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Generic Top Level Domain Name (gTLD) Decisions |
Taga Holdings Inc. d/b/a Canadian Med
Service v. Canadian Med Services
Claim Number: FA0401000231720
Complainant
is Taga Holdings Inc. d/b/a Canadian Med Service, Winnipeg, MB
Canada (“Complainant”) represented by Jody
S. Langhan, of Fillmore Riley LLP,
1700 – 360 Main Street, Winnipeg, MB Canada R3C 3Z3. Respondent is Canadian Med
Services, Columbus, GA (“Respondent”) represented by Ira Meyers, 2534 Wynnton Rd., Columbus, GA 31906.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <canadianmedservices.com>,
registered with Namescout.com.
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.
Fernando Triana, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on January 27, 2004; the Forum received
a hard copy of the
Complaint on January 28, 2004.
On
February 2, 2004, Namescout.com confirmed by e-mail to the Forum that the
domain name <canadianmedservices.com>
is registered with Namescout.com and that the Respondent is the current
registrant of the name. Namescout.com has
verified that Respondent is bound by the Namescout.com 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
February 3, 2004, the Forum requested the Complainant to amend the Complaint
within 5 calendar days from the date of notification.
The Complainant amended
the Complaint on time.
On
February 5, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of February 25, 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@canadianmedservices.com
by e-mail.
A
timely Response was received and determined to be complete on February 24, 2004.
Complainant
filed a timely Additional Submission, dated February 27, 2004, that was
received by the Forum in hard copy on March 1,
2004.
Likewise,
the Respondent filed electronically a timely Additional Submission, which was
determined to be in compliance with the Rules
on February 29, 2004.
On March 5, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Fernando Triana,
Esq. as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
According
to the Complaint, Complainant is a pharmacy licensed by the Manitoba
Pharmaceutical Association. Complainant asserts that
it conducts business under
the mark CANADIAN MED SERVICE, which Complainant filed for registration with
the United States Patent
and Trademark Office on July 24, 2003. The mark was
also applied for registration before the Canadian Intellectual Property Office
on January 24, 2003. All applications are pending.
Complainant
declares that on November 28, 2002, it registered the domain name <canadianmedservice.com>. Since December 30, 2002,
Complainant has used its mark in its business of marketing, via the
Internet, prescription medications to customers primarily in the
United States
of America. The Complainant states that from that date on, it has used
its mark uniformly and consistently in association with its marketing and
advertising of online pharmacy services.
Complainant
asserts that through the expenditure of significant time, resources and effort
it has established its mark to distinguish
its services from those of other
providers in the same marketplace. According to the Complainant, it has built
up a database of in
excess of 8,000 patients, who have ordered prescription
medications from the Complainant in association with the Complainant’s mark.
Consequently, the Complainant believes that its mark is valuable intellectual
property.
Complainant states some of the efforts it has gone through in
establishing its mark as its unique identifier in the marketplace for
on-line
pharmacy services are: (i) Developing and maintaining the web-site at
<canadianmedservice.com>; (ii) expending considerable
resources in
marketing and advertising Complainant’s mark in the United States, through
billboard advertising, print media and pamphlets;
(iii) contracting with
affiliates and organizations in the United States; (iv) developing and fostering 422 separate
links to the Complainant’s web-site under the domain name <canadianmedservice.com>;
(v) registering and maintaining in good standing with the Manitoba
Pharmaceutical Association and with the Manitoba International
Pharmacists
Association under the Complainant’s mark since January 1, 2003; and, (vi)
registering and maintaining in good standing
with PharmacyChecker.com under the
Complainant’s mark since April 14, 2003.
Complainant asserts that the disputed domain name <canadianmedservices.com>,
is confusingly similar to the Complainant’s mark, as the Respondent has merely
added an “s” to the end of the Complainant’s mark.
The disputed domain name is
similar in sound, appearance and connotation to the Complainant’s mark.
Additionally, both parties are
involved in identical and competing businesses.
Both the Complainant and the Respondent market via the Internet, prescription
medications
to customers in the United States with valid prescriptions through
pharmacies located in Canada. Complainant presents evidence of
the confusion
that is being caused among consumers.
Complainant further states that the Respondent has no rights
or legitimate interests in respect to the domain name <canadianmedservices.com>,
which was registered on February 25, 2003. It is stated in the Complaint that
the disputed domain name had been registered by CanAmerica
Drugs Inc., a
competitor of the Complainant which also provides online pharmacy services via
the Internet, who was aware of the existence
of Complainant’s business and the
use of Complainant’s mark in connection with its business. Complainant asserts
that after initially
approaching CanAmerica Drugs Inc. for the possible transfer
of the domain name to the Complainant, the domain was transferred to
the
Respondent without notice to the Complainant in July of 2003.
In September of 2003, a principal of the Respondent named
Ira Meyers, visited Complainant’s premises with the purpose of studying
the
possibilities of establishing direct commercial relationships between the
parties. At the end of the meeting, Mr. Meyers provided
Complainant with a
business card bearing the name “Canadian Med Services” and featuring the
disputed domain name. Complainant asserts
that it did not authorize either
CanAmerica Drugs Inc. nor the Respondent, to use Complainant’s mark.
Complainant states that the
Respondent had actual notice and knowledge of
Complainant’s use of and rights in the Complainant’s mark prior to the date
that CanAmerica
Drugs Inc. transferred the disputed domain name to Respondent,
and that the Respondent has not used the Complainant’s mark in connection
with
a bona fide offering of goods and services before notice to it of this
dispute.
