DECISION

Returns R Us, Inc. v. Joe Webb

Claim Number: FA0106000097676

PARTIES

The Complainant is Returns R Us, Inc. d/b/a Pharma Logistics, Ltd, Mundelein, IL, USA (“Complainant”) represented by Michael Zaccaro, of Returns R Us, Inc. d/b/a Pharma Logistics, Ltd.  The Respondent is Joe Webb, Norcross, GA, USA (“Respondent”) represented by Joseph V. Myers III, of Seyfarth Shaw, Atlanta, GA, USA.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <pharmalogistics.com>, <pharmalogistics.net> and <pharmalogistics.org>, registered with Network Solutions.

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.

Hon. Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on June 15, 2001; the Forum received a hard copy of the Complaint on June 20, 2001.

On June 22, 2001, Network Solutions confirmed by e-mail to the Forum that the domain names <pharmalogistics.com>, <pharmalogistics.net> and <pharmalogistics.org> are registered with Network Solutions and that the Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On June 25, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 16, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@pharmalogistics.com, postmaster@pharmalogistics.net and postmaster@pharmalogistics.org by e-mail.

The parties requested and were granted an extension and a Stay of Administrative Proceeding, which was lifted by the Complainant on August 20, 2001, thereby extending a new Response deadline until September 10, 2001.  A timely response was received and determined to be complete on September 10, 2001.

A timely Additional Submission was received from Complainant and Respondent.

On October 8, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Paul A. Dorf (Ret.) as Panelist.

RELIEF SOUGHT

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The Complaint contends that the domain names at issue are identical in spelling and confusingly similar to the service mark which is held by the Complainant; that the Respondent had no rights or legitimate interest in the domain names at issue and has not used the names in connection with a bona fide offering of goods and services or ever been known or referred to by this name; and that the Respondent acted in bad faith by contacting the Complainant offering to transfer the domain names for valuable consideration in excess of Respondent’s out of pocket costs.

B. Respondent

The Respondent contends that it has a legitimate fair use interest in the domain names at issue by using descriptive words in the domain names at issue and that the Respondent could not have acted in bad faith because his registration of the domain names at issue preceded his knowledge of Complainant and its services.

FINDINGS

The Complainant is engaged in the business of processing pharmaceuticals for others, namely, reverse distribution of prescription pharmaceuticals and inventory tracking for medical facilities, retail pharmacies and pharmaceutical manufacturers. 

The Complainant holds Federal Service Mark registration for "Pharma Logistics" which it first used in commerce in October, 1996.  The Complainant also filed an Application to Adopt, Change or Cancel An Assumed Corporate Name with the State of Illinois Secretary of State stating its intention to transact business under the assumed corporate name of Pharma Logistic, Ltd.

The Respondent is an employee of Strong Environmental, Inc. (SEI).  SEI is engaged in the business of providing management services in the transportation, storage, treatment and disposal of industrial, hazardous and special waste materials.  They are also engaged in the business of reverse distribution of pharmaceutical matters and wastes.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

Identical and/or Confusingly Similar

The domain names at issue are identical to the Complainant’s service mark.  As domain names do not allow spaces between words, the domain names are exactly the same as Complainant’ service mark, with the addition of the gTLD. See Amherst  v. IFC Corp., FA 96768 (Nat. Arb. Forum Apr. 3, 2001) (finding that Respondent’s domain name <customcommerce.com> is identical to Complainant’s CUSTOM COMMERCE trademark registration); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

Rights or Legitimate Interests

The Respondent has not presented any evidence to support its claim that it has rights or legitimate interests in the domain names at issue.  The Respondent has not used the names in connection with a bona fide offering of goods or services pursuant to policy ¶ 4(c)(i).  Also, the Respondent is not commonly known by the disputed domain name or using it for a legitimate noncommercial or fair use.  See Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding “that on the evidence provided by the Complainant and in the absence of any submissions from the Respondents, that the Complainant has established that (i) the Respondents are not using and have not used, or are not demonstrating and have not demonstrated, an intent to use the said domain name in connection with a bona fide offering of goods or services; (ii) the Respondents are not and have not been commonly known by the said domain name; and (iii) the Respondents are not making legitimate noncommercial or fair use of the said domain name, without intending to mislead and divert consumers or to tarnish Complainant’s <THE BODY SHOP> trademark and service mark”).

Further, the Respondent has established a pattern of registering the domain names of competitors and redirecting Internet traffic to their own website via these domain names. 

Registration and Use in Bad Faith

The Respondent contacted the Complainant and offered the domain names at issue for sale to Complainant $75,000, well in excess of Respondent’s out of pocket costs to register the domain names.   See Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith); see also Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy paragraph 4(b)(i) where Respondent stated in communication with Complainant, “if you are interested in buying this domain name, we would be ready to sell it for $10,000”).

It also appears that the Respondent registered the disputed domain names in order to disrupt the business of Complainant, as SEI and the Complainant are competitors.  See Surface Protection Indus., Inc. v. The Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion).

DECISION

As all three elements required by the ICANN Policy Rule 4(a) have been satisfied, it is the decision of this panelist that the requested relief be granted.  

Accordingly, for all of the foregoing reasons, it is ordered that the domain names <pharmalogistics.com> <pharmalogistics.net> and <pharmalogistics.org> be transferred from the Respondent to the Complainant.

Honorable Paul A. Dorf (Ret.) Panelist

Dated:  October 23, 2001

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