|
|
Home
| Databases
| WorldLII
| Search
| Feedback
Generic Top Level Domain Name (gTLD) Decisions |
GlobalRx, Inc. v. Andrew Kartashov
Claim
Number: FA0407000291432
Complainant is GlobalRx, Inc. (“Complainant”), represented
by Daniel T. Tower, 4700 Six Forks Rd., Suite 150, Raleigh, NC 27609. Respondent is Andrew Kartashov (“Respondent”), Sadovaja Kudrinskaya 18/30, Moscow
109361, Russian Federation.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <globalrx-phentermine-pills.com>, <globalrx-viagra-pills.com>,
<globalrx-fioricet-pills.com>, <globalrx-prozac-pills.com>,
<globalrx-xenical-pills.com>, <globalrx-propecia-pills.com>,
<globalrx-neurontin-pills.com>, <globalrx-tenuate-pills.com>,
<globalrx-zyban-pills.com>, <globalrx-wellbutrin-pills.com>,
<globalrx-renova-pills.com>, <globalrx-cialis-pills.com>,
<globalrx-aldara-pills.com>, <globalrx-effexor-pills.com>,
<globalrx-paxil-pills.com>, <globalrx-sonata-pills.com>,
<globalrx-retin-a-pills.com>, <globalrx-soma-pills.com>,
<globalrx-adipex-pills.com>, <globalrx-ionamin-pills.com>,
<globalrx-zoloft-pills.com>, <globalrx-meridia-pills.com>
and <globalrx-levitra-pills.com>, registered with Go Daddy
Software, Inc.
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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on July 1, 2004; the Forum
received a hard copy of the Complaint
on July 6, 2004.
On
July 2, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the
domain names <globalrx-phentermine-pills.com>, <globalrx-viagra-pills.com>,
<globalrx-fioricet-pills.com>, <globalrx-prozac-pills.com>,
<globalrx-xenical-pills.com>, <globalrx-propecia-pills.com>,
<globalrx-neurontin-pills.com>, <globalrx-tenuate-pills.com>,
<globalrx-zyban-pills.com>, <globalrx-wellbutrin-pills.com>,
<globalrx-renova-pills.com>, <globalrx-cialis-pills.com>,
<globalrx-aldara-pills.com>, <globalrx-effexor-pills.com>,
<globalrx-paxil-pills.com>, <globalrx-sonata-pills.com>,
<globalrx-retin-a-pills.com>, <globalrx-soma-pills.com>,
<globalrx-adipex-pills.com>, <globalrx-ionamin-pills.com>,
<globalrx-zoloft-pills.com>, <globalrx-meridia-pills.com>
and <globalrx-levitra-pills.com> are registered with Go Daddy
Software, Inc. and that Respondent is the current registrant of the names. Go
Daddy Software, Inc. has
verified that Respondent is bound by the Go Daddy
Software, 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
July 15, 2004, a Notification of Complaint and Commencement of Administrative Proceeding
(the "Commencement Notification"),
setting a deadline of August 4,
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
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
August 10, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Honorable
Paul A. Dorf (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.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <globalrx-phentermine-pills.com>,
<globalrx-viagra-pills.com>, <globalrx-fioricet-pills.com>,
<globalrx-prozac-pills.com>, <globalrx-xenical-pills.com>,
<globalrx-propecia-pills.com>, <globalrx-neurontin-pills.com>,
<globalrx-tenuate-pills.com>, <globalrx-zyban-pills.com>,
<globalrx-wellbutrin-pills.com>, <globalrx-renova-pills.com>,
<globalrx-cialis-pills.com>, <globalrx-aldara-pills.com>,
<globalrx-effexor-pills.com>, <globalrx-paxil-pills.com>,
<globalrx-sonata-pills.com>, <globalrx-retin-a-pills.com>,
<globalrx-soma-pills.com>, <globalrx-adipex-pills.com>,
<globalrx-ionamin-pills.com>, <globalrx-zoloft-pills.com>,
<globalrx-meridia-pills.com> and <globalrx-levitra-pills.com>
domain names are confusingly similar to Complainant’s GLOBALRX and GLOBALRX.COM
marks.