Complainant believes that Respondent can not demonstrate
that it has been commonly known by the disputed domain name. Likewise,
Respondent
is not carrying out a legitimate noncommercial or fair use of the
domain name. To the contrary, it is asserted in the Complaint that
the
Respondent is using Complainant’s mark for commercial gain, and it is doing so
to the detriment of Complainant, as customers
are misdirected to the
Respondent’s website by using the disputed domain name.
Finally,
Complainant contends that Respondent has acted in bad faith, by intentionally
attempting to attract, for commercial gain,
Internet users seeking to purchase
prescription medications from an on-line pharmacy to the Respondent’s website
by creating a likelihood
of confusion with Complainant’s mark as to the source,
sponsorship, affiliation or endorsement of the Respondent’s services on the
Respondent’s web site. Complainant states that Respondent’s intention for
acquiring the domain name and operating its competing business
was to attract
Complainant’s customers to the Respondent’s website for commercial gain.
Based
on the above, Complainant requests the Panel to order the transfer of the
disputed domain name from Respondent to Complainant.
B. Respondent
According
to Respondent, it first became aware of Complainant’s concerns in or around
September of 2003, after being informed by the
original owner of the domain
name. Respondent entered the Canadian Internet pharmaceutical business in
December of 2002, under the
name of Discount Drugs of Canada @ Columbus,
assigned by its franchisor DDOFC. Respondent then decided to seek its own
domain name
and dispensed the pharmacy relationships, which culminated in the
adoption of the business name CANADIANMEDSERVICES.COM on July 1,
2003. Respondent
chose the disputed domain name from a list of registered domain names owned by
CanAmerica Drugs Inc., and it was
unknown to Respondent at this time that
Complainant had a similar name.
It
is asserted by Respondent that according to Georgia state law, the Georgia
Pharmacy Board suggested that the name should not suggest
that the
establishment was a pharmacy. For the aforementioned, Respondent chose <canadianmedservices.com>
to identify the nature of the business as an internet operation.
Respondent
states that the previous acknowledgment of Complainant was in the execution of
pharmacy business. Respondent orders merchandise
from different pharmacies in
Canada. One of them is Complainant, who as stated by Respondent was identified
by different names, that
is, Ft Garry Pharmacy and Alec Leflour. According to
Respondent, Respondent and Complainant met in September of 2003 at
Complainant’s
office, where Respondent did not see any evidence that identified
the Complainant as Canadian Med Service, but rather as Ft. Garry
Pharmacy. In
December of 2003, Respondent was contacted by Complainant’s attorney concerning
the disputed domain name. Respondent
stated that the change of its name and
advertisement would require about US$100,000 to US$125,000 to assure that a new
change of
name did not cause the public and clients to lose confidence in
Respondent’s operation. Complainant offered to pay for the out of
pocket costs
related to the domain name. The parties did not arrive at an agreement.
Respondent
asserts that the operation area of its business is limited because it does not
have a huge presence outside the local area
and that from experience, they have
only received a couple of web-surfers visiting the web page <canadianmedservices.com>
per week.
Respondent
further contends that it disagrees with the fact that Complainant has a
long-standing business and is a long-standing pillar
of the community.
Respondent believes that the term “long-standing” means more than 2 or 3 years.
It is stated in the Response that
Respondent’s intention is not to create
confusion in the market or divert customers from Complainant, and that
Complainant was not
able to prove such events in the evidence gathered in the
Complaint. Respondent was unaware of Complainant’s name when choosing the
disputed name. All misdirected customers were immediately redirected to
Complainant without coercion or request. Likewise, Respondent
contends that
there are many differences between the way in which each party uses their
names, and that such differences lead to
the conclusion that the names are not
necessarily similar or confusing.
Respondent
states that there is not sufficient proof that Complainant is either nationally
or internationally recognized by the disputed
domain name, and that Respondent
has all licensing requirements to operate in the State of Georgia.
In
the Response, Respondent asserts that it has not acted in bad faith and that it
is making a legitimate fair use of the domain name.
Respondent has not
registered or acquired the disputed domain name: 1) for the purpose of selling,
renting or otherwise transferring
the dispute domain name to the Complainant or
to a competitor 2) to prevent the Complainant from reflecting its mark in a
corresponding
domain name 3) or to disrupt the business of the Complainant,
attract for commercial gain or confuse the target public by the use
of the
dispute domain name.
Consequently,
Respondent requests that the remedy requested by Complainant be denied by the
Panel.
C.
Additional Submissions
·
Complainant
In
its additional submission, Complainant alleges that when Respondent acquired
the domain name <canadianmedservices.com> from CanAmerica
Drugs Inc., the latter was aware of Complainant’s rights in and to the service
mark CANADIAN MED SERVICE. Complainant asserts
that this transfer was made in
order to take advantage of the benefits of the Complainant’s mark.
Complainant submits that it is not true
that Respondent only knew of Complainant as Ft Garry Pharmacy or as Alec
Leflour. It states
this based on the electronic mail communications sent to
Respondent’s representative, Mr. Ira Meyers In August of 2003, which evidences
that Respondent had actual knowledge of Complainant’s mark before the period of
time indicated in its Response. Although Respondent
had actual knowledge of
Complainant’s mark, Respondent continued using Complainant’s mark for its own
economic advantage and gain.
According to
Complainant, Respondent’s statement regarding the settlement offer made to
Respondent by the Complainant is dramatically
oversimplified. The Complainant,
by letter dated October 28, 2003, notified Respondent of its infringement of
the Complainant’s mark.
