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Generic Top Level Domain Name (gTLD) Decisions |
GlobalRx, Inc. v. GlobalRxService.com
Claim Number: FA0410000338426
PARTIES
Complainant
is GlobalRx, Inc. (“Complainant”),
represented by Daniel T. Tower, 4700 Six Forks Rd., Suite 150,
Raleigh, NC 27609. Respondent is GlobalRxService.com (“Respondent”),
represented by Stephen L. Anderson, of Anderson & Associates,
27349 Jefferson Avenue, Suite 211, Temecula, CA 92590.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <globalrxservice.com>,
registered with Tucows Inc.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his knowledge has no known conflict
in serving as Panelist
in this proceeding.
Jacques A. Léger, Q.C. as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on October
1, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on October 11, 2004.
On
October 4, 2004, Tucows Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <globalrxservice.com>
is registered with Tucows Inc. and that Respondent is the current registrant of
the name. Tucows Inc. has verified that
Respondent is bound by the Tucows 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 12, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”),
setting a deadline of November 1,
2004 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@globalrxservice.com by e-mail.
A
timely Response (“Response”) was received and determined to be complete on November
1, 2004.
An
Additional Submission from Complainant was received and determined to be
complete on November 9th, 2004.
On November 10th, 2004, pursuant to
Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jacques A. Léger Q.C.
as Panelist. The Panelist finds that the
Panel has been properly constituted. On November 10th, 2004, the
Panelist received notice from the NAF Case Coordinator that the Decision would
be due on November 24, 2004, following which the Forum staff would serve
the Parties in accordance with the ICANN Uniform Domain Name Dispute Resolution
Policy.
An
Objection to the Additional Submission was received from Respondent and
determined to be complete on November 11th, , 2004. The NAF Case
Coordinator sent the Panelist e-mail notice to this effect on November 15th,
2004. The Panel’s views on the objections included in this submission are
expressed at the beginning of the “Discussion” section
of the decision, under
the heading “Preliminary Matters”.
Together
with the Objection to the Additional Submission, a Reply to the Additional
Submission was also received from Respondent and
determined to be complete on
November 11th, 2004.
RELIEF SOUGHT
Complainant
requests that the disputed Domain Name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant alleges (and the Panelist has
verified, on a proprio motu basis) that it is the owner of the GLOBALRX
marks, registered on March 31st, 1998 in association with mail order
and Internet services featuring prescription and over the counter
pharmaceuticals in international
class 35 (Reg. No. 2,147,528), and
GLOBALRX.COM, registered on June 18th, 2002 in association with
identical wares (Reg. No. 2,582,089). Both registrations are on the Principal
Register of the United States
Patent and Trademark Office (“USPTO”)
They
add that these registrations establish Complainant’s rights in the marks, as
well as a prima facie evidence of validity and a rebuttable presumption
that the marks are inherently distinctive.
Confusingly
Similar
Complainant
alleges that Respondent’s registration of the disputed <globalrxservice.com>
domain name and the use of this domain name is a clear attempt to confuse
Complainant’s customers, Internet users and the general
public as to the source
of origin of the products which Respondent is selling through the website
located at the web address <globalrxservice.com>.
Complainant
also contends that the registration of the disputed domain name in conjunction
with the sale of pharmaceutical goods and
services is in blatant violation of
the United States of America’s federal laws and directly infringes Global Rx’s
federally protected
intellectual property rights in the GLOBALRX and
GLOBALRX.COM marks.
In
addition, Complainant alleges that the disputed domain name is
confusingly similar to Complainant’s GLOBALRX and GLOBALRX.COM marks because
Respondent is using the mark to sell
the same pharmaceutical products and
services offered by Complainant, and thus, to compete directly with GlobalRx.
They add that
the only difference between the disputed domain name and
Complainant’s protected marks is the addition of the word “service”, and
argue
that adding generic terms that describe Complainant’s products or services has
consistently been found to be inconsequential
in determining the similarity
between the mark and a domain name See G.D. Searle & Co. v.
Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002).
Legitimate
Use
Complainant
alleges that Respondent globalrxservice.com has no rights or legitimate
interests in the domain names which is the subject
of the proceeding.
Complainant
claims that since Respondent has violated Federal trademark law by registering
the disputed domain name, and that the
website located at <globalrxservice.com>
is a portal by which Respondent sells the very same pharmaceutical products and
services offered by Global Rx, they do not make a
bona fide offering of goods
or services pursuant to Policy ¶ 4(a)(ii). According to Complainant, the fact
that Respondent registered the disputed
domain name seven years after Complainant began using the GLOBALRX mark, and
five years after the
USPTO issued registration of said mark, is prima facie
evidence that Respondent has no rights or legitimate interests in the mark.
