TOP RX, LLC v. DOMAIN PRIVACY
Claim Number: FA1801001767678
Complainant is TOP RX, LLC (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is DOMAIN PRIVACY (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <top-rx-pills.com>, <toprxcanadapharma.com>, <toprxpill.com>, and <toprxmedicines.net>, registered with GuangDong NaiSiNiKe Information Technology Co Ltd.
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on January 18, 2018; the Forum received payment on January 18, 2018.
On January 22, 2018, GuangDong NaiSiNiKe Information Technology Co Ltd. confirmed by e-mail to the Forum that the <top-rx-pills.com>, <toprxcanadapharma.com>, <toprxpill.com>, and <toprxmedicines.net> domain names are registered with GuangDong NaiSiNiKe Information Technology Co Ltd. and that Respondent is the current registrant of the names. GuangDong NaiSiNiKe Information Technology Co Ltd. has verified that Respondent is bound by the GuangDong NaiSiNiKe Information Technology Co Ltd. 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 January 30, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 2018 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@top-rx-pills.com, postmaster@toprxcanadapharma.com, postmaster@toprxpill.com, and postmaster@toprxmedicines.net. Also on January 30, 2018, 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 February 22, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant first began using the TOP RX mark in commerce as early as 1988 in connection with the distribution of pharmaceuticals and has used the mark continuously since that date. Complainant registered the TOP RX mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,812,886) on February 10, 2004. Respondent’s domain names, <top-rx-pills.com>, <toprxcanadapharma.com>, <toprxpill.com>, and <toprxmedicines.net> (the Domain Names), are confusingly similar to Complainant’s mark as they each incorporate the mark in its entirety and merely add various generic and descriptive terms, geographical terms, and a generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Names. It is not commonly known by the Domain Names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use its TOP RX mark. Also, Respondent does not use the Domain Names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, it uses them to offer goods and services in direct competition with Complainant under different trade names, such as GLOBAL MEDS and NO1 CANADIAN PHARMACY.
Respondent registered and uses the Domain Names in bad faith. It registered them to capitalize on the goodwill associated with Complainant by offering competing products or services. Further, given the long-term fame associated with the TOP RX mark, it is inconceivable that Respondent did not have knowledge of Complainant’s rights in the mark at the time it registered the Domain Names.
B. Respondent
Respondent did not submit a Response in this proceeding.
Preliminary Issue: Multiple Domain Names
Complainant has alleged that the Domain Names are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that all of the Domain Names are registered by the same person or entity. In support of this claim, it notes that all four Domain Names are registered through the same registrar and under the same privacy service. Further, it notes that all of them were registered between February and April of 2017, with two having been registered on February 23, 2017. The WHOIS information submitted as Exhibit A to the Complaint confirms that information and that all four Domain Names list the same phone number as contact information. Finally, the resolving webpages for the Domain Names display substantially similar layout, appearance and content. See, Exhibit F to Complaint. The Panel finds that all four Domain Names are registered by the same person or entity, and will proceed as to all four of them, as requested by Complainant.
Merits of the Case
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 will 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.”).
The Panel makes the findings and determinations set forth below with respect to the Domain Names.
Complainant has rights in the TOP RX mark based upon its registration thereof with the USPTO (Reg. No. 2,812,886) on February 10, 2004. See, Complaint Exhibit D. Registration of a mark with the USPTO is sufficient to confer rights in that mark for the purposes of Policy ¶ 4(a)(i). 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).”). Accordingly, the Panel finds that Complainant has established rights in the TOP RX mark for the purposes of Policy ¶ 4(a)(i).
Respondent’s Domain Names are identical or confusingly similar to Complainant’s mark, as they each incorporate the mark in its entirety and merely add various generic, descriptive or geographical terms, and a gTLD. One of the Domain Names also adds two hyphens. Such changes do not distinguish a domain name from a registered mark for the purposes of Policy ¶4(a)(i). Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.), 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), Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”), and Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”). The Panel finds that the Domain Names are confusingly similar to the TOP RX mark for the purposes of Policy ¶4(a)(i).
Based upon the foregoing, the Panel finds that the Domain Names are confusingly similar to the TOP RX mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If, though, the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0 at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) Respondent is not commonly known by any of them, (ii) Complainant has not authorized Respondent to use its TOP RX mark, and (iii) Respondent is not using the Domain Names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because the web sites resolving from them offer pharmaceuticals in direct competition with Complainant and this does not qualify as a bona fide offering of goods and services, or a legitimate noncommercial or fair use of a domain name. These allegations are supported by competent evidence. The WHOIS identifies “Domain Privacy” as the registrant of all four Domain Names. See, Complaint Exhibit A. In the absence of facts indicating otherwise, this is reliable evidence that Respondent is not known by any of the Domain Names. 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). Further, Complainant states that it has never authorized Respondent to use its TOP RX mark in any domain name registration. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel.
Additionally, the Domain Names resolve to web sites which offer numerous pharmaceuticals for sale. See, Complaint Exhibit F. Respondent’s web sites do not mimic or impersonate Complainant’s web site in appearance but by using the Domain Names, which contain Complainant’s mark verbatim, they do attempt to trade on and benefit from Complainant’s reputation and good will. Using a confusingly similar domain name to compete with a complainant does not confer rights and legitimate interests in a domain name under Policy ¶¶ 4(c)(i) and (iii). Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Respondent is using the Domain Names to compete with Complainant. As stated above, this does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii).
Complainant has made its prima facie case. On the evidence presented, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
The evidence of Respondent’s use of the Domain Names set forth above in the rights and legitimate interests analysis also supports a finding of bad faith use and registration of those domains. Respondent is clearly using them to attract, for commercial gain, Internet users to its web sites by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web sites within the meaning to Policy ¶ 4(b)(iv). Panels have consistently held this to be evidence of bad faith under Policy ¶ 4(b)(iv). Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). As mentioned above, Complaint Exhibit F provides screenshots of the resolving webpages, all of which offer pharmaceutical products for sale using different marks not associated with Complainant. Respondent is using the Domain Names to benefit commercially from Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Further, as argued by Complainant, the mark TOP RX, taken as a whole, is neither descriptive nor generic. Given Complainant’s long-standing use of that mark to market pharmaceuticals, the fact that Respondent incorporated it so clearly into its Domain Names, for the purpose of marketing pharmaceuticals, is compelling evidence that it knew of Complainant’s mark when it registered the Domain Names. Indeed, it is evident that Respondent registered them precisely because they do contain Complainant’s mark and would likely attract Internet traffic to Respondent’s sites. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name 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). Respondent clearly knew of Complainant and its mark when it registered the Domain Names.
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <top-rx-pills.com>, <toprxcanadapharma.com>, <toprxpill.com>, and <toprxmedicines.net> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: February 26, 2018
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