Then, the Complainant proposed that Respondent license
the Complainant’s mark on a non-exclusive basis from Complainant. In the
alternative,
Complainant offered to pay the out-of-pocket expenses that would
be incurred in transferring the disputed domain name to Complainant.
Respondent
rejected the offer in a cavalier manner, preferring to continue its unauthorized
use of the disputed domain name.
Complainant considers that it is not true
that Respondent has done everything possible to avoid confusion in the
marketplace.
Further, with regard to the size of Respondent’s market,
Complainant states that the use of the disputed domain name by Respondent
gives
Respondent’s business worldwide publication and accessibility on the Internet,
to the detriment of Complainant. In addition,
Complainant conducts business
within the area in which Respondent is located. Therefore, whether or not
Respondent’s submission regarding
the geographic scope of its business is true,
Complainant continues to be harmed by Respondent’s unauthorized use of the
disputed
domain name.
Concerning its long-standing reputation
in the market, Complainant submits that Internet pharmacies are a relatively
recent development
in the pharmaceutical industry as a whole and, as such,
Complainant has been conducting business under Complainant’s mark for a
significant
period of time.
Complainant asserts that under Policy ¶
4(a)(i) the issue is not whether the disputed domain name has been found to be
confusing to
actual users of the internet, but whether the disputed domain name
is confusingly similar to Complainant’s mark. Complainant emphasizes
in its submission
that the disputed domain name only adds the letter “s” to the end of its mark
and, as such, is confusingly similar
to Complainant’s mark. It is not possible
to provide evidence of how many people have actually been confused in the
marketplace,
and this is not the test.
Complainant believes that Respondent
attempts to characterize the Complaint as one of “cybersquatting”. This is not
so. Complainant
submits that Respondent has intentionally attempted to attract,
for commercial gain, internet users to its Internet site by creating
a
likelihood of confusion with Complainant’s mark; in this regard, the
Complainant submits that Respondent has failed to deny this
allegation in its
submission.
Likewise, Complainant declares that it has patients in all
fifty states of the United States and, therefore, submits that Complainant’s
mark is well-known throughout the market in which Complainant and Respondent
conduct their respective and competing businesses.
Respondent provides evidence that there
are visual print differences between Complainant’s use of Complainant’s mark
and Respondent’s
use of Complainant’s mark. Complainant submits that, while
this may be true, it is entirely irrelevant in determining the issue of
the
disputed domain name that is before the Panel at this time. The issue before
the Forum relates to the confusion caused by the
disputed domain name, which on
the internet, is not distinguishable by visual print differences.
Complainant reaffirms all of its
submissions made in the Complaint and submits that Respondent has not refuted
any of the allegations
upon which the case is based. As such, Complainant
submits that the relief requested in the Complaint should be granted.
·
Respondent
In
its additional submission, Respondent replies to the assertions made by
Complainant in its additional submission. Respondent has
demonstrated that it
did not take advantage of the benefits of Complainant’s mark by CanAmerica
Drugs Inc. transferring the domain
name to Respondent. Respondent again states
that he had no knowledge at the time of choosing the domain name or of any
disputes or
dealings between the Complainant and CanAmerica Drugs Inc.
concerning the name.
Respondent
states that the e-mails mentioned by Complainant as evidence of prior
knowledge, are dated more than 30 days after Respondent
began to use the
disputed name. Such e-mails were not read by Respondent, since they came from
its former franchisor, whose messages
were discarded by the Respondent.
With
regard to the license offer made by Complainant, Respondent asserts that it was
not accepted due to the fact that, if the license
were granted, Respondent
would have to do business only with Complainant. Respondent refused the offer
since it considered that it
only benefited the Complainant.
According
to Respondent, Complainant tries to support its contentions in the addition of
a single letter to its mark. Respondent’s
understanding is that there is more
to the issue than such. Intent is a major element and Respondent has
continuously stressed that
it had no prior knowledge of Complainant’s name, and
no intent could have been formulated.
Respondent
insists in the fact that the visual differences between the parties’ use of
their names is relevant, as they allow consumers
to know that they are not
where they expected to be. Respondent has not copied the Complainant in any
form or fashion. The Respondent
asks a question: “Why if the case be true, I
choose to confuse the market by way of Complainant and not some other entity?”
Complainant is not a big operation that Respondent would derive huge windfall
from such acts.
As
stated by Respondent, it recently offered Complainant the opportunity to use
the disputed domain name to post both parties names
and links to the intended
sites. Respondent is awaiting a reply from the Complainant.
Finally,
Respondent reaffirms all of its submissions and contends that it has refuted
all of the allegations upon which the case is
based.
FINDINGS AND 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.”
Likewise,
paragraph 10(d) of the Rules for Uniform Domain Name Dispute Resolution Policy,
provides that: “[t]he Panel shall determine the admissibility, relevance,
materiality and weight of the evidence.”
In the
present case, the Panel places emphasis in the importance of the evidence filed
by the parties to prove their assertions, which
has been studied to determine
its relevance and weight in arriving at a decision. The Panel wishes to clarify
that the statements
that have been accompanied by evidence have been given more
importance than the mere statements made by the parties without accompanying
evidence.
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.
The
Complainant states that it has engaged in business under the service mark
CANADIAN MED SERVICE. Complainant filed the mark for
registration with the
United States Patent and Trademark Office (USPTO) and the Canadian Intellectual
Property Office (CIPO).