Complainant
also claims that Respondent is not making a bona fide offering of goods or
services pursuant to Policy 4(c)(i) or a legitimate
noncommercial or fair use
pursuant to Policy 4(c)(iii) since it is using the website located at <globalrxservice.com>
to sell the very same pharmaceutical products and services offered by
Complainant.
Bad
Faith
Complainant
alleges that the evidence in this proceeding shows that by its registration and
use of the <globalrxservice.com> domain name, Respondent has acted
in bad faith.
Complainant
contends that Respondent has intentionally attempted to attract Global Rx’s
customers for commercial gain by creating
confusion with Complainant’s
registered trademarks, and that it has used these marks to confuse Internet
users as to the source,
sponsorship, and affiliation of Respondent’s web sites
and the pharmaceutical products and services which are offered in those sites.
Complainant
adds that by creating confusion around Complainant’s GLOBALRX and GLOBALRX.COM
marks, Respondent is attempting to disrupt
the business of a competitor.
Complainant also adds that Respondent’s use of Complainant’s marks within its
domain name in order
to sell goods and services similar to Complainant’s is
evidence of bad faith registration and use pursuant to Policy 4(b)(iii).
B.
Respondent
Exclusive
Rights
Respondent
contends that Complainant lacks exclusive rights to the component terms GLOBAL
RX and/or GLOBAL RX.COM, and that this term
is nothing more than a simple
compound of GLOBAL and RX, “common words” according to Respondent, thus making
it a weak mark that
should not be entitled to a broad scope of protection.
Respondent cites decisions to the effect the term “RX” is a common
representation
of the words “pharmacy” or “prescription”, and that as such it
is a descriptive and generic term used to describe the type of business
Complainant is engaged in. According to Respondent, the term GLOBALRX is
therefore an extremely weak mark that should not be entitled
to a broad scope
of protection.
In
Exhibits 5, 6, 7, and 8, Respondent makes reference to numerous records of
marks that contain the terms “GLOBAL” and “RX” separately.
Respondent also
demonstrates that there are numerous instances where the terms “GLOBAL” and
“RX” have been, individually, disclaimed
in trademark registrations at the
USPTO. They also make a list of other registered domain names that include the
term “globalrx”
which are not owned by Complainant. They argue that such
widespread third party use demonstrates that they have a right to use the
term
GLOBAL RX, which they consider descriptive and generic, to describe its
legitimate business offerings.
Legitimate
Interest
Respondent
contends that it has a legitimate interest in using the name GLOBALRXSERVICE
because:
Complainant
allegedly has not proved Respondent did not register the name in connection
with a bona fide offering of goods and services,
pursuant to policy 4(c)(1). It
adds the domain name is used to sell prescription medicine worldwide, and that
Respondent registered
both its domain name and its corporate name at a time
when Respondent had no knowledge of Complainant. Respondent adds that it
registered
the disputed domain name with the intent of expanding its business
to online customers and that it never intended to use the domain
name for any
improper use.
Respondent
allegedly has a right to use generic and descriptive terms to describe its web
sites. Here Respondent alleges the term
GLOBAL RX is both generic and
descriptive, and that no one has the right to appropriate such language. They
cite numerous cases where
decisions have said that the first to register a
generic and descriptive domain name should prevail absent lack of legitimate
interest
and bad faith in the registration. Respondent adds that since they are
doing nothing more than providing prescription drugs to patients
around the
world, it has a legitimate right to use GLOBAL, RX and SERVICE in their generic
and descriptive sense.
Bad
Faith
Respondent
claims that Complainant has provided no evidence that the disputed domain name
was registered in bad faith, or with the
intent of selling it to Complainant,
to disrupt its business to prevent it from registering its name or to confuse
customers. It
adds that it merely chose an apt generic and descriptive name,
for the sole purpose of describing its intended online prescription
drug
business reaching out to global consumers.
Respondent
also claims that Complainant has not provided evidence on how Respondent would
have been aware of its name, especially
since numerous third parties use
similar domain names to promote their own business.
Respondent
submits that since Complainant has allegedly made an “obvious mistake” and
“willfully failed to set forth any specific
evidence to support its complaint”,
a finding of abuse of Administrative Procedure should be made by the Panel.