2. Respondent does not have any rights or
legitimate interests in the <globalrx-phentermine-pills.com>, <globalrx-viagra-pills.com>,
<globalrx-fioricet-pills.com>, <globalrx-prozac-pills.com>,
<globalrx-xenical-pills.com>, <globalrx-propecia-pills.com>,
<globalrx-neurontin-pills.com>, <globalrx-tenuate-pills.com>,
<globalrx-zyban-pills.com>, <globalrx-wellbutrin-pills.com>,
<globalrx-renova-pills.com>, <globalrx-cialis-pills.com>,
<globalrx-aldara-pills.com>, <globalrx-effexor-pills.com>,
<globalrx-paxil-pills.com>, <globalrx-sonata-pills.com>,
<globalrx-retin-a-pills.com>, <globalrx-soma-pills.com>,
<globalrx-adipex-pills.com>, <globalrx-ionamin-pills.com>,
<globalrx-zoloft-pills.com>, <globalrx-meridia-pills.com>
and <globalrx-levitra-pills.com> domain names.
3. Respondent registered and used the <globalrx-phentermine-pills.com>,
<globalrx-viagra-pills.com>, <globalrx-fioricet-pills.com>,
<globalrx-prozac-pills.com>, <globalrx-xenical-pills.com>,
<globalrx-propecia-pills.com>, <globalrx-neurontin-pills.com>,
<globalrx-tenuate-pills.com>, <globalrx-zyban-pills.com>,
<globalrx-wellbutrin-pills.com>, <globalrx-renova-pills.com>,
<globalrx-cialis-pills.com>, <globalrx-aldara-pills.com>,
<globalrx-effexor-pills.com>, <globalrx-paxil-pills.com>,
<globalrx-sonata-pills.com>, <globalrx-retin-a-pills.com>,
<globalrx-soma-pills.com>, <globalrx-adipex-pills.com>,
<globalrx-ionamin-pills.com>, <globalrx-zoloft-pills.com>,
<globalrx-meridia-pills.com> and <globalrx-levitra-pills.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
GlobalRx, is a mail order, online prescription, and over the counter
pharmaceutical company.
Complainant
holds registrations with the United States Patent and Trademark Office for the
GLOBALRX mark (Reg. No. 2,147,528 issued
March 31, 1998) and the GLOBALRX.COM
mark (Reg. No. 2,582,089 issued June 18, 2002). Complainant has used these marks in commerce since 1996 for
pharmaceutical goods and services.
Respondent
registered the disputed domain names on January 30, 2004. Respondent’s domain names resolve to
websites that allow Internet users to order the pharmaceutical product featured
in the domain
name. The websites offer
free online consultation, provide fast and discrete order processing, use USA
licensed physicians and pharmacies
to approve orders, offer free phone customer
support and real time online order tracking, and represent that Respondent is
the longest
established dedicated supplier.
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.
Complainant’s
registrations for its GLOBALRX and GLOBALRX.COM marks with the United States
Patent and Trademark Office establish Complainant’s
rights in the marks. See
Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions 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 has the burden
of refuting this assumption.); see also Smart Design LLC v. Hughes,
D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not
require Complainant to demonstrate ‘exclusive rights,’
but only that
Complainant has a bona fide basis for making the Complaint in the first place);
see also 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.”)
The disputed
domain names are confusingly similar to Complainant’s marks because the only
differences are the addition of a pharmaceutical
product, the generic word
“pills” and hyphens. Adding generic
terms that describe Complainant’s products or services and adding hyphens to a
third party’s mark 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) (holding that the addition of other
well-known pharmaceutical drug brand names to the
<viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the
capacity of the disputed domain name to confuse Internet users, but actually
“adds to the potential
to confuse”); see also G.D. Searle & Co. v.
Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (holding the domain name
to be confusingly similar where <e-viagra-xenical-celebrex-propecia.com>
merely includes the addition of related industry-specific words, namely, the marks
of Complainant’s competitors); see also Nintendo of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO
Nov. 1, 2000) (finding <game-boy.com> identical and confusingly similar
Complainant’s GAME BOY mark, even
though the domain name is a combination of
two descriptive words divided by a hyphen).
Therefore,
Complainant has established that the disputed domain names are all confusingly
similar to Complainant’s marks under Policy
¶ 4(a)(i).
The failure of
Respondent to respond to the Complaint functions both as an implied admission
that Respondent lacks rights and legitimate
interests in the domain names, as
well as an arbitral grant to accept Complainant’s reasonable allegations as
true. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221
(WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be
construed as an admission that they have no
legitimate interest in the domain
names); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc.,
FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to
respond allows all reasonable inferences of fact in
the allegations of
Complainant to be deemed true); 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).
The only
evidence in the record that relates to the Panel’s determination of whether
Respondent is commonly known by the disputed
domain names is the WHOIS
registration information for the respective domain names. However, the WHOIS information for all of
the domain names lists the domain name registrant as Andrew Kartashov, not as
“globalrx
(pharmaceutical product) pills.”