The
Panel searched the public databases of the USPTO and of the CIPO, to verify the
status of Complainant’s trademark applications,
with the following results:
-
USPTO: On July 24,
2003, the Complainant, under the name of Taga Holdings, Inc. d/b/a Fort Garry
Pharmacy, applied for the registration
of CANADIAN MED SERVICE as a word mark
(File Nº 76531809) and as a mixed mark (File Nº 76531769), to identify services
of International
Class 42. The services sought to be identified by the marks
are: “On-line pharmacy services by way of interactive computer
communications.” The trademark applications are still being studied by the
USPTO. When examining the status of the applications, the Panel found that
both
files have the following annotation in “Current Status”: “A non-final action
has been mailed. This is a letter from the examining attorney requesting
additional information and/or making
an initial refusal. However, no final
determination as to the registrability of the mark has been made.”
-
CIPO: On January
24, 2003, the Complainant, acting as Taga Holdings Inc., carrying on business
as Fort Garry Pharmacy, filed two service
mark applications. The first, for
CANADIAN MED SERVICE as word mark, was assigned the application Nº 1165913. The
second, for CANADIAN
MED SERVICE & DESIGN, was assigned the application Nº
1165914. Both marks seek to identify: “On-line pharmacy services by way of
interactive computer communications.” These applications are still pending
for a final decision on the registrability of the signs.
From
the aforementioned findings, the Panel concludes the following:
1. Complainant lacks trademark or service
mark registrations. All of its applications are still pending for a final
decision. Since trademark
applications do not grant industrial property rights
that serve the purpose of meeting the requirements of Policy ¶ 4(a)(i), it has
to be concluded that the case brought by Complainant is based on its common law
rights in the mark CANADIAN MED SERVICE. This issue
leads to many
considerations that will be addressed by the Panel below.
2. The USPTO applications were filed by
Complainant well after the date of creation of the disputed domain name (i.e.,
February 25, 2003),
and also after the alleged date of transfer of the domain
name to Respondent (i.e., July 1, 2003). Although there is no clear evidence
of
the date of transfer of the domain name from CanAmerica Drugs Inc. to
Respondent, the date of July 1, 2003 has not been contested
by the Complainant
and is therefore accepted by the Panel. The Canadian applications filed with
the CIPO are dated only one month
prior to the date of registration of the
domain name <canadianmedservices.com>. Hence, the Panel believes
that this evidences that the trademark applications do not provide enough
grounds to support the present
action, and that it should be decided whether
there are common law rights on the head of the Complainant.
3. All service mark applications filed by
Complainant were made in the name of Taga Holdings, Inc. d/b/a Fort Garry
Pharmacy. Not one
of them was made on behalf of Canadian Med Service. This
issue will be studied by the Panel after considering the existence of common
law rights in this case.
Based
on these findings, the Panel will try to determine whether the Complainant has
demonstrated that it has common law rights in
the mark CANADIAN MED SERVICE.
The Complainant contends that it has invested significant time, resources and
effort in establishing
its mark to distinguish its services as a provider of
online pharmacy services to the United States market from those of other
providers
in the same market. According to Complainant, its mark is associated
with its services and reputation. To this end, Complainant presents
the
printout of the “About Us” page of Complainant’s webpage, which elaborates on
Complainant’s prestige and clientele. Additionally,
the Complainant lists a
number of activities developed to advertise its mark. This use has been carried
out since at least December
30, 2002.
Taking
into account that Complainant does not own trademark or service mark
registrations, it is for the trademark owner to demonstrate
that it has
achieved common law rights over the mark. Common law rights arise out of the
use of a mark in commerce in connection
with goods or services, and might only
exist in jurisdictions that acknowledge the existence of such rights, as in the
case of the
jurisdictions of the United States of America and of Canada[1].
Concerning
common law trademarks, it is important to clarify that the Policy does not
distinguish between registered and unregistered
trademarks. This issue has been
addressed deeply by previous Administrative Panels, such as in the case of Museum
of Science v. Asia Ventures, Inc.[2]:
“As to the first question, the wording of the Paragraph 4(a)
(i) to ‘trademark or service mark’ has been interpreted by numerous Panels
in
the past to include both registered marks and the common law marks. See inter
alia The British Broadcasting Corporation v. Jaime
Renteria, WIPO
Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for
Sale Inc. WIPO
Case No. D2002-0005, The Professional Golfers’ Association of America v.
Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO
Case No. D2001-0218; Brooklyn Institute of Arts and Sciences v Fantastic
Sites, Inc. National Arbitration Forum No. : FA0009000095560. With respect to
the latter, the Complaint must show that the mark has been in continuous use
(See United Artists Theatre Circuit, Inc. v. Domains
for Sale Inc, already
cited; Keppel TatLee Bank Limited v. Lars Taylor, WIPO
Case No. D2001-0168) and that the mark achieved secondary meaning
("distinctive character") in association with the Complainant. (See
Australian
Trade Commission v. Matthew Reader, WIPO
Case No. D2002-0786; (1) Galatasaray Spor Kulubu Dernegi (2) Galatasaray
Pazarlama A.S. (3) Galatasaray Sportif Sinai Ve Ticari Yatirimlar A.S. v.
Maksimum
Iletisim A.S., WIPO
Case No. D2002-0726).”
The
test to determine whether or not a sign can be protected as a common law mark
is highly exigent. Although the elements to demonstrate
common law rights may
vary, the following has been accepted as evidence of common law trademarks by
previous Administrative Panels:
“1) Advertising, marketing, or promotional use of the
alleged common law mark
2) Third Party references to the alleged common law mark
3) Widespread evidence of recognition among Internet users
4) Sales of services under and by reference to the alleged
common law mark
5) Appropriate showing of prior continuous use in a given
product and territorial market over a sufficiently long period of time.”[3]
The
evidence filed by Complainant does not seem to suffice for the purpose of
demonstrating common law rights. Complainant presented
evidence taken from its
own webpage at <canadianmedservice.com>, which is therefore, self
produced and is not evidence of recognition
of the mark in the market and of
the association of the mark with the Complainant and its services. The same
comment can be made
with respect to the advertisements (pamphlets and adds in
print media) that the Complainant alleges to have published and distributed
in
a widely manner. No evidence of such publications or distributions was filed.