(This request will
be addressed at the beginning of the “Discussion” section of
this decision, under the heading “preliminary matters”.)
C.
Additional Submissions
Complainant’s Additional Submission
Complainant
alleges that since Respondent is operating in the State of California, it is
charged with knowledge of the state and federal
laws applicable in that
jurisdiction, including the contents of the United States Trademark registry.
Complainant
also alleges that merely adding the suffix “service” to its trademark cannot
avoid a finding of similarity between it
and the disputed domain name. It
argues that its registrations with the USPTO establish its exclusive rights in
the marks, and establish
a prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. As
for the widespread third
party use Respondent makes reference to in its
Response, Complainant claims that only ten of the websites named are operating
commercially
while the others are merely registered, and that several of the
third-party domain names had been operating websites, but have ceased
in
response to legal action or threat thereof by Complainant.
Moreover,
Complainant contends that Respondent’s use of the website located at <globalrxservice.com>
is not being used in connection with a bona fide offering of goods and
services since there are questions regarding the legality of importing
prescription drugs into the United States.
It adds that Respondent was on
constructive notice of Complainant’s marks and cannot use the fact that it did
not conduct a reasonable
trademark or internet search as a basis for claiming
that it has a legitimate interest in the disputed domain name.
In
addition, Complainant argues that the assertion that Respondent could have been
aware of all the domain names cited in its Response
as evidence of widespread
third party use, but not of Complainant’s domain name is spurious on its face.
Further, they add that Respondent
cannot rely on its failure to conduct a
proper internet search to avoid a finding of bad faith. They also claim that
the illustrations
of bad faith registration under 4(b) of the UDRP are not
exhaustive, and that the fact that Respondent has provided a false address
in
its registration of the disputed Domain Name, and that it provided no contact
information other than toll free numbers and an
e-mail address, is an
indication of bad faith.
Respondent’s Reply to Complainant’s Additional Submission
Respondent
alleges that due to various violations of the ICANN rules and the NAF Supplemental
Rules, as well as Complainant’s alleged
attempts to mislead the panel by making
false factual statements, Complainant’s Additional Submission should not be
considered substantively
by the panel, and asks for a finding that Complainant
has abused the administrative procedure herein.
Respondent
contends that Complainant’s Additional Submission fails to establish any
exclusive rights to the domain name in dispute.
It argues that this is so
particularly because the terms GLOBAL and RX, which are disclaimed within the
United States Trademark Registrations,
are merely descriptive as applied to the
worldwide sale of prescription medicines. It adds that there remain at present
numerous
domain registrations which contain or consist of the terms GLOBAL and
RX together in some form or fashion, without any reference
to Complainant
herein.
Respondent
also disputes Complainant’s contention that Respondent did not provide correct
or complete contact information and has
produced Exhibit R-6 which includes a
single piece of mail Respondent has received on November 10th, 2004.
It adds that the contact information for Respondent as listed in the WHOIS
records is complete and correct, and includes its
e-mail address, its postal
mail address and its telephone number.
Respondent
further argues that Complainant’s contentions with respect to the alleged
violations of U.S. FDA Regulations and/or State
of California licensing issues
are based strictly on inadmissible hearsay and that such matters are beyond the
scope of this proceeding.
Respondent also alleges that Complainant has failed
to show any admissible evidence or arguments that would demonstrate any factors
supporting a finding of bad faith on the part of Respondent herein.
FINDINGS
Complainant has prima facie, albeit
rebuttable, rights derived from the registered trademarks GLOBALRX and
GLOBALRX.COM in association with mail order and internet
services featuring
prescription and over the counter pharmaceuticals in international class 35.
Disputed
domain name is confusingly similar to Complainant’s registered GLOBAL RX and
GLOBALRX.COM marks.
Respondent
has no rights or legitimate interests in using the disputed domain name.
Respondent
has registered and used the disputed domain name in bad faith.
DISCUSSION
Preliminary Matters
In
its Response, Respondent submits that since Complainant has allegedly made an
“obvious mistake” and “willfully failed to set forth
any specific evidence to
support its complaint”, a finding of abuse of Administrative Procedure should
be made by the Panel. Paragraph
15(e) of the UDRP Rules provides that:
“(…)
if after considering the submissions the
Panel finds that the complaint was brought in bad faith, for example in an
attempt at Reverse
Domain Name Hijacking or was brought primarily to harass the
domain name holder, the Panel shall declare in its decision that the
complaint
was brought in bad faith and constitutes an abuse of the administrative
proceeding.”
