TOP RX, LLC v. Jesse campbell / Not Acceptable
Claim Number: FA1702001717948
Complainant is TOP RX, LLC (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Jesse campbell / Not Acceptable (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <toprxmeds.com>, registered with Shinjiru Technology Sdn Bhd.
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 Forum electronically on February 17, 2017; the Forum received payment on February 17, 2017.
On March 2, 2017, Shinjiru Technology Sdn Bhd confirmed by e-mail to the Forum that the <toprxmeds.com> domain name is registered with Shinjiru Technology Sdn Bhd and that Respondent is the current registrant of the name. Shinjiru Technology Sdn Bhd has verified that Respondent is bound by the Shinjiru Technology Sdn Bhd 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 February 27, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 20, 2017 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@toprxmeds.com. Also on February 27, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 31, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 Complaint is based on the TOP RX trademark, which is identified solely and exclusively with Complainant. Complainant’s TOP RX mark was first used in commerce in connection with the distribution of pharmaceuticals as early as 1988, and has been used continuously since that time. The TOP RX mark is registered in the United States, as follows:
· Incontestable U.S. Reg. No. 2,812,886 filed August 16, 2002 and issued February 10, 2004 for the mark TOP RX for “Wholesale distributorship featuring pharmaceuticals” in Class 35.
· Incontestable U.S. Reg. No. 3,465,756 filed June 5, 2007 and issued July 15, 2008 for the mark TOP RX for “Wholesale distributorship featuring pharmaceuticals” in Class 35.
· U.S. Reg. No. 4,310,479 filed March 14, 2012 and issued March 26, 2013 for the mark TOP RX for “Distributorship featuring over the counter vitamins and drugs and prescription pharmaceuticals” in Class 35.
· U.S. Reg. No. 4,441,094 filed July 20, 2012 and issued November 26, 2013 for the mark TOP RX for “Distributorship featuring over the counter vitamins and drugs and prescription pharmaceuticals” in Class 35.
Complainant also owns the following trademark application for the TOP RX logo:
· U.S. Serial No. 87,151,338 filed August 25, 2016, and published January 17, 2017, for the mark TOP RX logo for “Distributorship services featuring prescription pharmaceuticals, over the counter drugs, vitamins, nutraceuticals, over the counter pet medications and pharmaceutical supplies, namely, syringes for medical purposes, glass vials and ampoules for medication sold empty, containers for medications sold empty, pen needles, prescription bags, alcohol prep pads, condoms prescription labels” in Class 35.
Previous panels have found that evidence of a registration with a national trademark authority is evidence of rights in a mark under Policy ¶4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)).
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[a.] The Domain Name is Confusingly Similar to Complainant’s TOP RX Trademark
[i.] In this case, Respondent’s Domain Name is confusingly similar to Complainant’s TOP RX mark in that the Domain Name contains Complainant’s TOP RX mark in its entirety with the addition of (a) the generic top-level domain (“gTLD”) “.com,” and (b) the term “MEDS,” a common abbreviation for the word “medication,” which is descriptive of Complainant’s business. Previous panels have found that these variations are insufficient to differentiate a disputed domain name from a registered mark. See Boch Imports, Inc. and Boch Imports West, Inc. and Boch New To You, Inc. v. Westboro Motors, Inc., FA 1002001308051 (Forum April 6, 2010) (“[A]dding generic terms, especially a geographic term or terms that are descriptive of a Complainant’s business . . . to a Complainant’s complete mark fails to create a new mark and in fact in this case establishes two domain names that have confusing similarity to Complainant’s mark”); see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“. . . it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark . . . a generic or descriptive term (e.g., “jobs, “daily”) . . . does not prevent the domain names from being confusingly similar to the Complainant’s marks.”); Bank of Am. Corp. v. McCall, FA 135012 (Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Thus, the Domain Name is confusingly similar to Complainant’s registered TOP RX mark under Policy ¶4(a)(i).
[ii.] Complainant’s rights in its TOP RX mark predate the registration of the Domain Name. Complainant’s TOP RX mark was first used in commerce in the United States in connection with the distribution of pharmaceuticals as early as 1988, and has been used continuously since that time. Complainant’s United States registrations were issued on February 10, 2004, July 15, 2008, March 26, 2013, and November 26, 2013, respectively. Complainant’s United States Registration Nos. 2,812,886 and 3,465,756 for the mark TOP RX and the stylized mark, respectively, are now incontestable. The Domain Name for Respondent was not registered until November 28, 2015.
