DECISION

USA Prescriptions, Inc. v. usa-prescription-drugs-online.com

Claim Number: FA0210000128679

PARTIES

Complainant is USA Prescription, Inc., Davie, FL (“Complainant”) represented by Leonard K. Samuels and Jeffrey S. Wertman, of Berger Singerman.  Respondent is usa-prescription-drugs-online.com, Tyrone, GA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <usa-prescription-drugs-online.com>, registered with BulkRegister.com, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 22, 2002; the Forum received a hard copy of the Complaint on October 22, 2002.

On October 22, 2002, BulkRegister.com, Inc. confirmed by e-mail to the Forum that the domain name <usa-prescription-drugs-online.com> is registered with BulkRegister.com, Inc. and that Respondent is the current registrant of the name.  BulkRegister.com, Inc. has verified that Respondent is bound by the BulkRegister.com, 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 October 29, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 18, 2002 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@usa-prescription-drugs-online.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 December 9, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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

The  <usa-prescription-drugs-online.com> domain name is confusingly similar to Complainant's USAPRESCRIPTION.COM mark.

Respondent has no rights or legitimate interests in the disputed domain name.

Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent did not submit a Response.

FINDINGS

Complainant applied for a service mark registration for USAPRESCRIPTION.COM with the United States Patent and Trademark Office (Ser. No. 78,154,296) on August 14, 2002.   Complainant’s service mark application states that its first use of the USAPRESCRIPTION.COM mark was in April of 1999.  Complainant uses the USAPRESCRIPTION.COM mark in relation to its service facilitating online patient-to-physician evaluations and physician-to-pharmacy transactions on the Internet.  Complainant does its business through a website located at <usaprescription.com>.  Complainant asserts that it has hundreds of thousands of patients nationwide and has conducted millions of dollars in sales in the year 2001, however, the only evidence it has submitted is a print-out of its current website.

Respondent registered the disputed domain name <usa-prescription-drugs-online.com> on March 4, 2002.  Complainant and Respondent are in the same business of selling prescription drugs online.  Respondent’s website does not mimic Complainant’s website. Complainant asserts that Respondent’s website incorporates a metatag incorporating the terms “USA Prescription” which give Respondent’s domain name and website priority on search engine results over Complainant’s domain name and website.

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 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.

Identical and/or Confusingly Similar

Policy ¶ 4(a)(i) requires a two-part analysis.  First, the Panel must decide whether or not Complainant has established that it has rights in a mark.  After a Complainant has established rights in a mark, the Panel then compares this mark to the disputed domain name to ascertain if the domain name is identical or confusingly similar. 

In this case, Complainant asserts in its Complaint that it holds a registered service mark for USAPRESCRIPTION.COM with the United States Patent and Trademark Office.  Complainant’s evidence however, shows that Complainant applied for a service mark registration for USAPRESCRIPTION.COM on August 14, 2002.  A service mark or trademark application is different from a service mark or trademark registration because an application does not in itself establish rights in a mark.  See Amsec Ent. v. McCall, D2001-0083 (WIPO Apr. 3, 2001) (finding that Complainant’s pending trademark applications do not establish any enforceable rights to the mark until a trademark registration is issued). 

The UDRP does not require that Complainant have a registered mark in order to establish rights under the Policy.  The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy.  See McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000).  Establishing common law rights in a mark requires a showing by complainant that its mark has acquired secondary meaning.  In other words, complainant must establish that the public associates the asserted mark with the complainant’s goods or services.  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that Complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify Complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services).  If a complainant fails to provide evidence that the public associates the asserted mark with its goods and services, complainant has failed to establish common law rights. 

Complainant has submitted no evidence that the consuming public associates USAPRESCRIPTION.COM with Complainant’s online prescription services. Complainant has merely submitted proof of a service mark application, and a printout of its current website.  These two items, in and of themselves, do not establish that the public associates USAPRESCRIPTION.COM  with Complainant.  Complainant has provided no examples of its advertising, proof of its sales, or any market research that would suggest that USAPRESCRIPTION.COM signifies Complainant as the source of patient-to-physician facilitation and physician-to-pharmacy services on the Internet.  As a result, Complainant has not established that it has common law rights in the USAPRESCRIPTION.COM mark.  See Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that Complainant failed to prove trademark rights at common law because it did not prove the CYBERIMPRINTS.COM mark was used to identify the source or sponsorship of goods or services or that there was strong customer identification of the mark as indicating the source of such goods or services); see also Interactive Television Corp. v. Noname.com, D2000-0358 (WIPO June 26, 2000) (finding that “[S]erious questions as to whether Complainant has any proprietary rights require us to reject Complainant’s claim. The ultimate decision as to whether Complainant does or does not have proprietary rights is better left to a court or trademark office tribunal”).

Furthermore, even if Complainant could demonstrate that it had established rights in the USAPRESCRIPTION.COM mark, it has not established that Internet users are likely to be confused as to the source, sponsorship and affiliation of the <usa-prescription-drugs-online.com> domain name because of its similarity to Complainant’s mark.  Descriptive trademarks, when incorporated into a domain name, are not automatically found to create Internet user confusion.  See e.g. Trump v. olegevtushenko a/k/a Oleg Evtushenko, FA 101509 (Nat. Arb. Forum Dec. 11, 2001) (finding that <porntrumps.com> does not infringe on Complainant’s famous mark TRUMP, since Complainant does not have the exclusive right to use every form of the word “trump”); see also Bank of Am. Corp. v. Fluxxx, Inc., FA 103809 (Nat. Arb. Forum Feb. 18, 2002) (finding that Complainant failed to prove “confusing similarity” under Policy ¶ 4(a)(i) because it did not demonstrate that the public would be confused between its NATIONSBANK mark and the disputed domain name <nationsbanking.com>); see also Capt’n Snooze Mgmt. v. Domains 4 Sale, D2000-0488 (WIPO July 10, 2000) (stating that while “Snooze is an integral part of Complainant’s trademark registrations…this does not entitle the Complainant to protection for that word alone”).  Therefore, because Complainant’s mark is descriptive, it must provide some evidence that a likelihood of confusion would result from Respondent’s use of <usa-prescription-drugs-online.com> to show that the disputed domain name is confusingly similar to its asserted USAPRESCRIPTION.COM mark.  See SOCCERPLEX, INC. v. NBA Inc., FA 94361 (Nat. Arb. Forum May 25, 2000) (finding that Complainant failed to show that it should be granted exclusive use of the domain name <soccerzone.com>, as it contains two generic terms and is not exclusively associated with its business).

The Panel finds that Complainant has failed to establish Policy ¶ 4(a)(i) because it has not provided evidence that it has rights in USAPRESCRIPTIONS.COM.  As a result, it is unnecessary for the Panel to conduct an analysis under ¶ 4(a)(ii) and (iii) concerning the disputed domain name.  See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).

DECISION

Having failed to establish all three required elements of the ICANN Policy the Panel finds that the requested relief shall be hereby DENIED.

Sandra Franklin, Panelist

Dated: December 23, 2002

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