Respondent
claims that the Complaint was brought in bad faith by Complainant. The Panel
cannot agree. Nothing in the Complaint, including
in the allegations of bad
faith, can warrant a finding based on Paragraph 15(e) of the UDRP. Therefore,
the Panel has proceeded to
review the Complaint and the Response, based on
their merits.
In
addition, the Panel does not agree with Respondent’s objection to Complainant’s
Additional Submission to the effect that this submission
improperly seeks to
amend the Complaint.
Nor
does the Panel agree with Respondent’s objection to the effect that
Complainant’s statements warrant a finding of abuse of the
administrative
procedure. It is the Panel’s view that the concerns raised in the objections
can be best reviewed in light of all
other materials received in the
substantive discussion of findings included below.
On
the other hand, the Additional Submission of Complainant was indeed received by
the Panel after the deadline for submission and
without being properly served
on the other party. Hence, said submission does not comply with Supplemental
Rule7. However, to ensure
procedural equity and due process of law for both
Parties, and by virtue of its discretion as directed by the General Powers of
the
Panel under the paragraph 10 of the Rules for Uniform Domain Name Dispute Resolution Policy the Panel has
decided to accept this submission and considered it along with the other
materials received – including Respondent’s
Reply to Complainant’s Additional
Submission.
Discussion
of the Panel’s Substantive Findings
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 Complainant must prove each of the following
three elements to obtain an order that a domain
name should be cancelled or
transferred:
(i) the domain name registered by Respondent is
identical or confusingly similar to a trademark or service mark in which
Complainant has
rights;
(ii) Respondent has no rights or legitimate
interests in respect of the domain name; and
(iii) the domain name has been registered
and is being used in bad faith.
Complainant’s Rights in the Trademarks
Complainant
claims, and the Panel agrees, that it has established rights in the GLOBALRX
and GLOBALRX.COM marks in association with
mail order and internet services
featuring prescription and over the counter pharmaceuticals in international
class 35, through registration
of the marks with the USPTO on March 31, 1998
(Reg. No. 2,147,528) and June 18, 2002 (Reg. No. 2,582,089). See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently
distinctive and have acquired
secondary meaning.”); see also Wal-Mart
Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (was the Panel find
that Complainant has rights to the name when the mark is registered in a
country
even if Complainant has never traded in that country).
The Panel also
agrees with Complainant’s contention that it has established common law rights
in the marks through continuous use
in commerce since 1996. See Nat’l Ass’n of Prof’l Baseball
Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (where it was find
that Complainant had provided evidence that it had valuable goodwill in the
<minorleaguebaseball.com>
domain name, establishing common law rights in
the MINOR LEAGUE BASEBALL mark); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000)
(Panel agrees with the finding that common law rights in a mark where its use
was continuous
and ongoing, and secondary meaning was established).
On
this issue, the Panel is of the opinion that the disputed domain name is
confusingly similar to Complainant’s registered trademark
for the following
reasons.
Complainant
asserts that the <globalrxservice.com> domain name is confusingly
similar to Complainant’s marks because the domain name fully incorporates the
GLOBALRX mark with the mere
addition of the descriptive word “service”. The
Panel finds that the disputed domain name causes Internet user confusion as it
incorporates
the distinctive GLOBALRX mark and
simply adds a word that describe
Complainant’s business (i.e service
). See Am. Online, Inc. v. Anytime Online Traffic School, FA 146930
(Nat. Arb. Forum Apr. 11, 2003) (wherein
the Panel concluded accordingly to the finding that Respondent’s domain
names, which incorporated Complainant’s
entire mark and merely added the descriptive terms “traffic school,” “defensive
driving,” and “driver improvement”
did not add any distinctive features capable
of overcoming a claim of confusing similarity); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (where the Panel
found that confusing similarity where Respondent’s domain name combines
Complainant’s
mark with a generic term that has an obvious relationship to
Complainant’s business).
As
previously stated, Complainant has provided evidence to the effect that the
registrations in regards to the trademarks GLOBALRX
and GLOBALRX.COM have been
made with the USPTO. These registrations are sufficient to establish prima
facie the rights of Complainant over said trademarks. Respondent argues
that Complainant’s marks are generic and descriptive, and as such,
should not
be granted a wide scope of protection. The Panel’s view is that Respondent has
not discharged its burden to rebut the
presumption – accruing to Complainant
from its registrations of the marks – that the mark is not inherently
distinctive. See Janus Int’l Holding Co. v. Rademacher, D2002-0201
(WIPO Mar.5, 2002)(citing Panel decisions which have held that registration of
a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive).