Therefore, the Panel finds that the evidence fails to indicate that
Respondent is commonly known by the disputed domain names pursuant
to Policy ¶
4(c)(ii) based on the foregoing, as well as the fact that the domain names are
a string of pharmaceutical and generic
terms linked with Complainant’s business
name, products and services. See Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly
known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also Foot Locker Retail, Inc. v. Gibson, FA 139693 (Nat.
Arb. Forum Feb. 4, 2003) (“Due to the fame of Complainant’s FOOT LOCKER family of marks…and the fact
that Respondent’s WHOIS information reveals its name to be
Bruce Gibson, the
Panel infers that Respondent was not ‘commonly known by’ any of the disputed
domain names prior to their registration,
and concludes that Policy ¶ 4(c)(ii)
does not apply to Respondent.”); see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding no rights or legitimate interests where (1) Respondent is not a
licensee of Complainant;
(2) Complainant’s prior rights in the domain name
precede Respondent’s registration; (3) Respondent is not commonly known by the
domain name in question).
Furthermore, all
of the disputed domain names are confusingly similar to Complainant’s GLOBALRX
and GLOBALRX.COM marks and are used
to host websites offering the same
pharmaceutical products and services that Complainant offers. Such use has consistently and frequently
been found neither to be a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i)
nor a legitimate noncommercial or fair use pursuant to Policy
¶ 4(c)(iii). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting
the domain names was to cause confusion with Complainant's
website and marks,
its use of the names was not in connection with the offering of goods or
services or any other fair use); see also G.D. Searle &
Co. v. Mahoney, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding
Respondent’s use of the disputed domain name to solicit pharmaceutical orders
without a license or authorization from Complainant does not constitute a bona
fide offering of goods or services under Policy ¶
4(c)(i)); see also
Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11,
2002) (finding that Respondent’s use of the disputed domain name to redirect
Internet users
to a financial services website, which competed with
Complainant, was not a bona fide offering of goods or services).
Therefore, Complainant has established Policy ¶
4(a)(ii).
Respondent is
using the disputed domain names to advertise and sell various pharmaceutical
products and services. Complainant’s
business is a mail order, online prescription, and over the counter
pharmaceutical company. The Panel finds
that, by creating confusion around Complainant’s GLOBALRX and GLOBALRX.COM
marks, Respondent is attempting to disrupt
the business of a competitor. Respondent’s use of Complainant’s marks
within its domain name in order to sell goods and services similar to
Complainant’s goods
and services is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters,
D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive
relationship between Complainant and Respondent, Respondent
likely registered
the contested domain name with the intent to disrupt Complainant's business and
create user confusion); see also S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum July 18, 2000) (finding 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) (finding 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).
Moreover,
Respondent presumably commercially benefits from using domain names confusingly
similar to Complainant’s GLOBALRX and GLOBALRX.COM
marks, which is evidence
that Respondent registered and used the domain names in bad faith pursuant to
Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v.
Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding
that the disputed domain name was registered and used in bad faith pursuant to
Policy ¶ 4(b)(iv) through Respondent’s registration and use of the infringing
domain name to intentionally attempt to attract Internet
users to its fraudulent
website by using Complainant’s famous marks and likeness); see also Kmart v. Khan,
FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits
from its diversionary use of Complainant's mark when
the domain name resolves
to commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent
is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)); see also Am.
Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21,
2000) (finding bad faith where Respondent registered and used an infringing
domain name to attract
users to a website sponsored by Respondent).
Complainant has
established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <globalrx-phentermine-pills.com>, <globalrx-viagra-pills.com>,
<globalrx-fioricet-pills.com>, <globalrx-prozac-pills.com>,
<globalrx-xenical-pills.com>, <globalrx-propecia-pills.com>,
<globalrx-neurontin-pills.com>, <globalrx-tenuate-pills.com>,
<globalrx-zyban-pills.com>, <globalrx-wellbutrin-pills.com>,
<globalrx-renova-pills.com>, <globalrx-cialis-pills.com>,
<globalrx-aldara-pills.com>, <globalrx-effexor-pills.com>,
<globalrx-paxil-pills.com>, <globalrx-sonata-pills.com>,
<globalrx-retin-a-pills.com>, <globalrx-soma-pills.com>,
<globalrx-adipex-pills.com>, <globalrx-ionamin-pills.com>,
<globalrx-zoloft-pills.com>, <globalrx-meridia-pills.com>
and <globalrx-levitra-pills.com> domain names be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
August 20, 2004
WorldLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/980.html