Cardinal Health, Inc. v. Wuxi Yilian LLC
Claim Number: FA1710001753176
Complainant is Cardinal Health, Inc. (“Complainant”), represented by Shannon V. McCue of Baker & Hostetler LLP. Ohio, USA. Respondent is Wuxi Yilian LLC (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <leaderpharmacies.com> (the Domain Name), registered with Bizcn.com, Inc..
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.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 11, 2017; the Forum received payment on October 11, 2017.
On October 15, 2017, Bizcn.com, Inc. confirmed by e-mail to the Forum that the <leaderpharmacies.com> domain name is registered with Bizcn.com, Inc. and that Respondent is the current registrant of the name. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.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 October 16, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 6, 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@leaderpharmacies.com. Also on October 16, 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 November 7, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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
Complainant is the owner through a subsidiary of the trade mark LEADER registered, inter alia, in the USA with first use in commerce recorded as 1983 for pharmacy related products and services.
The Domain Name contains Complainant’s LEADER mark with the addition of the descriptive term ‘pharmacies’ which does not distinguish the Domain Name from Complainant’s mark. Using a gTLD suffix does not create a meaningful distinction between the Domain Name and Complainant’s mark.
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not commonly known by the Domain Name. Complainant has not authorised Respondent to use Complainant’s trade mark.
The Domain Name purports to offer pharmaceutical products and services that are not connected to Complainant. Respondent also uses Complainant’s logo and other material and details from Complainant’s site on Respondent’s web site seeking to pass itself off as Complainant. This is not a bona fide offering of goods or services.
The site attached to the Domain Name offers prescription drugs without a prescription which is illegal in the USA the market at which the site is directed. If users elect to purchase a pharmaceutical drug they are redirected to a competing pharmaceutical site not connected with Complainant. This cannot be bona fide.
The Domain Name is registered and used in bad faith. The use of content and Complainant’s logo shows actual knowledge of Complainant and its business.
Selling pharmaceuticals under the guise that Respondent is Complainant is disruption of the business of a competitor under s 4 (b)(iii).
The Domain Name is also an example of typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner through a subsidiary of the trade mark LEADER registered, inter alia, in the USA with first use in commerce recorded as 1983 for pharmacy related products and services.
The Domain Name registered in 1997 has been used to offer competing pharmaceutical services and products which are not connected to Complainant including some unlawful activities using Complainant’s logo.
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 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.”).
Identical and/or Confusingly Similar
The Domain Name in this Complaint combines Complainant’s LEADER mark (registered in the USA for pharmaceutical related services with first use recorded as 1983), the generic term ‘pharmacies’ and the gTLD .com.
The addition of terms which are related to Complainant’s business and services to a trade mark in a domain name supports a finding of confusing similarity. Accordingly, the addition of the generic word ‘pharmacies’ does not serve to distinguish the Domain Name from Complainant’s LEADER mark especially bearing in mind that Complainant’s business is in pharmacies. See Abbott Laboratories v Miles White, FA 1646590 (Forum Dec 10, 2015) (holding that the addition of generic terms particularly terms pertaining to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy 4 (a) (i).
The gTLD .com does not serve to distinguish the Domain Name from Complainant’s LEADER mark. See Red Hat Inc. v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to Complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
Respondent does not appear to be commonly known by Complainant’s mark. Complainant has not authorised Respondent to use Complainant’s mark. The use of the Domain Name is commercial and so cannot be legitimate non commercial use.
Panels have found that a respondent is not using a disputed domain name for a bona fide offering of goods or services nor a legitimate non commercial or fair use if it uses the name to divert Internet users to a web site competing with Complainant under its mark. See Coryn Group Inc v Media Insight, FA 19895 9 (Forum Dec. 5, 2003). The Panel may determine that Respondent lacks rights and legitimate interests in the domain name because “Respondent is competing in the same industry as Complainant [offering] a product that is arguably identical to Complainant’s product and under the same name. See Am. Tool & Machining, Inc. v EZ Hitch Inc, FA 113961 (Forum July 16, 2002)
It is clear from the evidence that Respondent has used the sites attached or linked to the Domain Name to promote competing pharmacy services which are not connected with Complainant. The use of Complainant’s logo and other material and details related to Complainant on the web site attached to the Domain Name is passing off and indicates that Respondent was aware of the significance of the LEADER name and Complainant’s rights at the time of registration. The usage of Complainant’s LEADER mark which has a reputation in relation to pharmacy services in relation to pharmacy services not connected with Complainant is not fair as the site does not make it clear that there is no commercial connection with Complainant. Doing this for an unlawful purpose of offering pharmaceuticals without a prescription compounds this. As such it cannot amount to the bona fide offering of goods and services. See Am. Int’l Group Inc v Busby FA 156251 (Forum May 30, 2003) (finding that Respondent’s attempts to pass itself off as Complainant online was blatant unauthorised use of Complainant’s mark and was evidence Respondent had no rights or legitimate interests in the domain name.) See also Nycomed Denmark ApS v Diaz D2006-0779 (WIPO Aug 15, 2006) (concluding that Respondent’s use of a domain name to operate a web site offering a product illegally was not a bona fide offering of goods or services or a legitimate non commercial or fair use).
Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use Complainant’s trade marks in this way. As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
As determined above Respondent's use of the site is commercial and it is using the site to make a profit from competing services not associated with Complainant in a confusing manner. The specific combination of marks and services in the Domain Name and the use of Complainant’s logo and other material and details from Complainant’s web site on the web site attached to the Domain Name indicates Respondent was aware of Complainant’s rights at the time of registration. It seems clear that the use of Complainant’s mark in the Domain Name would cause people to associate the website at the Domain Name with Complainant and its business and services. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating likelihood of confusion with Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the web site. See CAN Financial Corporation v William Thomson/CAN Insurance, FA1401001541484 (Forum Feb 28, 2014)(finding that Respondent had engaged in bad faith under Policy 4 (b)(iii) by using a confusingly similar domain name to attract internet users to its own site where it offered competing services). This also appears designed to disrupt the business of a competitor. See Fitness International, LLC v Alistair Swodeck/Victor and Murray, FA 1506001623644 (Forum July 9, 2015) (where respondent offered the same services as Complainant and it was held this disrupted Complainant’s business under Policy 4 (b)(iii).
As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith under paragraphs 4 (b)(iii) and (iv) and has satisfied the third limb of the Policy and there is no need to consider additional allegations of bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <leaderpharmacies.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne Panelist
Dated: November 20, 2017
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