Complainant failed to show third parties’ recognition
or references to its
mark. It also failed to prove that its mark is recognized among Internet users,
and did not present any evidence
of the sales effectively made through the use
of the name “Canadian Med Services”. To the contrary, Respondent contested the
fact
that Complainant was indeed known by its clients by the name of “Canadian
Med Service”, instead of other names such as “Fort Garry
Pharmacy” or “Alec
Leflour”. In the Complaint, Complainant states that it has built a database of
in excess of 8,000 clients. Respondent
asserted that it was doubtful that such
clients would come by way of the Complainant’s efforts in its mark. In its
additional submission,
Complainant replied to this allegation by informing that
the total number of its patients was in excess of 15,000, and that 8,000
of
that sum corresponded to clients who know the Complainant and its services
specifically by the mark CANADIAN MED SERVICE. No evidence
was filed in this
regard. Complainant did not present proof of the fact that it indeed had such
number of patients who contacted
it in connection with the name “Canadian Med
Service,” although in another part of its additional submission, it states that
it has
files with the names of its costumers (when referring to the transfer of
the prescriptions of Ms. Sandra Bartelstein). Whether Complainant’s
customers
know the Complainant as “Canadian Med Service”, “Fort Garry Pharmacy”, “Taga
Holdings Inc.” or “Mr. Alec Leflour” is undetermined
and as a consequence,
Complainant did not prove its point.
Complainant
places a lot of emphasis in demonstrating the existence of confusion between
its mark and the Respondent’s domain name.
However, it forgot to place the same
emphasis in demonstrating its own rights over the mark, which is a fundamental
issue in this
type of proceedings.
Another
issue calls the attention of the Panel. Although the service mark CANDADIAN MED
SERVICE is pending for registration in Canada
and the United States, and no
final decision has been made as to the registrability of the sign, the Panel
finds that such registrability
is not clear and that CANADIAN MED SERVICE could
be considered as descriptive of the services sought to be identified by it. In
fact,
the sign CANADIAN MED SERVICE was filed for registration to cover
services of International Class 42, namely “On-line pharmacy services by way
of interactive computer communications.” The services offered by the
Complainant are indeed such of providing pharmaceutical services from Canada to
clients domiciled in
the United States. Complainant undertakes this business
through the website <canadianmedservice.com>. The addition of the “.com”
suffix only serves to indicate to the consumer public that the services are
rendered via the Internet, or in other words, online.
The name chosen by
Complainant is, in the opinion of the Panel, a mere description of the services
rendered by the Complainant, and
would then lack of distinctive force.
When
talking about descriptive signs, it becomes necessary to study the issue of
secondary meaning. Assuming such fact as true for
the purpose of this
proceeding, and since the Complainant’s mark is not registered, Complainant
should not only demonstrate that
it holds common law rights, but also that its
sign has acquired secondary meaning to give birth to industrial property
rights. The
secondary meaning of descriptive signs was previously addressed by
this Panel in the case of Eminent Domains Inc. v. Target Directories
Corporation.[4]
The
test of secondary meaning is far more burdensome than the test of common law
rights. Some of the factors that have been used by
other Administrative Panels
to determine whether a mark has acquired a secondary meaning, are: “(1)
advertising expenditures, (2) consumer surveys linking the mark to a source,
(3) unsolicited media coverage of the service, (4)
sales success, (5) attempts
to plagiarize the mark, and (6) length and exclusivity of the mark’s use.”[5]
All of these factors must lead the Panel to conclude that in the minds of the
consumers, the mark is primarily identified with the
Complainant as the source
of the services rendered.
The
Panel notices that in the present dispute, Complainant has not provided any
piece of evidence that demonstrates that the consumer
links the CANADIAN MED
SERVICE mark with the Complainant, such as consumer surveys, unsolicited media
coverage, etc. The Complainant
failed to demonstrate that its mark has acquired
secondary meaning.
The
existence of this association has special connotations in this conflict. The
Respondent has emphatically stated that it never
knew that the Complainant was
named “Canadian Med Service”. According to Respondent, Complainant always
identified itself in the
market as Fort Garry Pharmacy, and sometimes with the
name of its principal, Mr. Alec Leflour. The Panel has studied the documents
filed within this proceeding and has found out that there is no evidence that
the consumer public associates the Complainant with
the name of “Canadian Med
Service”. The Panel notes that Complainant originally filed its Complaint in
this proceeding under the
name of “Taga Holdings Inc. o/a Fort Garry
Pharmacy and under the Canadian Med Service trade-mark”. Hence, Complainant
knowingly identified itself with the names of Taga Holdings Inc. and Fort Garry
Pharmacy, and mentioned the name
“Canadian Med Service” as the trademark under
which the complaint was based. Complainant did not identify itself as “Canadian
Med
Service”. The Case Coordinator requested the Complainant to rectify some deficiencies,
being one of them the fact that: “the link associating the entities listed
as the Complainant is not defined clearly enough in the complaint. Amend
complaint to either
more strongly connect the entities, or remove one from the
complaint.” The Complainant amended its Complaint on time, changing the
name of the Complainant to: “Taga Holdings Inc. doing business as Canadian
Med Service”.