Respondent
also argues that the term GLOBAL RX is the object of widespread third party
use, but the Panel does not find this argument
convincing. In its Additional
Submission, Complainant notes that several of the domain names named by
Respondent were either not
commercially active, or the object of legal action
by Complainant, thus avoiding the acquiescence or lack of distinctiveness issues. In any case, it may well be that those
domain names themselves infringe on Complainant’s rights to its registered
marks, but it is
not for this Panel to
so find. The potential incompatibility
of other similar domain names with ICANN standards should not constitute a justification for a domain that
is itself the object of a dispute based on these standards, unless Respondent
has discharged
its burden, which it failed to do, that such third parties use
results in either acquiescence or
invalidity, which, in the case of a registered
TM , would fall outside the scope of the ICANN proceeding
Moreover,
it has been recognized in previous UDRP decisions that “the addition of a word
or an acronym to a mark in constructing the
SLD does not alter the fact that
the domain name is confusingly similar to the mark to which the word or acronym
has been appended”.
See SGS Societe Generale de Surveillance S.A. v.
Inspectorate, D2000-0025 (WIPO Mar. 20, 2000) (<sgsgroup.net>); see
also America Online, Inc. v. Pedro Alex Jimenez, D2000-0991 (WIPO Oct. 31,
2000) (<aolmex.com>); see also America Online, Inc. v. Pablo Barrutia,
FA 94265 (Nat. Arb. Forum Apr. 17, 2000) (<aolmovie.com>)”[1].
In the present case, the suffix “service” merely tells the Internet user that
the owner of the disputed domain name provides certain
services to the general
public, such as delivering prescription drugs. This makes the association with
GlobalRx, Inc., who also provides
for similar services through the web sites it
operates from its own registered domain name, almost natural.
In
its Response, Respondent argues that Complainant does not have exclusive rights
in the “component terms “Global RX and GLOBAL RX.COM”,
but such is not the
nature of the exclusive rights claimed by Complainant. In fact, the terms
“GLOBAL” and “RX” have been disclaimed
from Complainant’s trademark
registration. However, this does not preclude that together (in conjunction)
they constitute proper
trademark use . To the contrary, the Panel finds that
when they are used together by Respondent in the disputed domain name,
they create a strong similarity with Complainant’s registered trademarks. As
such, they
are likely to induce the general public into believing that the
disputed domain name and the web site operated form the domain name
are
associated with Complainant. See Société des Bains de Mer Et Du Cercle Des Étrangers Ŕ
Monaco v. Global Productions-Domain For Sale, D2000-1332 (Dec.
15, 2000), wherein the words (in that case, “monaco” and “gambling”) used
together create a strong similarity and
impression that could easily induce the
general public into believing that the domain name, the domain name proprietor
and any web
site operated from the domain name are associated with Complainant
(owner of the trademark “Casino de Monte-Carlo”).
Therefore, it is the Panel’s view
that it would be perfectly plausible for a consumer to be confused by the
terminology used in Respondent’s
domain name. Any Internet user may be led into
thinking that the <globalrxservice.com> domain name is
provided by, endorsed by, or otherwise associated with Complainant, GlobalRx,
Inc. As such, the Panel finds that the
disputed domain name is confusingly
similar to Complainant’s registered marks.
Complainant contends Respondent does not have rights or legitimate
interests in the <globalrxservice.com> domain name
because Respondent is using the domain name to offer goods similar to those
offered by Complainant. Complainant argues
that Respondent’s commercially
competitive use of a domain name that is confusingly similar to the GLOBALRX
mark is not a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use pursuant to Policy ¶ 4(c)(iii).
See G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19,
2002) (where the Panel found that because Respondent is using the infringing
domain name to
sell prescription drugs it can be inferred that Respondent is
opportunistically using Complainant’s mark in order to attract Internet
users
to its website); see also MSNBC
Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) wherein no rights
or legitimate interests in the famous MSNBC mark where Respondent attempted to
profit using Complainant’s mark by redirecting Internet traffic to its own
website.
The
Panel also finds that Respondent lacks rights and legitimate interests in the
disputed domain name because Respondent has registered
a domain name that
incorporates Complainant’s registered
trademark without the requisite legal authorization to do so. See State
Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27,
2000), wherein it was held that “unauthorized providing of information and
services under a mark
owned by a third party cannot be said to be the bona fide
offering of goods or services”).
