CanadaDrugs.com Partnership carrying on
business as CanadaDrugs.com v.
MyCanadaDrugs LLC c/o Caroline Amadio
Claim
Number: FA0502000429088
Complainant is CanadaDrugs.com Partnership carrying on business as CanadaDrugs.com (“Complainant”), 24
Terracon Place, Winnipeg, Manitoba, Canada R2J 4G7. Respondent is MyCanadaDrugs
LLC c/o Caroline Amadio (“Respondent”), 6383 Dartmouth Avenue, St.
Petersburg, FL 33701.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <mycanadadrugs.com>, registered with Register.com.
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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
22, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 23, 2005.
On
February 22, 2005, Register.com confirmed by e-mail to the National Arbitration
Forum that the domain name <mycanadadrugs.com> is registered with Register.com
and that Respondent is the current registrant of the name. Register.com has
verified that Respondent is bound by the Register.com registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
February 25, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 17, 2005 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@mycanadadrugs.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and methods
as were used for the Commencement Notification, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
March 24, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Honorable
Paul A. Dorf (Ret.) 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." 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 makes the following assertions:
1. Respondent’s <mycanadadrugs.com>
domain name is confusingly similar to Complainant’s CANADADRUGS.COM mark.
2. Respondent does not have any rights or
legitimate interests in the <mycanadadrugs.com> domain name.
3. Respondent registered and used the <mycanadadrugs.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, CanadaDrugs.com Partnership carrying on
business as CanadaDrugs.com, is an international prescription services pharmacy
that has offered its pharmacy services over the Internet since April 2001. Complainant operates under the registered
business name CanadaDrugs.com, which was registered by Complainant’s managing
partner, Canada Drugs Ltd., on February 27, 2003.
Complainant holds a registration with the Canadian Intellectual Property
Office for the CANADADRUGS.COM mark (TMA 581,899 issued May 20, 2003). The application for registration of the mark
was filed on March 23, 2001.
Since 2001, Complainant has spent over $5,000,000 in marketing through
advertisements in various newspapers and magazines, journals, television
commercials, radio, mailings and the Internet.
Complainant has spent over $3,000,000 on marketing efforts in the past
year alone. Complainant’s advertising
efforts center on promoting its website at the <canadadrugs.com> domain
name.
Complainant operates from a 40,000 square foot pharmacy with over 270
employees including 15 pharmacists.
Complainant has established a clientele of over 100,000 patients and
offers more than 2,700 brand name prescription products, generic prescription products
and over-the-counter products. Complainant
fills approximately 2,000 prescriptions a day.
Furthermore, Complainant is a fully licensed pharmacy under the Manitoba
Pharmaceutical Association and has been since April 2001. Complainant is also a member of the Better
Business Bureau Online and has received certification and approval by both the
Manitoba International Pharmacists Association (MIPA) and the Canadian
International Pharmacy Association (CIPA).
Complainant was also the first pharmacy to be accredited under the
rigorous standards of the Vermont-based Internet and Mailordere Pharmacy
Accreditation Commission (IMPAC).
Respondent registered the <mycanadadrugs.com> domain name on May 29, 2003. The disputed domain name resolves to a
website for RX Processing Corporation, one of Complainant’s competitors in the
online pharmaceutical service industry.
Complainant researched the “MyCanadaDrugs LLC” business name listed on
Respondent’s WHOIS information and discovered that this business did not exist
according to corporate records with the Florida Secretary of State. However, Complainant found that a business
called “My Canada Drugs Inc.,” with the same mailing address as that listed in
Respondent’s WHOIS information, had never filed an annual return and had been
dissolved by the Florida Secretary of State.
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.
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.
Complainant has
made a prima facie showing that it has rights in the CANADADRUGS.COM
mark through registration with the Canadian Intellectual Property Office and
Respondent has failed to contest this showing.
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 Koninklijke KPN N.V. v. Telepathy Inc.,
D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that
the mark be registered in the country in which Respondent operates. It is sufficient that Complainant can
demonstrate a mark in some jurisdiction).
The <mycanadadrugs.com>
domain name registered by Respondent is confusingly similar to Complainant’s
CANADADRUGS.COM mark since the domain name fully incorporates Complainant’s
mark, adding only the generic or descriptive term “my.” It is well established under the Policy that
attempts to create a distinctive domain name by merely adding a generic or descriptive
term to a registered mark are insufficient to prevent a finding of confusing
similarity under Policy ¶ 4(a)(i). See
ESPN, Inc. v. MySportCenter.com, FA
95326 (Nat. Arb. Forum Sept. 5, 2000) (finding that the “domain name
MYSPORTSCENTER.COM registered by Respondent is confusingly similar to
Complainant’s SportsCenter mark…”); see also Infospace.com, Inc. v. Delighters, Inc., D2000-0068 (WIPO May 1,
2000) (finding that the domain name <myinfospace.com> is confusingly
similar to Complainant’s INFOSPACE mark).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the allegations set forth by Complainant in the
Complaint. In this circumstance, the
Panel is entitled to accept all reasonable allegations and inferences in the
Complaint as true. See Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that Complainant’s allegations are true unless clearly contradicted
by the evidence); see also Ziegenfelder
Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two
inferences based on Respondent’s failure to respond: (1) Respondent does not
deny the facts asserted by Complainant, and (2) Respondent does not deny
conclusions which Complainant asserts can be drawn from the facts).