[b.] Respondent Has No Rights or Legitimate Interests in the Domain Name
[i.] A complainant must prove that a respondent has “no rights or legitimate interests in respect of the domain name.” UDRP Rule 3(b)(ix)(2). The TOP RX mark taken as a whole is associated exclusively with Complainant as evidenced by its registrations. Therefore, Respondent had no reason to choose the Domain Name except to create the impression of an association with, or to trade off of the goodwill of, Complainant.
[ii.] Respondent is not commonly known by the Domain Name according to Policy ¶4(c)(ii). Respondent is not an authorized licensee, distributor, retailer or subsidiary of Complainant. Respondent has never been authorized to use Complainant’s TOP RX mark, nor has Complainant authorized or licensed Respondent to supply or distribute Complainant’s goods or services. Previous panels have found no rights or legitimate interests where (a) respondent is not a licensee of complainant; (b) complainant’s prior rights in the mark precede respondent’s registration of the domain name; and (c) respondent is not commonly known by the domain name in question. See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
[iii.] The term TOP RX is not a descriptive or geographically significant word in which Respondent might have a claim to rights of use. As described below, Respondent’s only connection with the TOP RX trademark has been registration and use of the disputed Domain Name and use of an almost identical copy of Complainant’s registered TOP RX trademark, which does not demonstrate Respondent’s rights under ¶4(a)(ii) of the Policy. See Vestel Elektronik Saayi ve Ticaret AS v. Mehmet Kahveci, D200-1244 (WIPO Nov. 11, 2000) (“Merely registering [a] domain name is not sufficient to establish rights or legitimate interests for purpose of paragraph 4(a)(ii) of the Policy.”).
[iv.] Respondent has no rights or legitimate interests in the Domain Name because it 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). Instead, Respondent has taken Complainant’s TOP RX trademark and is using it in the Domain Name, merely adding the descriptive abbreviation “MEDS” to the trademark. As such, the Domain Name is almost identical to Complainant’s website domain <<toprx.com>>, which forwards to Complainant’s website domain <<netstore.toprx.com>>), which provides distributorship services featuring prescription pharmaceuticals and other related goods. Accordingly, Respondent’s conduct strengthens the confusing similarity between the Domain Name and the TOP RX trademark. Further, Respondent is using Complainant’s registered TOP RX trademark on the website to which the Domain Name resolves, which contains competing services, as discussed in further detail below. Such use of the TOP RX trademark is commercial and competitive and, as such, does not constitute fair use. Rather, such use infringes upon Complainant’s trademark rights, as discussed in further detail below, and is not a legitimate noncommercial or fair use of the Domain Name under the Policy. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (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.”).
[v.] Furthermore, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services. Instead, Respondent attempts to pass itself off as Complainant’s business—and trade off of Complainant’s goodwill—by using a nearly identical domain name and Complainant’s TOP RX trademark on the website to which the Domain Name resolves to offer competing services. Previous panels have found that such unauthorized use fails to establish rights or legitimate interests in the Domain Name. See, e.g., Computerized Sec. Sys., Inc. v. Hu, FA 157321 (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.”); Ultimate Elecs., Inc. v. Nichols, FA 195683 (Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”); Penn Foster, Inc. v. Direct Privacy ID 99CCC / Domain Name Proxy Service, Inc., FA1204001437866 (Forum May 16, 2012) (finding that <pennfordhighschool.com> website attempted to pass itself off as complainant’s PENN CHARTER HIGH SCHOOL, and issuing high school diplomas for payment not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.).
[vi.] Respondent is clearly attempting to capitalize on using Complainant’s TOP RX trademark as its Domain Name, presumably to gain revenue from Internet users searching for Complainant’s website. In fact, Respondent is using the Domain Name for commercial gain to misleadingly divert consumers to its commercial website. The Domain Name is confusingly similar to Complainant’s TOP RX trademark, and Respondent capitalizes on that confusing similarity to re-route to its website commercial Internet traffic likely destined for Complainant’s website, which is improper and illegal.
[vii.] As evidenced by the foregoing, Respondent is not commonly known by the Domain Name according to Policy ¶4(c)(ii), and Respondent’s use of the Domain Name is neither (a) a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor (b) a legitimate noncommercial or fair use of the Domain Name pursuant to Policy ¶4(c)(iii).
[c.] The Domain Name Has Been Registered and is Being Used in Bad Faith
[i.] Finally, Complainant must show that the disputed Domain Name was registered in bad faith and has been used in bad faith. Policy ¶4(b). Respondent registered the Domain Name without any bona fide basis for such registration in an attempt to capitalize unfairly on the goodwill of Complainant’s TOP RX trademark. Prior panels have held that bad faith is found if it is unlikely that the registrant would have selected the relevant domain name without knowing of the reputation of the trademark in question.