The
Panel notes that this change in the identification of the Complainant is
relevant, as the Complainant had not originally stated
in any manner that it
was also known, or doing business as, “Canadian Med Service”. The Complainant
amended the Complaint upon request
of the Case Coordinator, but there is no
plausible explanation to the fact that the Complainant was identified in a
different manner
in the original Complaint. When the Complainant accepts that
it is not identified as “Canadian Med Service”, a finding of common
law rights
and particularly, of secondary meaning, becomes very difficult to exist.
In
addition to the aforementioned, the Panel found out that the Complainant
applied for the registration of the mark CANADIAN MED
SERVICE with the USPTO
and the CIPO, under the name of Taga Holdings Inc., doing business as Fort
Garry Pharmacy. Before the Trademark
Offices, the Complainant never identified
itself as “Canadian Med Service,” but nevertheless, it decided to do so within
the present
administrative proceeding. The Respondent has stated in its briefs
that Complainant is not known by the name of “Canadian Med Service”
and all
circumstances in this matter lead the Panel to conclude that this is true.
This, alongside with all previous findings, preclude
any possibility of finding
common law rights and secondary meaning with regard to the mark CANADIAN MED
SERVICE, over which the Complainant
alleged to have trademark rights.
The
Panel, in the case of Media West-GSI, Inc.[6],
concluded the following that can be applied to the present controversy:
“The
threshold -- and in this case, dispositive -- issue under Paragraph 4(a) is
whether Complainant has protectable "rights"
in the mark to which it
contends Respondent’s domain name is identical or confusingly similar. (...) it
is fair to infer from the
omission of any reference to registration that the
mark “freepressclassified.com” is not, in fact, registered with the PTO or any
analogous authority. Consequently, Complainant does not enjoy the benefit of
any presumption of the exclusive right to use a mark
afforded by registration
and must prove that its mark is distinctive. Wal-Mart Stores, Inc. v. Samara
Bros., Inc., [2000] USSC 26; 120 S. Ct. 1339, 1342 (2000). To be distinctive, a mark must,
either inherently or through an acquired secondary meaning, be capable of
identifying
the source of a particular product or service. Only marks that are
arbitrary or fanciful in the sense of bearing no logical relationship
to the
product or service for which they are used, or suggestive in the sense of
requiring imagination to be associated with a product
or service, are deemed
inherently distinctive. Wal-Mart, 120 S. Ct. at 1343. Complainant’s mark,
<freepressclassified.com>,
is not arbitrary, fanciful, or suggestive;
rather, it quite plainly describes the very service in connection with which it
is used
by Complainant: "a website service contain[ing] classified
advertisements for a variety of products and services.” (...) A descriptive
mark is one which portrays a characteristic of the particular article or
service to which it refers. Keebler Co. v. Rovira Biscuit
Corp., [1980] USCA1 237; 624 F.2d 366,
374 n.8 (1st Cir. 1980). Such marks are entitled to protection only if they
have acquired a "secondary meaning.” (...) This
test requires a
demonstration that the mark, by means of sufficient marketing, sales, usage,
and passage of time, has become identified
in the public mind with a particular
source of the goods or services. (...) Complainant has presented no evidence of
consumer surveys,
focus group studies, or even substantial anecdotal evidence,
showing that consumers have come to associate <freepressclassified.com>
with The Burlington Free Press. Likewise, Complainant has provided no evidence
of any independent or unsolicited media coverage of
its website service.
(...)In sum, on the evidence available in this case, the Panelist cannot
conclude that "in the minds of
the public, the primary significance of
[the mark <freepressclassified.com>] is to identify [Complainant] as the
source [of
its website service] rather than the [service] itself.”
Complainant
lacks trademark and service mark registrations, and therefore, Complainant’s
mark does not enjoy the benefit of any presumption
of distinctiveness. To pass
this obstacle, Complainant should have demonstrated that it owned common law
rights over the mark, which
it did not. Taking into account that the mark CANADIAN
MED SERVICE could be considered descriptive of the services rendered by the
Complainant, the Complainant should also have to demonstrate that its mark has
acquired secondary meaning, which again, it did not.
The
Panel wishes to clarify that any consideration on the descriptiveness of the
Complainant’s mark is only made for the purposes
of this case, and any final
decision in that regard corresponds to the Trademark Offices before which the
marks have been applied
for registration, or to a Court. The Panel’s decision
concerning the lack of trademark rights on the head of the Complainant is not
final, and in case that the Complainant’s trademark applications are finally
granted, it could file this proceeding again, as the
circumstances would have
changed dramatically. See Shopping.com v. Internet Action Consulting[7],
when stating the following:
“It is
important to note that, although the Panel has found on this record that
shopping.com is generic, this is not a definitive
determination. The ultimate
decision as to whether Complainant does or does not have proprietary rights in
that designation is better
left to the Trademark Office or a court. In the
event that the Trademark Office should agree to register shopping.com as a
trademark
on the principal register without requiring a disclaimer of the word
"shopping," or should a court hold that shopping.com
is a protectible
trademark, then Complainant may refile this proceeding and seek transfer of the
domain name, and this decision is
without prejudice to any such further
proceedings.”
Bearing in mind that the Panel concluded
that the Complainant does not have trademark rights that serve as grounds to
this dispute,
the examination of the identity or confusingly similarity between
the Complainant’s sign “Canadian Med Service” and the Respondent’s
domain name <canadianmedservices.com>
is not necessary.
Based on all the foregoing, the Panel
finds that the Complainant does not have trademark rights over the expression
“Canadian Med
Service” and then the Complainant failed to meet the requirements
of Policy ¶ 4(a)(i).
