DECISION

e-Scripts.MD, LLC v. USA Prescription, Inc.

Claim Number: FA0205000114277

PARTIES

Complainant is eScripts.MD, LLC, Marietta, GA (“Complainant”) represented by M. Darren Traub, of Isenberg & Hewitt, P.C.  Respondent is USA Prescription, Inc., Davie, FL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is  <escriptsmd.com>, registered with Intercosmos Media Group, Inc.

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. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 15, 2002; the Forum received a hard copy of the Complaint on May 20, 2002.

On May 16, 2002, Intercosmos Media Group, Inc. confirmed by e-mail to the Forum that the domain name <escriptsmd.com> is registered with Intercosmos Media Group, Inc. and that Respondent is the current registrant of the name.  Intercosmos Media Group, Inc. has verified that Respondent is bound by the Intercosmos Media Group, Inc. 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 May 20, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 22, 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@escriptsmd.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On June 28, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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.”  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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. Respondent’s <escriptsmd.com> domain name is confusingly similar to Complainant’s E-SCRIPTS-MD common law mark.

2. Respondent has no rights or legitimate interests in the <escriptsmd.com> domain name.

3. Respondent registered and used the <escriptsmd.com> domain name in bad faith.

B. Respondent did not submit a Response.

FINDINGS

Complainant owns and operates a website that facilitates online patient-to-physician evaluations, whereby a patient is able to access Complainant’s secure website to fill out a medical history. Complainant forwards the history to an appropriate licensed physician, diagnosis is made and suitable action is taken. Complainant has been marketing its services nationwide under the trade name E-SCRIPTS-MD for nearly three years. Complainant has advertised, both directly and through over 800 affiliates worldwide, its services, conducted at its primary website, <e-scripts-md.com>. Presently, Complainant has over 30,000 patients nationwide and conducted over $20,000,000 in sales in the year 2001.

Respondent registered the disputed domain name June 22, 2001. Complainant’s investigation revealed that Respondent’s disputed domain name redirects Internet users to Respondent’s competing website, <select-pharmacy.com>. Respondent operates in the same industry as Complainant and is one of Complainant’s largest competitors.

DISCUSSION

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.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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; and

(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

Complainant maintains rights in its E-SCRIPTS-MD mark. Complainant has conducted extensive diagnostic and pharmaceutical operations under the E-SCRIPTS-MD mark over the past three years, accruing $20,000,000 in sales last year. Complainant’s mark is not generic, and Complainant’s intense use of its mark has made Complainant’s mark distinct in the online prescription and diagnosis business. Furthermore, Complainant has common law rights in the E-SCRIPTS-MD mark because Complainant spent significant time, effort and expenditure in connection with the development and promotion of the E-SCRIPTS-MD mark, thereby satisfying Policy ¶ 4(a)(i) requirements. See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the UDRP “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the UDRP to “unregistered trademarks and service marks”).

Respondent’s <escriptsmd.com> domain name is confusingly similar to Complainant’s E-SCRIPTS-MD mark because the absence of punctuation, including hyphens, has been held to be inconsequential when conducting a “confusingly similar” analysis. Respondent’s disputed domain name does not transform itself into a distinct mark merely by deleting two hyphens from Complainant’s mark. See Chernow Comms. Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Teradyne Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen").

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to come forward with a Response. Therefore, it is presumed that Respondent has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from Respondent’s failure to reply to the complaint).

Respondent conducts business in the exact same industry as Complainant and represents one of Complainant’s largest competitors. Respondent operates a competing pharmaceutical website located at the <select-pharmacy.com> domain, which is where the disputed domain name reroutes Internet users. Respondent registered the confusingly similar domain name in an attempt to opportunistically trade on the goodwill associated with Complainant’s E-SCRIPTS-MD mark. Furthermore, because Complainant and Respondent are competitors, Respondent’s registration of a confusingly similar domain name implies that Respondent was attempting to commercially benefit from Complainant’s fame. Respondent’s actions fail to demonstrate rights or legitimate interests in the contested domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).

Respondent is not commonly known as “escriptsmd” or <escriptsmd.com> pursuant to Policy ¶ 4(c)(ii). In fact, Complainant’s investigation has provided the Panel with uncontested evidence that Respondent is USA Pharmacy, Complainant’s competitor. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent and Complainant operate in the identical online diagnosis and pharmaceutical industry, thereby offering similar services and goods. Respondent’s registration of a domain name confusingly similar to Complainant’s mark implies that Respondent registered the domain name for the purpose of disrupting the business of Complainant. Respondent’s actions evidence bad faith under Policy ¶ 4(b)(iii). See Mission Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7,2000) (defining “competitor” as "…one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also Surface Prot. Indus., Inc. v. 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).

Additionally, Respondent registered and used the disputed domain name in order to attract, for commercial gain, Internet users searching for Complainant’s services and products. A significant portion of consumers will likely be misled to Respondent’s competing website. Respondent commercially benefits from the unfair use of Complainant’s mark in a confusingly similar domain name. Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with Complainant, thereby exhibiting bad faith under Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users seeking the Complainant’s site to its own website for commercial gain); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the web site without permission from Complainant).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby GRANTED.

Accordingly, it is Ordered that the <escriptsmd.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: July 1, 2002

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