 registered March 31, 1998), United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,232,286 registered May 12, 2000) and Canadian Intellectual Property Office (“CIPO”) (TMA 625,862 registered November 18, 2004). All a complainant needs to establish rights under Policy ¶4(a)(i) is to demonstrate its mark is registered with a national trademark office, which Complainant has done. In this case, Complainant’s mark has been registered in three national trademark offices. See Dixie Consumer Prods. LLC v. Private Whois dixiecup.com, FA 1419529 (Nat. Arb. Forum Jan. 27, 2012) (finding that complainant’s trademark registrations with a number of trademark authorities around the world, including with the CIPO and USPTO, “successfully proves a complainant has rights in a mark . . .”); see also DatingDirect.com Ltd. v. Turner, FA 349013 (Nat. Arb. Forum Dec. 16, 2004) (finding that the panel recognizes the distinctive nature of the complainant’s DATINGDIRECT.COM mark through registration with the United Kingdom Patent Office).
Complainant claims Respondent’s <ocglobalrxpharmacy.com> domain name incorporates Complainant’s GLOBALRX mark in its entirety. Complainant points out that the only difference is the addition of the generic word “pharmacy,” the addition of the prefix “oc,” and the “.com” top-level domain name. In Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) the panel stated that “It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.” Additionally, in Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) the panel concluded 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. It appears the initial “oc” stands for Orange County, which is where Irvine, California is located. Respondent’s <ocglobalrxpharmacy.com> domain name is confusingly similar to Complainant’s GLOBALRX mark based on Respondent’s addition of the generic term “pharmacy,” and the geographical term “oc” as well as the gTLD “.com.”
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 claims Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii). The WHOIS information indicates the disputed domain name is registered to Ziba Najafi and not Global Rx, Inc. (a California corporation). While it is fairly common for businesses to fail to register their domain name correctly, that can have dramatic adverse consequences (especially in UDRP proceedings…like this one). The actual registered owner’s name is not similar to the disputed domain name. In Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) the panel concluded that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter complainant’s argument in its response. Respondent is not commonly known by the disputed domain name based on the WHOIS information provided.
Complainant claims Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial fair use of the domain name. Since Global Rx, Inc. does not own the disputed domain name, the business activities of Global Rx, Inc. cannot be used to demonstrate Respondent’s rights. Respondent apparently does not operate a pharmacy…or even a pharmacy known as Global Rx. Therefore, Respondent has no rights under Policy ¶4(c)(ii) and ¶4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s use of the disputed domain name indicates bad faith under Policy ¶4(b)(iii). While that has some superficial appeal, Respondent does not actually compete with Complainant in the pharmacy business….a corporation somehow associated with Respondent does. The nature of the association is not specified in the complaint.
There is no suggestion Respondent was offering the disputed domain name for sale, so Policy ¶4(b)(i) does not apply.
There is no suggestion Complainant was prevented from reflecting its mark in a domain name, so Policy ¶4(b)(ii) does not apply.
Policy ¶4(b)(iv) reads: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” [emphasis added]. Complainant claims Respondent is intentionally attracting Internet users for commercial gain to the resolving website, by causing confusion as to Complainant’s association with the resolving website and Respondent’s use of the GLOBALRX mark. Respondent does not deny this. This is the only enumerated factor which allows a finding of bad faith registration and use when the Respondent isn’t a competitor (leaving aside the fact the list under Policy ¶4(b) is not an exhaustive list). The Panel reluctantly finds bad faith registration and use on this ground.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <ocglobalrxpharmacy.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, August 12, 2014
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