[ii.] Complainant enjoys exclusive rights in the TOP RX trademark by virtue of its registrations for the mark and/or its long-term, widespread and prominent use of that mark. Complainant has never consented to Respondent’s registration of the TOP RX trademark as part of the Domain Name, nor has Complainant ever granted any of its rights to Respondent. In light of the notoriety of Complainant’s TOP RX mark, it is inconceivable that Respondent could have registered the Domain name without knowledge of Complainant’s rights in the mark, which constitutes evidence of bad faith under Policy ¶4(a)(iii). See State Farm Mutual Automobile Insurance Company v. Master Plumbing, FA1210001466938 (Forum Oct. 30, 2012); see also Univision Comm’ens Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent’s contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant’s rights in the UNIVISION mark when registering the disputed domain name). Therefore, Respondent has registered and is using the Domain Name in bad faith.
[iii.] Through its counsel, Complainant sent the attached cease and desist letter to the address and email listed in the Whois information for the Domain Name on December 27, 2016. Respondent has not responded to the cease and desist letter, and has to date failed to transfer the Domain Name to Complainant.
[iv.] Further, by simply using the Domain Name, Respondent makes prominent trademark use of the TOP RX trademark without authorization from Complainant. This use creates the false impression that the information provided on Respondent’s website is sponsored or endorsed by Complainant.
[v.] As noted above, Respondent uses the Domain Name to solicit orders from Internet users from which it derives revenue. Complainant submits that potential revenue derived from online ordering is the primary reason Respondent registered and is using the domain name. Such use constitutes bad faith use and registration on the part of Respondent. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Alticor Inc. v. Eunsook Wi, FA 1101001369539 (Forum Mar. 8, 2011) (finding that respondent’s unauthorized use of a domain name incorporating AMWAY mark resulted in respondent’s commercial benefit by attracting users to his site in a manner that creates a likelihood of confusion and constitutes bad faith); Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
[vi.]Therefore, Respondent registered and is using the 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 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(f), 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 (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 is a national wholesale distributor of pharmaceuticals. Complainant uses the TOP RX mark in conjunction with its business. Complainant registered its TOP RX mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,812,886, registered Feb. 10, 2004). Registration with the USPTO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶4(a)(i).”). Complainant’s USPTO registration shows sufficient rights in the TOP RX mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <toprxmeds.com> is confusingly similar to Complainant’s TOP RX mark because it incorporates the mark in its entirety, eliminating spaces, adding the generic term “meds,” and the “.com” gTLD. The term “meds” is a common abbreviation for the term “medication,” which is a term associated with Complainant’s business. Adding descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from a complainant’s mark under Policy ¶4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016). A space is a prohibited character in a domain name and its omission must be disregarded under a Policy ¶4(a)(i) analysis. Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Respondent’s <toprxmeds.com> is confusingly similar to Complainant’s TOP RX mark.
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 (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 (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 does not have rights or legitimate interests in <toprxmeds.com>. Respondent is not commonly known by the disputed domain name. The WHOIS information associated with this case identifies Respondent as “Jesse campbell” of “Not Acceptable,” which bears no obvious relationship to the disputed domain name. Accordingly, absent a response or information to the contrary, this Panel determines Respondent is not commonly known by <toprxmeds.com>. See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (concluding that the respondent was not commonly known by the <amazondevice.org>, <amazondevices.org> and <buyamazondevices.com> domain names under Policy ¶4(c)(ii), as the pertinent WHOIS information identified “Timothy Mays,” “Linda Haley,” and “Edith Barberdi” as registrants of the disputed domain names).
Complainant claims Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <toprxmeds.com> domain name resolves to a website offering products in direct competition with Complainant’s business (and even tries to pass itself off as Complainant). Such behavior is not consistent with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum March 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). Respondent’s business might well be confused with Complainant’s business. Respondent lacks rights under Policy ¶¶4(c)(i) and 4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using <toprxmeds.com> in bad faith because <toprxmeds.com> resolves to a website offering pharmaceutical products in direct competition with Complainant and tries to pass itself off as Complainant. The disputed domain name disrupts Complainant’s business by diverting potential internet customer to Respondent’s website which offers offering competing goods by impersonating Complainant. It is bad faith under Policy ¶4(b)(iii) and Policy ¶4(b)(iv) when a respondent registered a domain name confusingly similar to a complainant’s mark and the domain name was used to host a competing commercial website (and where Respondent is trying to pass itself off as Complainant). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶4(b)(iii).”); see also CAN Financial Corporation v. William Thomson / CAN Insurance, FA1401001541484 (Forum February 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services). Respondent has engaged in bad faith registration and use under Policy ¶4(b)(iii) and Policy ¶4(b)(iv).
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 <toprxmeds.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, March 31, 2017
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