DECISION

Maxi Drug, Inc. d/b/a Brooks Pharmacy v. GD a/k/a Green Domains

Claim Number: FA0312000215360

PARTIES

Complainant is Maxi Drug, Inc. d/b/a Brooks Pharmacy (“Complainant”) represented by Joseph Avanzato of Adler Pollock & Sheehan PC, 2300 Financial Plaza, Providence, RI 02903. Respondent is GD a/k/a Green Domains, 5444 Arlington Avenue, Bronx, NY 10471 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <brooksrx.com> registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.

PANEL

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

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 1, 2003; the Forum received a hard copy of the Complaint on December 2, 2003.

On December 2, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the Forum that the domain name <brooksrx.com> is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.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 December 4, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 24, 2003 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@brooksrx.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 31, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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 makes the following assertions:

1. Respondent’s <brooksrx.com> domain name is confusingly similar to Complainant’s BROOKS MAXI DRUG and BROOKS PHARMACY marks.

2. Respondent does not have any rights or legitimate interests in the <brooksrx.com> domain name.

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

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BROOKS MAXI DRUG mark (Reg. No. 2,054,658 registered on April 22, 1997) and the BROOKS PHARMACY mark (Reg. No. 2,383,008 registered on September 5, 2000) in relation to, inter alia, retail drugstore and pharmacy services. Complainant operates a website at the <brooks-rx.com> domain name where Complainant offers its drugstore and pharmacy services over the Internet.

Respondent registered the <brooksrx.com> domain name on October 25, 2002. Respondent has used the domain name to divert Internet users to websites at the
<e-prescription.com> and <rxmeds.com> domain names. Respondent is currently using the disputed domain name to divert Internet traffic to a website at the <amercianpharmacy.com> domain name where prescription pharmaceuticals are offered for sale.

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 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 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

Complainant has demonstrated its rights in the BROOKS MAXI DRUG and BROOKS PHARMACY marks through registration with the USPTO. 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”).

Complainant argues that Respondent’s <brooksrx.com> domain name is confusingly similar to Complainant’s marks because the disputed domain name appropriates the principal element of Complainant’s mark and simply adds the letters “rx” to the end of the mark. The letters “rx” are a commonly known acronym for a medical prescription. The addition of the acronym “rx” fails to sufficiently distinguish the domain name from the marks because the added acronym directly relates to Complainant’s business of online drugstore and pharmacy services. See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to Complainant’s federally registered service mark, KELSON); see also America Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to Complainant’s mark, ICQ).

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has failed to come forward to challenge Complainant’s allegations. Therefore, the Panel is permitted to accept all reasonable allegations and inferences submitted in the Complaint as true. See Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Furthermore, based on Respondent’s failure to respond, the Panel presumes Respondent lacks all rights to and legitimate interests in the disputed domain name with regard to Policy ¶ 4(a)(ii). See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Respondent is currently using the <brooksrx.com> domain name to divert Internet traffic to a website at the <amercianpharmacy.com> domain name where prescription pharmaceuticals are offered for sale. Respondent’s use of the disputed domain name to compete directly with Complainant’s business represents neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no rights or legitimate interests in a domain name that diverted Internet users to Respondent’s competing website through the use of Complainant’s mark); see also Winmark Corp. d/b/a Play It Again Sports v. In The Zone a/k/a Giant Sports Factory, FA 128652 (Nat. Arb. Forum Dec. 6, 2002) (finding that Respondent had no rights or legitimate interests in a domain name that used Complainant’s mark to redirect Internet users to a competitor’s website).

Moreover, Respondent has offered no proof and no evidence in the record suggests that Respondent is commonly known by BROOKS RX or <brooksrx.com>. Complainant asserts that Respondent is not authorized to use Complainant’s marks for any purpose. Accordingly, the Panel concludes that Respondent has no rights to or legitimate interests in the disputed domian name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s use of the <brooksrx.com> domain name, a domain name confusingly similar to Complainant’s federally registered service marks, to divert Internet traffic to websites that compete directly with Complainant’s business demonstrates Respondent’s bad faith because the registration and use of a domain name with the intent to attract Internet users for commercial gain by creating a likelihood of confusion evidences bad faith registration and use with regard to Policy ¶ 4(b)(iv). See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant).

Furthermore, the Panel infers that Respondent had actual notice of Complainant’s rights in its marks when the disputed domain name was registered because Respondent has used the domain name to divert Internet users to websites that sell prescription pharmaceuticals over the Internet. The registration of a domain name confusingly similar to a mark, despite actual or constructive notice of the mark holder’s rights, demonstrates bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about the Complainant’s mark when it registered the subject domain name”); see also G.D. Searle & Co. v. Fred Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (“It can be inferred that Respondent had knowledge of Complainant’s rights in the CELEBREX mark because Respondent is using the CELEBREX mark as a means to sell prescription drugs, including Complainant’s CELEBREX drug”).

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

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 <brooksrx.com> domain name be TRANSFERRED from Respondent to Complainant.

Judge Harold Kalina (Ret.), Panelist

Dated: January 12, 2004

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