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PHAR-MOR, INC.
Complainant,
vs.
EPICENTER COMMUNICATIONS, INC.,
Respondent.
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MAJORITY DECISION
Forum File No.: FA0003000094363
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The above entitled matter came on for an administrative hearing on
May 24, 2000 before Richard B. Wickersham, Andrew F.
Christie and Herman
D. Michels (Chair), the Arbitrators assigned to this matter, on the
complaint of Phar-Mor,
Inc. (Complainant), represented by David R. Posteraro,
Esq. (Roetzel & Andress, attorneys for Complainant) against
Epicenter
Communications, Inc. (Respondent), represented by Douglas P. Ferguson,
Esq. Upon the written submitted
record, including the Complaint and
the Response to the Complaint the following Majority Decision is rendered:
PROCEDURAL FINDINGS
Domain Name: PHARMORE.COM
Domain Name Registrar: Network Solutions, Inc.
505 Huntmar Park Drive
Herndon, Virginia 20170
Domain Name Registrant: Epicenter Communications, Inc.
Date of Domain Name Registration: April 12, 1999
Date Complaint Filed: March 27, 2000
Date Response Filed: April 19, 2000
After reviewing the Complaint and determining it to be in administrative
compliance, the National Arbitration Forum (the
"Forum") forwarded the
Complaint to Respondent in compliance with Rule 2(a) and the administrative
proceeding
was commenced pursuant to Rule 4(c) in compliance with Rule
4(d). The Forum immediately notified Network Solutions, Inc.,
the INTERNET
CORPORATION FOR ASSIGNED NAMES AND NUMBERS ("ICANN") and Respondent
that the administrative proceeding
had commenced. Respondent has submitted
a Response to the Forum within twenty (20) days pursuant to Rule 5(a)
which time has now expired. The Complaint and the Response and all Exhibits
were forwarded to the Arbitrators for decision.
On April 12, 1999, Respondent registered the domain name PHARMORE.COM
with the domain name registrar Network Solutions,
Inc., the entity that
is the registrar of the domain name. Network Solutions, Inc. verified
that Respondent
is the registrant for the domain name PHARMORE.COM and
by registering its domain name with Network Solutions, Inc., Respondent
agreed to resolve any disputes regarding its domain name through ICANN's
Rules for Uniform Domain Name Dispute
Resolution policy. Neither the
Complainant nor the Respondent has contested the jurisdiction of the
Forum or
the three Arbitrators assigned to resolve this controversy.
FINDINGS OF FACT
- Complainant is the owner of U.S. Trademark Registration Number
1, 994,585 for the trademark PHAR-MOR. Since January
1983, Complainant
has been using the trademark PHAR-MOR in connection with various
goods and services,
including artificial sweeteners, unexposed photographic
film, dentifrices, non-medicated hair care preparations, essential
oils for personal use, cosmetics, sun tan preparations, pharmaceutical
preparations, razors, dental
apparatus and instruments, namely dental
floss, disposable diapers, cotton balls and retail store services
in the field of drug store products, health and cosmetic preparations
and general merchandise. Initially the
mark was used for retail
store services in the field of drug store products, health and cosmetic
preparations
and general merchandise. As the business grew, so did
Claimant's usage of the PHAR-MOR trademark. Over the years the
PHAR-MOR
trademark has expanded to include numerous private label consumer
products, pharmaceutical
goods, as well as establish Claimant's
presence on the Internet.
- Claimant has expended significant time, money and effort to establish
public recognition of its PHAR-MOR mark as identifying
it as the
source of numerous high quality goods and service. Claimant uses
this trademark in advertising
and promoting both in print and electronic
form the sale of its goods throughout the United States. Claimant
advertises its goods and services under the PHAR-MOR mark and operates
one hundred and thirty nine [139]
retail stores in twenty four [24]
states. In addition, Claimant operates three hundred two [302] retail
stores. Claimant's current advertising budget for marketing its
goods and services under the PHAR-MOR mark is
twenty two million
five hundred thousand [$22,500,000.00] dollars per annum. As a result
of these efforts
Claimant has established substantial good will
and consumer recognition of the PHAR-MOR trademark, which has become
one of Claimant's most valuable assets.
- Claimant's trademark application for the mark PHAR-MOR was filed
with the United States Patent and Trademark Office
on May 16, 1983.
This mark was registered on the principal register on August 14,
1984 and issued the
registration number 1,290,511. Complainant filed
a second trademark registration on December 21, 1994, to expand
the protection of the PHAR-MOR mark to other goods and services.