On the other
hand, the Panel agrees with Respondent to the effect that Complainant’s
contentions with respect to the alleged violations
of U.S. FDA Regulations
and/or State of California licensing issues are beyond the scope of this
proceeding. The Panel has no jurisdiction
over such matters, and Complainant’s
contentions to this effect have not in any way influence the Panel’s findings
herein.
The Panel also
rejects Complainant’s contention that Respondent did not provide correct or
complete contact information. Indeed, Respondent
has produced as Exhibit R-6 a
single piece of mail Respondent has received on November 10th, 2004.
Moreover, the contact information for Respondent as listed in the WHOIS records
is complete and correct, and includes its
e-mail address, its postal mail
address and its telephone number. The allegations made to this effect by
Complainant in its Additional
Submission were rejected and did not in any way
influenced the Panel’s findings herein.
Most
of the time, it is quite difficult, if not impossible, to actually show bad
faith with concrete evidence,
particularly given the limited scope of the inquiry in these proceedings; as
rule, one should not expect to find the “smoking
gun.” At the same time, good
faith is to be presumed. However, it is the Panel’s view that once Complainant
has made a prima facie case in that direction, it is then incumbent upon
Respondent to either respond or explain why its conduct should not be ascribed
to bad faith. The Panel’s understanding of the Policy is that although the
initial burden to prove Respondent’s bad faith in the
registration or the use
of the disputed domain name lies squarely on the shoulders of Complainant, once
a prima facie case of bad faith has been made by Complainant, as the
Panel finds in the present case, it is up to Respondent to either justify its
business conduct, explain it, or demonstrate the contrary. However, the Panel
believes Respondent has not met its burden for the
following reason.
Complainant
asserts that Respondent’s commercial use of a misleading domain name that is
confusingly similar to Complainant’s GLOBALRX
and GLOBALRX.COM marks constitutes
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (where it was stated
that since the disputed domain names contain entire versions of Complainant’s
marks and are used for something completely unrelated to their descriptive
quality, a consumer searching for Complainant would become
confused as to
Complainant’s affiliation with the resulting search engine website in holding
that the domain names were registered
and used in bad faith pursuant to Policy
¶ 4(b)(iv)); see also G.D. Searle
& Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
where the Panel find that Respondent registered and used the domain name in bad
faith
pursuant to Policy ¶ 4(b)(iv) because Respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website).
Furthermore, Complainant asserts that Respondent’s use of the disputed
domain name to advertise and sell various pharmaceutical products
and services
similar to those offered by Complainant creates confusion around Complainant’s
GLOBALRX and GLOBALRX.COM marks.
Respondent’s creation of confusion around Complainant’s marks evidences
Respondent’s attempt to disrupt the business of a competitor. Thus, Respondent’s use of Complainant’s
marks within its domain name to sell goods and services similar to
Complainant’s goods and
services further demonstrates Respondent’s bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (where
it was find 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); see
also S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000)(wherein Respondent acted in bad faith by
attracting Internet users to a website that competes
with Complainant’s business);
see also EthnicGrocer.com, Inc. v.
Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) where it was held that the minor degree of
variation from Complainant's marks suggests that Respondent, Complainant’s
competitor,
registered the names primarily for the purpose of disrupting
Complainant's business.
Pursuant to the
above, the Panel finds in favor of Complainant as Respondent did not
satisfactorily discharge its burden to show that
its conduct did not amount to
bad faith.
Complainant
further contends that Respondent cannot rely on its failure to conduct a
trademark search to avoid a finding of bad faith,
and as such had constructive
knowledge of Complainant’s trademark rights, and so the Panel finds in the case
at hand. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum
Oct. 24, 2002)(where the Panel found that there is a legal presumption of bad
faith, when Respondent
reasonably should have been aware of Complainant’s
trademarks, actually or constructively); see also Aventis Pharma,
Inc., Merrell Pharmaceuticals, Inc. v. Connor Trip, D2003-0956 (Feb. 13.
2004)(wherein the Panel noted that any trademark check of the records of the
patent and trademark offices of
the United States or Canada would have made
Complainant’s registrations known to Respondent). After all, is not one the
main purposes
of the trademark of most countries to give third parties notice?
For these reasons, the Panel finds that Complainant has satisfactorily
established the bad faith element in the case at hand.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is ordered that the <globalrxservice.com>
domain name be TRANSFERRED from Respondent to Complainant by Tucows Inc.
Jacques A. Léger
Q.C., Panelist
Dated: November 24th, 2004
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