PacifiCare
Health Systems, Inc. and PacifiCare Life and Health Insurance Company v.
Save Rite Pharmacy c/o Jimmy Carter
Claim Number: FA0511000601194
Complainant is PacifiCare Health Systems, Inc. and PacifiCare Life and Health Insurance Company (collectively, “Complainant”), represented by Rod S. Berman, of Jeffer, Mangels, Butler & Marmaro LLP, 1900 Avenue of the Stars, Seventh Floor, Los Angeles, CA 90067. Respondent is Save Rite Pharmacy c/o Jimmy Carter (“Respondent”), 6390 Washingtion Ave, Ocean Springs, 39564 MS.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <us-rx-solutions.com>, registered with Inexpensive Domains.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 22, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 28, 2005.
On November 23, 2005, Inexpensive Domains confirmed by e-mail to the National Arbitration Forum that the <us-rx-solutions.com> domain name is registered with Inexpensive Domains and that Respondent is the current registrant of the name. Inexpensive Domains has verified that Respondent is bound by the Inexpensive Domains 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 December 14, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 3, 2006 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@us-rx-solutions.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 6, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 <us-rx-solutions.com> domain name is confusingly similar to Complainant’s RXSOLUTIONS mark.
2. Respondent does not have any rights or legitimate interests in the <us-rx-solutions.com> domain name.
3. Respondent registered and used the <us-rx-solutions.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, PacifiCare Health Systems, Inc. and PacifiCare Life and Health Insurance Co., collectively, is a leader in the field of manage health care and the administration of prescription drug benefit plans. To better serve its subscribers, Complainant has created a distinctive managed health care service that includes online and mail-order pharmacy and prescription drug fulfillment services under the RXSOLUTIONS and PRESCRIPTION SOLUTIONS marks. Complainant has spent millions of dollars on advertising and promotion of the RXSOLUTIONS and PRESCRIPTION SOLUTIONS marks in connection with its services. Complainant registered the RXSOLUTIONS mark on June 1, 2004 (Reg. No. 2,847,829) with the U.S. Patent and Trademark Office (“USPTO”).
On January 10, 2005, Complainant sent a cease and desist letter to the registrant of record, which the WHOIS information listed as “Whois Privacy Protection Services”—a service offered by the registrar. Upon receipt of Complainant’s letter, the registrar changed the registrant information to that of Respondent
The current registrant of the <us-rx-solutions.com> domain name is, according to the WHOIS information, Save Rite Pharmacy. A principal of Respondent contacted Complainant following Complainant’s letter dated July 21, 2005 and emphatically stated that it is not connected with the <us-rx-solutions.com> domain name and it was unaware of the use of its business identity in connection with the <us-rx-solutions.com> domain name. Respondent advised Complainant that it is interested in bringing an end to the unauthorized use of Respondent’s identity in connection with the sale of pharmaceuticals at the <us-rx-solutions.com> domain name.
The WHOIS information lists the registration date of the domain name as December 7, 2004. The website associated with the disputed domain name is a retail site promoting the sale of pharmacy and prescription fulfillment services using the identity of “Save Rite Pharmacy.”
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 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 offers its USPTO registration as evidence of its
rights in the RXSOLUTIONS mark. The
Panel accepts this as evidence of Complainant’s rights pursuant to Policy ¶
4(a)(i). See Vivendi Universal Games
v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); Innomed Techs., 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.”).
The Panel finds that the <us-rx-solutions.com>
domain name is confusingly similar to Complainant’s RXSOLUTIONS mark because it
adds the term “us,” a common designation for “United States,” and hyphens,
which do not significantly distinguish the domain name from the mark. See MFI UK Ltd. v. Jones, D2003-0102
(WIPO May 8, 2003) (finding the <mfiuk.com> domain name confusingly
similar to the complainant’s MFI mark because the addition of the letters “UK”
were merely a common designation for the United Kingdom); Health Devices
Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he
addition of punctuation marks such as hyphens is irrelevant in the
determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”)
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
The disputed domain name appropriates Complainant’s mark to
refer Internet traffic to a pharmaceutical sales website. Appropriating another’s mark in a domain
name without permission from the mark holder to sell related goods is neither a
bona fide offering of a good or service pursuant to Policy ¶ 4(c)(i) nor
a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Glaxo Group
Ltd. v. WWW Zban, FA 203164 (Nat. Arb.
Forum Dec. 1, 2003) (finding that the respondent was not using the domain name
within the parameters of Policy ¶¶ 4(c)(i) or (iii) because the respondent used
the domain name to take advantage of the complainant's mark by diverting
Internet users to a competing commercial site); Clear Channel
Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003)
(finding that the respondent, as a competitor of the complainant, had no rights
or legitimate interests in a domain name that utilized the complainant’s mark
for its competing website).
The Panel finds that there is nothing in the record, including
the WHOIS registration information, which demonstrates that Respondent or the
true registrant of the domain name is commonly known by the disputed domain
name pursuant to Policy ¶ 4(c)(ii). See
Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating
“nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly
known by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply); Gallup, Inc. v.
Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
the respondent does not have rights in a domain name when the respondent is not
known by the mark).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
According to Complainant, Respondent has stated that it is
an unwilling registrant of the <us-rx-solutions.com> domain name;
nevertheless, it is the registrant.
Therefore, the Panel will analyze this matter regarding the totality of
the circumstances, regardless of Respondent’s supposed lack of intent. Cf. Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant
prove that domain names are being used in bad faith does not require that it
prove in every instance that a respondent is taking positive action. Use in bad
faith can be inferred from the totality of the circumstances even when the
registrant has done nothing more than register the names.”); Do The Hustle,
LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad
faith] in Paragraph 4(b) are intended to be illustrative, rather than
exclusive.”).
The disputed domain name refers Internet traffic to an
online pharmaceutical sales company that purports to sell products in
conformance with or identical to Complainant’s health services. The Panel finds that appropriating another’s
mark to sell related or competing services is evidence of bad faith pursuant to
Policy ¶ 4(a)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”); Travant Solutions, Inc. v. Cole, FA 203177
(Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name
in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf
of a competitor of Complainant . . .”).
The Panel finds that Complainant has established Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <us-rx-solutions.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: January 17, 2006
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