This mark was registered on the principal
register on August 20,
1994 and issued the registration number 1,994,585. These two marks
are in full
force and effect and are currently utilized in all aspects
of Claimant's business. Complainant has the exclusive right
to use
and to license the PHARMOR mark.
- On February 24, 1996, Claimant expanded its application of the
PHAR-MOR mark to the Internet, when it launched its
website, WWW.PHARMOR.COM.
Through this website, Claimant sells retail products, operates an
on-line pharmacy, disseminates health
and pharmaceutical information,
maintains a portal devoted to health and medicine and offers various
other health related services. As Claimant's website is an integral
part of its business, third-party usage of confusingly
similar domain
name would cause irreparable harm to Claimant.
- Respondent's domain name PHARMORE.COM is confusingly similar to
Claimant's trademark or service mark in which Complainant
has all
rights, title and interests and consumers are likely to be confused
into believing that there
is some affiliation, connection, sponsorship,
approval or association between Respondent and Claimant, when in
fact no such affiliation or association exists. See Rule 4(a)(i).
- Respondent does not have any rights or legitimate interests in
respect to the domain name PHARMORE.COM. See Rule 4(a)(ii).
- Respondent has not demonstrated any rights to and legitimate interest
in the domain name PHARMORE.COM. Respondent has
not made any active
use of the said domain name and tended no evidence of any preparations
towards
such use. Moreover, there is no evidence that Respondent
has been commonly known by the domain name PHARMORE.COM nor
is there
any evidence that Respondent is making a legitimate non-commercial
or fair use of the domain
name without intent for commercial gain
to misleadingly divert customers or to tarnish the trademark or
service mark at issue.
- Respondent registered and used the domain name PHARMORE.COM in
bad faith as evidenced by the fact that it registered
the domain
name on April 12, 1999 nearly sixteen years after Claimant's mark
was registered by the
United States Patent and Trademark Office
and over two years after Claimant's registration of its domain name
PHARMOR.COM on February 14, 1997. Claimant was therefore aware or
should have been aware of the existence
of Claimant's domain name.
Moreover, the circumstances indicate that Respondent had registered
or acquired
the domain name PHARMORE.COM primarily for the purpose
of selling, renting or otherwise transferring the domain name
registration
to Complainant who is the owner of the trademark or servicemark
for valuable consideration
in excess of Respondent's documented
out-of-pocket costs directly related to the domain name. See Rule
4(a)(iii) and Rule 4(b)(i).
- Respondent's registration and use of the domain name PHARMORE.COM
constitute an infringement of Complainant's rights
in its PHARMOR
mark and has caused and will continue to cause substantial and irreparable
harm to Complainant
and its business reputation and good will. Complainant
therefore demanded that Respondent transfer the domain name
PHARMORE.COM
to Complainant.
CONCLUSION
The arbitrators Richard B. Wickersham, Andrew F. Christie, and Herman
D. Michels certify that they have acted independently
and have no known
conflict of interest to serve as Arbitrators in this proceeding. Having
been duly selected
and being impartial and neutral, Richard B. Wickersham
and Herman D. Michels, a majority of the Arbitrators, make the
following
findings and conclusions:
1. The domain name PHARMORE.COM registered by Respondent on April 12,
1999 with Network Solutions, Inc. the domain name
registrar is confusingly
similar to Complainant's mark PHARMOR, Claimant's registered trademark
and service
mark registered on the principal register of the United
States Patent and Trademark Office by Complainant. Complainant
has all
rights and interest in said PHARMOR mark.
2. Respondent does not have any rights or legitimate interests in respect
to the domain name PHARMORE.COM.
3. Respondent has registered and used the domain name PHARMORE.COM
in bad faith.
DECISION
Based upon the above findings and conclusions and pursuant to Rule
4 (1) of the Rules of the Uniform Domain Name Dispute
Resolution Policy
and the National Arbitration Forum Supplemental Rules of ICANN's Uniform
Domain Resolution
Policy, Richard B. Wickersham and Herman D. Michels,
a majority of the Arbitrators, Order that:
1. The domain name PHARMORE.COM registered by Respondent Epicenter
Communications, Inc. be transferred forthwith to Complainant
Phar-Mor,
Inc., and
2. Respondent Epicenter Communications, Inc. shall cease and desist
from any and all use of the domain name PHARMORE.COM.
For a Majority of the Arbitrators
__________________________________________
Herman D. Michels, Chair
Dated: May 26, 2000
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