Data RX Management, Inc. v. Network Services / MindViews Limited Liability Company
Claim Number: FA1608001687126
Complainant is Data RX Management, Inc. (“Complainant”), represented by Steven L. Rinehart of Western IP Law, Utah, USA. Respondent is Network Services / MindViews Limited Liability Company (“Respondent”), represented by Robert Preaudx, New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <datarx.com>, registered with Global Internet.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 5, 2016; the Forum received payment on August 5, 2016.
On August 9, 2016, Global Internet confirmed by e-mail to the Forum that the <datarx.com> domain name is registered with Global Internet and that Respondent is the current registrant of the name. Global Internet has verified that Respondent is bound by the Global Internet 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 10, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 2016 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 email@example.com. Also on August 10, 2016, 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.
A timely Response was received and determined to be complete on August 30, 2016.
Complainant’s Additional Submission was received on September 6, 2016, and determined to be compliant with Supplemental Rule 7 on September 7, 2016.
On September 8, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant began doing business as “Data RX Management, Inc.” in May of 1998, in connection with prescription transmission services for pharmacies. Complainant owns a United States Patent and Trademark Office (“USPTO”) trademark registration for the DATARX mark (Reg. No. 4,204,557, first use July 1, 1998, filed July 4, 2011, registered Sept. 11, 2012), demonstrating rights therein. Complainant also has rights under the common law. Respondent’s <datarx.com> domain name is confusingly similar because is incorporates the full and unaltered mark and merely adds the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the disputed domain. Respondent is attempting to divert Internet users to its commercial site which includes advertisements to direct competitors of Complainant. See Compl., at Attached Annex O.
Respondent registered and used the disputed domain in bad faith. Complainant’s rights in the DATARX mark predate Respondent’s rights in the disputed domain, which may date back to July 9, 2003 (although this is uncertain because of the privacy service engaged by Respondent). Further, Respondent registered the disputed domain with actual or constructive notice of Complainant, demonstrating bad faith registration and use.
Complainant’s alleged mark is comprised of two common terms “Data” and “RX” and has not demonstrated a strong secondary meaning.
Respondent uses the disputed domain name in connection with its ordinary meaning, establishing rights and legitimate interests. Respondent is not associated with Complainant.
Respondent caused the domain registration information to reflect accurate contact information identifying Respondent as the owner of the domain name with the Registrar upon acquisition of the disputed domain in July 2003. Respondent engaged a privacy service to reduce spam emails and physical mail.
The disputed domain name has been registered for over 13 years. The disputed domain registration itself predates the Complainant’s registered mark by nine years. There is no evidence that Respondent registered the domain with knowledge of Complainant or that it intended to exploit the purported value of Complainant’s mark.
C. Additional Submissions
Complainant does not sacrifice its claim to a disputed domain containing its mark by not registering it when it may have had the opportunity to do so.
There are a number of transfers in the disputed domain name’s history, and therefore, Respondent falsely asserted it has been the registrant since 2003.
Respondent has not been commonly known by DATA RX.
Merely identifying two other parties who infringe the mark does not amount to extensive third party use.
Although Complainant has adequately established that the disputed domain name is confusingly similar to its common law mark DATARX, Complainant has otherwise failed to carry its burden regarding the other two factors of a UDRP analysis: namely, rights and legitimate interests and bad faith use and registration.
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.
The Panel finds that the disputed domain name is confusingly similar to the valid and subsisting trademark of Complainant. Presuming that the registration date of the disputed domain name was in July of 2013, Complainant has established rights in and to the trademark DATARX as of 1998. To make this showing, Complainant points to the follow data points:
(a) A Texas Sales and Use Tax Permit from 1998. See Compl., at Attached Annex E.
(b) A conference registration form of the Complainant dated 1999. See Compl., at Attached Annex F.
(c) A product order form dated 1999. See Compl., at Attached Annex G.
(d) A letter bearing the mark from 2000. See Compl., at Attached Annex H.
(e) A faxed business proposal from 2000 bearing the mark. See Compl., at Attached Annex I.
(f) A 2001 invoice from Network Associates making use of the mark. See Compl., at Attached Annex J.
(g) A 2004 letter from Network Solutions to the Complainant bearing the mark. See Compl., at Attached Annex K.
(h) A litigation filing from 2004 involving the Complainant. See Compl., at Attached Annex L.
(i) An invoice from a professional corporation assisting with Georgia Blue Sky
requirements to the Complainant dated 2001. See Compl., at Attached Annex
This adequately establishes that Complainant had rights in and to DATARX in 1998 which predates any of Respondent’s claimed interests in and to the disputed domain name.