Due to the fact that the Panel found that
Complainant did not demonstrate its rights in the mark CANADIAN MED SERVICE, it
would not
be necessary to address this second requirement of the Policy.
However, the Panel would like to make some comments in this regard.
Paragraph
4 (c) of the Policy, determines that the following circumstances, in particular
but without limitation, if found by the
Panel to be present, shall demonstrate
the Respondent’s rights or legitimate interests to the domain name:
(i)
Before any
notice to Respondent of the dispute, it has used or made demonstrable
preparations to use the domain name or a name corresponding
to the domain name
in connection with a bona fide offering of goods or services; or
(ii)
Respondent
(as an individual, business, or other organization) has been commonly known by
the domain name, even if he has acquired
no trademark or service mark rights;
or
(iii)
Respondent
is making a legitimate noncommercial or fair use of the domain name, without
intent for commercial gain to misleadingly
divert consumers or to tarnish the
trademark or service mark at issue.
Complainant asserts that Respondent lacks
rights and legitimate interests in the domain name <canadianmedservices.com>
and that it has not used the domain name in connection with a bona fide
offering of goods or services. Respondent asserts that it has acted in good
faith and that its use of the domain name is legitimate.
Respondent carries out a business that is
highly similar to the one undertaken by the Complainant. Both of them provide
pharmaceutical
services from pharmacies located in Canada, to clients domiciled
principally in the United States. Taking into account that the Panel
has considered
that “Canadian Med Service” is very likely to be a descriptive term, both the
Complainant and the Respondent would
be entitled to use the words “Canadian Med
Service”, in singular or plural, to identify their services and themselves in
the market.
It is not clear, from the evidence filed within the proceeding,
which one of them is more entitled to the domain name at issue. Complainant
began to use the expression “Canadian Med Service” only one month before
CanAmerica Drugs Inc. registered the domain name <canadianmedservices.com>.
No evidence has been filed to demonstrate that CanAmerica Drugs Inc. lacked
rights or legitimate interests in the domain name. When
being demanded by the
Complainant to transfer the domain name, CanAmerica Drugs Inc. expressed its
acceptance since the domain name
was not relevant to it, but it never
recognized the rights on the head of the Complainant, nor did it accept its own
lack of rights
to the domain name. To the contrary, the representative of
CanAmerica Drugs Inc. expressly said that he: “bought a whole slew of names
along (sic) time ago. It had nothing to do with your company”. (See
Exhibit N of the Complaint). The Complainant did not demonstrate that this
original owner of the disputed domain name lacked
rights and legitimate
interests in the name, or that it registered the name knowing that its
legitimate owner should be the Complainant.
The same happens with the Respondent.
Complainant has not demonstrated that Respondent knew that the Complainant used
the name “Canadian
Med Service” before July 1, 2003, date of transfer of the
domain name from CanAmerica Drugs Inc. to the Respondent. The different
names
used by the Complainant in its business, such as Fort Garry Pharmacy, Taga
Holdings Inc. and the personal name of Mr. Alec
Leflour, make it easy to
believe that third parties ignored that the Complainant also used the name
“Canadian Med Service” and undertook
business through the website
<canadianmedservice.com>, even if such third parties were involved in the
same business of the
Complainant. In its additional submission, Complainant
states that it is not true that the Respondent ignored that the Complainant
used the name “Canadian Med Service” to identify itself in the market. To this
end, Complainant provides printouts of two electronic
mails dated August 6,
2003 and August 7, 2003. The Panel notes that both electronic mails are dated
more than one month after the
Respondent acquired the disputed domain name,
that is, July 1, 2003. Accordingly, the electronic mails presented by the
Complainant
do not constitute evidence of the fact that the Respondent was
aware of the name used by the Complainant, prior to the acquisition
of the
domain name <canadianmedservices.com>.
The Complainant alleges that it began to
use the mark CANADIAN MED SERVICE on December, 2002. This means that it used
the name just
a few weeks before the original registration of the domain name,
and just months prior to the acquisition of the name by the Respondent.
The
lapse of time in which the Complainant used the mark CANADIAN MED SERVICE prior
to the Respondent, is not enough to arrive at
a finding that Respondent lacked
rights and legitimate interests in the name, moreover when the Respondent also
carries out a business
of providing services from Canadian pharmacies to its
clients in the United States.
Respondent demonstrated that it engaged
in a bona fide offering of goods and services prior to the commencement
of this administrative proceeding. Likewise, the Respondent proved that
it is
known by the name of “CanadianMedServices.com”, which is the name of its store
in the State of Georgia, United States of America.
Unlike the Complainant,
Respondent is only known by this name of “CanadianMedServices.com”, and
undertakes its business openly with
this name.
The Panel considers that the Respondent
has demonstrated that it has rights and legitimate interests in the domain name
<canadianmedservices.com> and that the Complainant failed to meet
the requirements of Policy ¶ 4(a)(ii).
The
finding of the existence of Respondent’s rights and legitimate interests in the
domain name, could virtually preclude any possibility
of registration and use
of the domain name in bad faith. In this sense, the House Judiciary Committee,
when commenting on 15 U.S.C.
§ 1125(B)(i)(IV), explained that: “[t]he fact
that a person may use a mark in a site in such a lawful manner may be an
appropriate indication that the person's registration
or use of the domain name
lacked the required element of bad-faith.”[8]
Notwithstanding,
the Panel considers appropriate to make the following comments with respect to
this element of the Policy.
