A9.com, Inc. v. leon smartish / Jammy Right
Claim Number: FA2307002054411
Complainant is A9.com, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is leon smartish / Jammy Right (“Respondent”), Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <pillpackcoupon.com>, <pillpackdiscounts.com>, <pillpackorders.net> and <pillpackstock.com>, registered with NICENIC INTERNATIONAL GROUP CO., LIMITED.
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to Forum electronically on July 24, 2023. Forum received payment on July 24, 2023.
On July 26, 2023, NICENIC INTERNATIONAL GROUP CO., LIMITED confirmed by e-mail to Forum that the <pillpackcoupon.com>, <pillpackdiscounts.com>, <pillpackorders.net> and <pillpackstock.com> domain names are registered with NICENIC INTERNATIONAL GROUP CO., LIMITED and that Respondent is the current registrant of the names. NICENIC INTERNATIONAL GROUP CO., LIMITED has verified that Respondent is bound by the NICENIC INTERNATIONAL GROUP CO., LIMITED 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 August 7, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 28, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registrations as technical, administrative, and billing contacts, and to postmaster@pillpackcoupon.com, postmaster@pillpackdiscounts.com, postmaster@pillpackorders.net, postmaster@pillpackstock.com. Also on August 7, 2023, 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 registrations as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On August 29, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
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”. Paragraph 1(d) of the Forum's Supplemental Rules defines “The Holder of a Domain Name Registration” as “the single person or entity listed in the registration information, as verified by the Registrar, at the time of commencement” and sub-paragraph 1(d)(i) provides that a Complainant wishing to make an argument for a single Respondent having multiple aliases must comply with Supplemental Rules 4(c) and 17(a)(i).
Complainant has shown that the <pillpackcoupon.com>, <pillpackdiscounts.com>, <pillpackorders.net> and <pillpackstock.com> domain names are effectively controlled by the same person and/or entity, which is operating under several aliases.
Hence this decision refers to leon smartish / Jammy Right as “Respondent”.
A. Complainant
Complainant, A9.com, Inc., a subsidiary of Amazon.com, has rights in the PILLPACK mark through registrations, including with the United States Patent and Trademark Office (“USPTO”). Complainant licenses the PILLPACK mark to PillPack, also a subsidiary of Amazon.com. Founded in 2013, PillPack is a full-service pharmacy in the United States that delivers a better, simpler experience through convenient packaging, modern technology and personalized service.
Respondent’s <pillpackcoupon.com>, <pillpackdiscounts.com>, <pillpackorders.net> and <pillpackstock.com> domain names are confusingly similar to Complainant’s PILLPACK mark.
Respondent lacks rights or legitimate interests in the <pillpackcoupon.com>, <pillpackdiscounts.com>, <pillpackorders.net> and <pillpackstock.com> domain names since Respondent is not commonly known by PILLPACK; is not affiliated with Complainant in any way; is not licensed by Complainant to use Complainant’s PILLPACK trademark; and is not an authorized vendor, supplier, or distributor of Complainant’s goods or services. Respondent has not used the domain names in connection with a bona fide offering of goods or services and is not making a noncommercial fair use of the domain names. Rather, the domain names resolve or have previously resolved to online pharmacies offering prescription medications without a prescription. This violates the U.S. Federal Food, Drug and Cosmetic Act. Using Complainant’s PILLPACK brand illegally to offer prescription drugs without a prescription does not create bona fide or legitimate interests.
As an online pharmacy purportedly operating in the United States and United Kingdom, Respondent could not have been unaware of Complainant’s nationally licensed online pharmacy nor its longstanding use of PILLPACK when it registered the <pillpackcoupon.com>, <pillpackdiscounts.com>, <pillpackorders.net> and <pillpackstock.com> domain names. It did so in bad faith with actual knowledge of Complainant’s rights in the PILLPACK mark and uses them in bad faith to offer prescription medications without a prescription in violation of US Federal law. Furthermore, promoting Respondent’s competing online pharmacy using Complainant’s PILLPACK trademark potentially diverts and disrupts Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical and/or Confusingly Similar
Complainant has shown that it has rights in the PILLPACK mark through several registrations, including with the USPTO (e.g., Reg. No. 5,511,076, registered on July 10, 2018). The Panel finds Respondent’s <pillpackcoupon.com>, <pillpackdiscounts.com>, <pillpackorders.net> and <pillpackstock.com> domain names to be confusingly similar to Complainant’s mark, only differing by the addition to the mark of descriptive terms associated with retail services (“coupon”, “discounts”, “orders” or “stock”), which do nothing to distinguish the domain names from the mark. The inconsequential “.com” and “.net” generic top-level domains (“gTLDs”) may be ignored.
Complainant has established this element.
Rights or Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <pillpackcoupon.com>, <pillpackdiscounts.com>, <pillpackorders.net> and <pillpackstock.com> domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain names in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iii) Respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s PILLPACK mark when Respondent registered the <pillpackcoupon.com>, <pillpackdiscounts.com>, <pillpackorders.net> and <pillpackstock.com> domain names and did so primarily for the purpose of disrupting the business of a competitor. Further, that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s websites and of the goods promoted on those websites. This demonstrates registration and use in bad faith under Policy ¶ 4(b)(iii) and (iv).
Further, by illegally offering prescription medicines without prescriptions, Respondent is using the domain names in bad faith.
Complainant has established this element.
DECISION
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 <pillpackcoupon.com>, <pillpackdiscounts.com>, <pillpackorders.net> and <pillpackstock.com>domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: August 30, 2023
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