Respondent makes much to do about the weakness of Complainant’s trademark and rests much of its argument on this claim; however, adjudicating the strength of a Complainant’s mark is beyond the jurisdiction of a Panel under the UDRP. The jurisdiction of a Panel is to determine if the trademark rights were established and if they were established prior to the registration of a disputed domain name. When that has been established, as here, the analysis is complete regarding the validity of the mark and the Panel next turns to whether the disputed domain name is confusingly similar to the trademark.
Here, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s common law trademark. The Respondent arrives at the disputed domain name by merely appending the gTLD “.com” to the trademark. This is insufficient to distinguish the disputed domain name from the trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s valid and subsisting trademark.
However, the Panel further finds that the Complainant has failed to carry its burden to establish that Respondent has no rights or legitimate interests in or to the disputed domain name. Although Respondent is not commonly known by the disputed domain name, Complainant must make more of a showing than just that fact to establish no rights or legitimate interests in or to a disputed domain name.
Complainant claims that Annex O supports its claim that Respondent is using the disputed domain name to misdirect unsuspecting Internet users to direct competitors of Complainant. As such, Complainant argues, Respondent cannot have any rights or legitimate interests in or to the disputed domain name. Although it is true that, if adequately supported, such use does not support rights or legitimate interests in or to a disputed domain name, the Panel finds that this one unclear and vague reference does not support its claim.
Here, it is difficult to understand what Complainant’s contention is regarding Annex O. Complainant seems to want this Panel to take judicial notice that it supports its contention with no explanation. That is, it is hard to know with which, if any, of the many links in Annex O Complainant finds itself in direct competition. As such, the Panel finds that Complainant has failed to carry its burden regarding this element.
Even if Annex O somehow demonstrates Respondent’s lack of rights or legitimate interests in or to the disputed domain name, Complainant has failed to carry its burden regarding bad faith use and registration. To make this showing, Complainant must present evidence that Respondent registered the disputed domain name 13 years ago with knowledge of its prior common law trademark rights. Complainant has failed to make this showing.
The Panel recognizes t that while Complainant has not made arguments under Policy ¶ 4(b), such arguments are not mandatory under the Policy—so long as Complainant shows bad faith use and registration in some manner. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). In such a case, using the totality of the circumstances test, the Panel will make its determination.
Complainant argues that Respondent registered and used the disputed domain in bad faith. Complainant is right in claiming that its common law rights in and to the trademark DATARX predates the Respondent’s registration in July of 2003. However, this also raises the question of what the Respondent knew and when it knew it. For the Complainant to prevail, it must show that Respondent had actual knowledge of Complainant’s common law rights at the time of that registration or 13 years ago. It has failed to make this showing.
Further, Complainant does claim that Respondent registered the disputed domain with actual or constructive notice of Complainant, demonstrating bad faith registration and use. Complainant bases its argument on the fact that the disputed domain is identical to the DATARX mark. Panels have found actual notice to impute bad faith under circumstances—the totality of which must lead strongly to an inference that a respondent knew that it was engaged in infringing use. See University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“. . .the Panel infers Respondent’s actual knowledge here based on Respondent’s complete use of the PERIFACTS mark in the <perifacts.com> domain name to promote links related to the field of obstetrics, where Complainant’s mark is used.”).
However, here, the mark is so generic that it is conceivable that the Respondent fell upon the disputed domain name without knowledge of the common law rights of the Complainant. As such, given the totality of the circumstances, the Panel finds that Respondent did not have actual knowledge of Complainant’s prior common law trademark rights.
In summary, Respondent argues the following: (a) it caused the domain registration information to reflect accurate contact information identifying Respondent as the owner of the domain name with the Registrar upon acquisition of the disputed domain in July 2003; (b) it engaged a privacy service to reduce spam emails and physical mail; (c) the domain name has been registered for over 13 years, and (d) the domain registration itself predates Complainant’s registered mark by nine years.
Complainant has submitted no evidence in the record that adequately disputes any of these claims. Therefore, there is no evidence that Respondent registered the domain with knowledge of Complainant 13 years ago or that it intended to exploit the purported value of Complainant’s mark. Where complainants have failed to support their case with sufficient evidence, panels have found for respondents. See Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding that the respondent did not register and use the <racegirl.com> domain name in bad faith because the complainant provided no evidence that the respondent intended to disrupt or divert business from the complainant).
Therefore, under a totality of the circumstances, the Panel finds for Respondent as Complainant has not satisfied its burden to prove any Policy ¶ 4(b) elements, or otherwise any nonexclusive bad faith actions under Policy ¶ 4(a)(iii).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be denied.
Accordingly, it is Ordered that the <datarx.com> domain name remain with the Respondent.
Kenneth L. Port, Panelist
Dated: September 15, 2016
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