According
to paragraph 4(b) of the Policy, the following circumstances, in particular but
without limitation, if found by the Panel
to be present, shall be evidence of
the registration and use of a domain name in bad faith:
(i)
Circumstances
indicating that Respondent has registered or has acquired the domain name
primarily for the purpose of selling, renting,
or otherwise transferring the
domain name registration to the Complainant who is the owner of the trademark
or service mark or to
a competitor of that Complainant, for valuable
consideration in excess of Respondent’s documented out-of-pocket costs directly
related
to the domain name; or
(ii)
Circumstances
indicating that Respondent has registered the domain name in order to prevent
the owner of the trademark or service
mark from reflecting the mark in a
corresponding domain name, provided that Respondent has engaged in a pattern of
such conduct;
or
(iii)
Circumstances
indicated that Respondent has registered the domain name primarily for the
purpose of disrupting the business of a competitor;
or
(iv)
Circumstances
indicating that, by using the domain name, Respondent has intentionally attempted
to attract, for commercial gain, Internet
users to his web site or other
on-line location, by creating a likelihood of confusion with the Complainant's
mark as to the source,
sponsorship, affiliation, or endorsement of his web site
or location or of a product or service on his web site or location.
Complainant contends that Respondent
registered the domain name at issue in bad faith, for the purpose of
intentionally attempting
to attract, for commercial gain, Internet users to the
Respondent’s website, by creating a likelihood of confusion with Complainant’s
marks as to the source, sponsorship, affiliation or endorsement of Respondent’s
website. The Respondent has contested this allegation,
by stating that it
acquired the domain name without knowing that the Complainant used a similar
name in the market; hence, no intention
to create confusion is present.
Considering the evidence filed by the
parties, and as stated before, the Panel concludes that it has not been
demonstrated that the
Respondent registered the disputed domain name, knowing
that the Complainant used the mark CANADIAN MED SERVICE. Bearing this in
mind,
it is not possible to conclude that the Respondent acquired the domain name
intentionally attempting to attract Internet users
seeking for the
Complainant’s website. The Respondent has tried to demonstrate that whenever it
has found any possibility of confusion,
it has taken all appropriate measures
to direct the clients to the site that they are looking for. Despite the
effectiveness of the
measures adopted by the Respondent, it is clear for the
Panel that the Respondent has explained TO all confused clients, that it
is
different from the Complainant, and that it has been duly understood by the
consumers involved. The Panel believes that this behavior
is not the one of a
person who acts in bad faith and who acquired the domain name to disrupt the
business of a competitor or take
unlawful advantage of a competitor’s prestige.
Complainant also failed to demonstrate
whether CanAmerica Drugs Inc., as the original owner of the domain name <canadianmedservices.com>,
registered the domain name in bad faith. The evidence in this file leads to
conclude that CanAmerica Drugs Inc. registered the name
in good faith, without
knowing that Complainant was using a similar name. It is clear that the
Complainant informed CanAmerica Drugs
Inc. of the fact that it was using the
mark CANADIAN MED SERVICE to conduct its businesses, and for that reason, the
Complainant
requested the transfer of the name, which was being negotiated
between them. For reasons that are not known to the Panel, at some
point in the
negotiations, CanAmerica Drugs Inc. decided to transfer the domain name to the
Respondent. There is nothing that makes
the Panel believe that the Respondent
was aware of the existence of this negotiation between CanAmerica Drugs Inc.
and the Complainant.
It is more likely that the Respondent acquired the domain
name ignoring such circumstances. Whether CanAmerica Drugs Inc. acted in
bad
faith when transferring the domain name to the Respondent, it is not relevant
for this matter if it can not be concluded that
the Respondent also acted in
bad faith. In other words, the bad faith of CanAmerica Drugs Inc. can not be
imputed to the Respondent
in accordance to the evidence present in this
proceeding.
In the absence of any proof of
registration in bad faith, the third element of the Policy can not succeed. The
mere allegation of
the Complainant that the Respondent has used the domain name
in bad faith does not suffice. However, the Panel wants to declare that
the
Complainant also failed to demonstrate, beyond any doubt, that the Respondent
used the domain name at issue in bad faith, or
that the Respondent incurred in
any of the circumstances mentioned in paragraph 4 (b) of the Policy.
In
fact, the Complainant did not demonstrate that the Respondent acquired the
domain name primarily for the purpose of selling, renting,
or otherwise
transferring it to the Complainant or to a competitor of the Complainant, for
valuable consideration in excess of Respondent’s
documented out-of-pocket costs
directly related to the domain name. The discussions between the parties with
regard to the possibility
that the Respondent sold the domain name to the
Complainant, were made upon request of the Complainant. It has neither been
alleged
nor demonstrated that this was the purpose of the Respondent when
acquiring the domain name.
Likewise, it has not been evidenced that the Respondent
acquired the domain name in order to prevent the Complainant from reflecting
its mark in a corresponding domain name. The Respondent has not engaged in a
pattern of such conduct according to the documents filed
in this case.
The Panel in the case of Chestnutt v. Tumminelli[9]
concluded that: “[t]he lack of any evidence of use of the Domain Name to
divert business or for any other purpose prohibited by the Rules requires
the
Panel to conclude this issue in favor of Respondent.”
Consequently, the Panel finds that
Complainant failed to meet its burden of proof with respect to the Respondent’s
bad faith in the
registration and use of the domain name at issue.
DECISION
The Panel has found that Complainant
failed to prove all three elements of paragraph 4(a) of the Policy. Therefore,
Complainant’s
request that the domain name <canadianmedservices.com> be
transferred from Respondent to Complainant is DENIED.
Fernando Triana, Esq., Panelist
Dated: March 19, 2004
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