Complainant
asserts that Respondent does not have rights or legitimate interests in the <mycanadadrugs.com> domain name that contains Complainant’s
CANADADRUGS.COM mark in its entirety.
Once Complainant makes a prima facie case in support of its
allegations, the burden is shifted to Respondent to show that it does have
rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). However, Respondent has not responded to
Complainant’s allegations and has, thus, presented no proof of Respondent’s
rights or legitimate interests.
Therefore, due to Respondent’s failure to respond to the Complaint, the
Panel will assume that Respondent lacks rights and legitimate interests in the
disputed domain name. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once Complainant asserts that Respondent has no rights or legitimate
interests with respect to the domain, the burden shifts to Respondent to
provide credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that, by not submitting a Response, Respondent has failed to invoke
any circumstance which could demonstrate any rights or legitimate interests in
the domain name).
Complainant has
provided evidence that Respondent is using the <mycanadadrugs.com>
domain name to promote its RX Processing Corporation, which is a direct
competitor of Complainant in the international prescription service
industry. The disputed domain name
resolves to Respondent’s website, where Respondent offers the same prescription
services as Complainant under Respondent’s “RX Processing Corporation” business
name. The Panel determines that
Respondent registered the disputed domain name to divert Internet traffic away
from Complainant, its competitor, to Respondent’s website and that this does
not constitute a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i). Furthermore, Policy ¶
4(c)(iii) does not apply since Respondent is not making noncommercial or fair
use of the domain name. Therefore,
Respondent lacks rights and legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(a)(ii). See
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 Ziegenfelder
Co. v. VMH Enter., Inc. D2000-0039
(WIPO Mar. 14, 2000) (finding no rights or legitimate interests based on the
fact that the domain names bear no relationship to the business of Respondent
and that Respondent would only legitimately choose to use Complainant’s mark in
a domain name if Respondent was seeking to create an impression that the two
businesses were affiliated); see also Avery Dennison Corp. v. Steele,
FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding that Respondent had no rights
or legitimate interests in the disputed domain name where it used Complainant’s
mark, without authorization, to attract Internet users to its business, which
competed with Complainant).
Complainant
asserts that Respondent is not commonly known by the <mycanadadrugs.com>
domain name but rather by its operating name “RX Processing Corporation.” The only evidence in the record supporting a
finding under Policy ¶ 4(c)(ii) is Respondent’s listing on the WHOIS record as
“MyCanadaDrugs LLC,” but Complainant’s research of the Florida Secretary of
State corporate records found that a “My Canada Drugs Inc.,” with the same
mailing address as that disclosed in the WHOIS information for Respondent, had
never filed an annual return and was dissolved by the Florida Secretary of
State. Furthermore, Respondent has not
submitted any proof that it is commonly known by the disputed domain name, and
Complainant contends that it did not authorize Respondent to use its mark. Under these circumstances, it is the Panel’s
conclusion that Respondent lacks rights and legitimate interests in the domain
name pursuant to Policy ¶ 4(c)(ii). See
Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that Respondent was not
“commonly known by” the <shantiyogaworks.com> domain name despite
listing its name as “Shanti Yoga Works” in its WHOIS contact information
because there was “no affirmative evidence
before the Panel that Respondent was ever ‘commonly known by’ the disputed
domain name prior to its registration of the disputed domain name”); see
also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May
16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one
has been commonly known by the domain name prior to registration of the domain
name to prevail").
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <mycanadadrugs.com> domain name in an attempt to profit
by intentionally attracting Internet users interested in locating Complainant’s
CANADADRUGS.COM products and services to Respondent’s competing website. Respondent derives commercial benefit from
these intentional diversions of Internet users who are likely to become
confused and use Respondent’s services, believing them to be those of
Complainant. Thus, the Panel concludes
that Respondent’s attempts to divert Internet users for commercial gain by
attracting Internet users to Respondent’s website through a likelihood of
confusion with Complainant’s CANADADRUGS.COM mark is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Identigene, Inc.
v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where
Respondent's use of the domain name at issue to resolve to a website where
similar services are offered to Internet users is likely to confuse the user
into believing that Complainant is the source of or is sponsoring the services
offered at the site); see also Luck's
Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30,
2000) (finding that Respondent had engaged in bad faith use and registration by
linking the domain name to a website that offers services similar to
Complainant’s services, intentionally attempting to attract, for commercial
gain, Internet users to its website by creating a likelihood of confusion with
Complainant’s marks).
Complainant and
Respondent are competitors in the online pharmaceutical service industry, and
Respondent is using the <mycanadadrugs.com> domain name, which
includes Complainant’s entire CANADADRUGS.COM mark, to offer Respondent’s
services. This act of using
Complainant’s mark to divert business from Complainant to Respondent’s
competing business constitutes diversion under the Policy and is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See 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 marks suggests that Respondent,
Complainant’s competitor, registered the names primarily for the purpose of
disrupting Complainant's business); see also SR Motorsports v. Rotary Performance, FA 95859 (Nat. Arb. Forum
Jan. 4, 2001) (finding it "obvious" that the domain names were
registered for the primary purpose of disrupting the competitor's business when
the parties are part of the same, highly specialized field).
The Panel finds
that Policy ¶ 4(a)(iii) has been 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 <mycanadadrugs.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
April 7, 2005
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