TOP RX, LLC v. Gabriel Francis
Claim Number: FA1702001717947
Complainant is TOP RX, LLC (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Gabriel Francis (“Respondent”), South Africa.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <canadianpharmacy-toprx.com>, registered with Hosting Concepts B.V. d/b/a Openprovider.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 17, 2017; the Forum received payment on February 17, 2017.
On Feb 21, 2017, Hosting Concepts B.V. d/b/a Openprovider confirmed by e-mail to the Forum that the <canadianpharmacy-toprx.com> domain name is registered with Hosting Concepts B.V. d/b/a Openprovider and that Respondent is the current registrant of the name. Hosting Concepts B.V. d/b/a Openprovider has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Openprovider 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 22, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 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@canadianpharmacy-toprx.com. Also on February 22, 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 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant registered the TOP RX mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,812,886, registered Feb. 10, 2004). Respondent’s <canadianpharmacy-toprx.com>[1] mark is confusingly similar as it includes the full mark, removes the space, and adds the geographic term “canadian”, the descriptive term “pharmacy”, a hyphen, and the generic top-level domain “.com” (“gTLD”).
2. Respondent has no rights or legitimate interests in <canadianpharmacy-toprx.com>. Respondent is not commonly known by the TOP RX mark, nor is Respondent sponsored or legitimately affiliated with Complainant in any way.
3. Complainant has not given Respondent permission to use the mark in a domain name. Respondent also doesn’t use the domain for any bona fide offering of goods or services as the domain name resolves to a website that offers competing services with those of Complainant.
4. Respondent attempts to capitalize on using Complainant’s trademark to presumably gain revenue from Internet users searching for Complainant’s website.
5. Respondent registered and uses the <canadianpharmacy-toprx.com> in bad faith. First, Respondent attempts to pass off as Complainant and create confusion as to the relationship between Complainant and Respondent.
6. Further, Respondent uses the confusingly similar domain name to offer services in direct competition with Complainant. Finally, Respondent must have had actual or constructive knowledge of Complainant’s mark, demonstrated by the fact that Respondent uses the mark to offer services directly related to Complainant’s.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the TOP RX mark. Respondent’s domain name is confusingly similar to Complainant’s TOP RX mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <canadianpharmacy-toprx.com> domain name and that Respondent registered and uses the domain name 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 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.
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 engages in the business of distributing pharmaceuticals. Complainant first used the TOP RX mark for this purpose around 1988. Complainant has registered the TOP RX mark with the USPTO (e.g., Reg. No. 2,812,886, registered Feb. 10, 2004). Registration of a mark with the USPTO sufficiently recognizes a registrant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
Next, Complainant argues that Respondent’s domain name is confusingly similar as it includes the full mark, removes the space, and adds a geographic term, a descriptive term, a hyphen, and the gTLD “.com”. Such changes do not sufficiently distinguish Respondent’s domain name from Complainant’s mark. See General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) (finding respondent’s <gm-uzbekistan.com> domain name confusingly similar to complainant’s GM mark as the addition of the geographic term “uzbekistan” is inconsequential to a Policy ¶ 4(a)(i) analysis); see also AOL LLC v. AIM Profiles, FA 964479 (Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”); Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Similarly, adding the gTLD “.com” is irrelevant to an analysis of confusing similarity. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <canadianpharmacy-toprx.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in <canadianpharmacy-toprx.com>. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Gabriel Francis” as the registrant. Moreover, Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the TOP RX mark. Thus, without contradiction, Complainant has shown that Respondent lacks rights or legitimate interests with respect to the use of the domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Furthermore, Complainant alleges that Respondent has never been affiliated with Complainant, has never been known by the <canadianpharmacy-toprx.com> domain name prior to its registration, and has not been given permission to use the domain name. Accordingly, the Panel agrees that Respondent is not commonly known by <canadianpharmacy-toprx.com> under Policy ¶ 4(c)(ii).
Complainant next argues that Respondent uses the domain name to redirect users to a webpage in direct competition with Complainant. Using a confusingly similar domain name that resolves in a webpage that directly competes with a complainant amounts to a lack of a bona fide offering of goods or services. See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). Complainant has produced evidence that the domain name redirects prospective users to the website displaying “CANADIAN PHARMACY - Best Online Pharmacy in Canada” and produces a pop-up advertisement for “Generic and Brand Medications Online Pharmacy Store. Lowest Prices!” with a link to “Enter Pharmacy Online.” Clicking on the “Enter Pharmacy Online” link redirects the Internet user to the website located at www.bestcanadiantabs.com, which offers competitive retail pharmacy services. The Panel agrees that this conduct lacks a bona fide offering of goods or services.
Finally, Complainant contends that Respondent only uses its domain name to benefit from Complainant’s famous mark. Such use can demonstrate a lack of a bona fide offering of goods or services and a legitimate noncommercial or fair use. Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). It is reasonable to conclude that Respondent uses Complainants’ mark to promote its webpage and commercially benefit from Complainant’s notoriety. Accordingly, the Panel agrees and finds that this use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant first alleges that Respondent disrupts Complainant’s business for commercial gain by creating a likelihood of confusion by virtue of the use of the <canadianpharmacy-toprx.com> domain name potentially causing Internet users to mistakenly believe there is an association between Complainant and Respondent; this demonstrates bad faith. See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use). Complainant has shown that Respondent’s domain name resolves to a webpage that prominently displays Complainant’s marks and designs, which would lead users to believe that an association existed between Complainant and Respondent when no such relationship did or does exist. The Panel agrees.
Complainant argues that Respondent registered and is using the <canadianpharmacy-toprx.com> in bad faith by attempting to attract users seeking Complainant’s services and commercially benefit from such confusion. This constitutes bad faith. See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”).
Complainant lastly claims that Respondent had actual knowledge of Complainant’s mark. The Panel agrees with Complainant that Respondent most certainly had actual knowledge of Complainant's rights in the mark prior to registering the <canadianpharmacy-toprx.com> domain name demonstrated by the fact, among other reasons, that Respondent uses its domain name to offer services directly related to those of Complainant; that actual knowledge under these circumstances is evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns 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).
The Panel finds Complainant has satisfied 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 <canadianpharmacy-toprx.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson Panelist
Dated: March 29, 2017
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