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RX America, LLC. v. Stephen Sumsky [2005] GENDND 1271 (26 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

RX America, LLC. v. Stephen Sumsky

Case No. D2005-0539

1. The Parties

Complainant is RX America, LLC (“Complainant”), a corporation incorporated under the laws of the State of Delaware, with a principal place of business located in Salt Lake City, Utah, United States of America.

Respondent is Stephen Sumsky (“Respondent”) located in Olympia, Washington, United States of America.

2. The Domain Name and Registrar

The domain name at issue is <rxamerican.com> (the “Domain Name”). The registrar is Network Solutions, Inc. (the “Registrar”) located in Herndon, Virginia, United States of America.

3. Procedural History

On May 19, 2005, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email. May 19, 2005, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. On May 20, 2005, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent's name. On May 23, 2005, the Center received hardcopy of the Complaint. The Complainant paid the required fee.

The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On June 2, 2005, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint with Amendment, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On June 21, 2005, the Center received the Response of Respondent via email. On June 23, 2005, the Center received the Response of Respondent in hardcopy.

On June 29, 2005, the Center received Complainant’s Reply to Respondent’s Response, which can be considered only with leave of the Panel.

On July 11, 2005, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a single-member Panel.

On July 19, 2005, the Center received a Supplemental Response from Respondent, which can only be considered with leave of the Panel. The Panel decided to consider both Complainant’s Reply to Respondent’s Response and Respondent’s Supplemental Response.

4. Factual Background

Complainant is the owner of the name and brand RX AMERICA and related names and marks (the “Marks”), in connection with mail order and online pharmacy services and related goods and services. Complainant is a leader in the online pharmacy industry and offers a wide range of mail order and online pharmacy related services. Complainant has used the RX AMERICA Marks since at least 1990. The RX AMERICA Marks are the subject of federal registrations in the United States of America. Complainant also owns the <rxamerica.com> domain name and maintains a website at <rxamerica.com>.

On or about October 31, 2002, Respondent registered the Domain Name <rxamerican.com>. On or about July 11, 2003, Respondent began using the Domain Name as a redirect to the Canadian RX Web Shop website.

5. Parties’ Contentions

A. Complainant’s contentions

i. Complainant contends that it has registrations of the RX AMERICA Marks, that its registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the RX AMERICA Marks. 15 U.S.C. § 1115.

ii. Complainant argues that the Domain Name is confusingly similar to the RX AMERICA Marks, pursuant to Paragraph 4(a)(i) of the Policy, because it wholly incorporates the RX AMERICA Marks with the addition of generic or descriptive terms.

iii. Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.

Complainant contends that Respondent cannot demonstrate rights or legitimate interest in the Domain Name under Paragraph 4(c)(i) because he has not made use, or demonstrable preparations to use, the Domain Name in connection with the bona fide offering of goods or services.

Complainant contends that Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(ii) because he is not commonly known by the Domain Name. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the RX AMERICA Marks in a domain name or in any other manner.

Complainant contends that Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue. Complainant contends that Respondent has deliberately registered the Domain Name containing the RX AMERICA Marks to attract the attention of internet users. Complainant contends that Respondent redirects his Domain Name to <canadarxshop.com> which sells competitive goods, hence Respondent is using the Domain Name to misleadingly divert consumers and tarnish the RX AMERICA Marks.

iv. Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of Paragraph 4(a)(iii).

Complainant argues that the Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the registrations to the Complainant for valuable consideration in excess of the registrant’s out-of-pocket costs. Complainant contends that Respondent agreed to transfer the Domain Name to Complainant for “reasonable compensation.”

Complainant argues that Respondent has registered the Domain Name to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Complainant’s RX AMERICA Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.

B. Respondent’s contentions

i. Respondent does not dispute that the Complainant has registrations of the RX AMERICA Marks.

ii. Respondent asserts that the Domain Name is not confusingly similar to the RX AMERICA Marks because of the descriptive nature of the RX AMERICA Marks and the Domain Name and because Complainant has shown no evidence of actual confusion.

iii. Respondent asserts that Complainant has not met its burden of disproving that Respondent has rights to or legitimate interests in the Domain Name. Respondent asserts that he is conducting a legitimate business offering cheaper pharmaceuticals to older and low-income citizens of the United States of America. He further asserts that he has conducted this business for at least two years without actual knowledge of Complainant’s RX AMERICA Marks and therefore has rights and legitimate interest in the Domain Name.

iv. Respondent denies that he registered or used the Domain Name in bad faith. Respondent argues that Complainant’s mark is descriptive, hence weak, and that the business Respondent has conducted for at least the last two years constitutes a bona fide sale of goods.

Paragraph 4(b) suggests four types of evidence of bad faith registration, none of which applies:

Respondent claims that there is no showing of bad faith based on Paragraph 4(b)(i) because he did not offer or intend to sell the Domain Name to the Complainant or to others. Any discussion about selling the Domain Name never included any price.

Respondent argues that Paragraph 4(b)(ii) does not apply because the registration of the Domain Name does not prevent the Complainant from reflecting the RX AMERICA Marks themselves in a corresponding domain name, noting that in fact that Complainant has registered <rxamerica.com>. Respondent also contends that he has not engaged in a pattern of registering domain names to prevent the trademark owner from reflecting the RX AMERICA Marks in a corresponding domain name.

Respondent argues that he has never had any intention of disrupting Complainant’s business and there is no evidence of bad faith based on Paragraph 4(b)(iii).

There is no evidence of bad faith based on Paragraph 4(b)(iv) because Respondent is making a fair, commercial use of the Domain Name without intending to create any likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of his website.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”

Because both the Complainant and Respondent are domiciled in the United States of America and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States of America. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, Case No. D2000-1772.

Enforceable Trademark Rights

Complainant contends that it has numerous registrations of the RX AMERICA Marks and that its trademark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the RX AMERICA Marks. 15 U.S.C.

§ 1115. 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, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Respondent has not contested the existence or validity of the RX AMERICA Marks. Respondent’s only comment on the nature of the RX AMERICA Marks is that they are descriptive and hence weak. The Policy considers whether the alleged trademark rights of Complainant are “enforceable” and does not distinguish between weak and strong trademark rights. Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the trademark.

Identity or Confusing Similarity

Complainant further contends that the Domain Name is identical with and confusingly similar to the RX AMERICA Marks pursuant to the Policy paragraph 4(a)(i). Complainant argues that the Domain Name is confusingly similar, because it wholly incorporates the RX AMERICA Marks with the addition of generic or descriptive terms.

Respondent asserts that the Domain Name is not confusingly similar to the RX AMERICA Marks because of the descriptive nature of the Marks and the Domain Name and because Complainant has shown no evidence of actual confusion.

Contrary to the Respondent’s contention, the owner of the registered trademark does not have to show “likelihood of confusion”, as that term is used in trademark infringement jurisprudence, to establish that a domain name incorporating a trademark in its entirety is identical or confusingly similar for purposes of this factor. Under Paragraph 4(a)(i), the question of identity and confusing similarity is evaluated solely based on a comparison between the complainant’s trademark and the alphanumeric string constituting the domain name at issue. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. It thus is irrelevant, for purposes of evaluating this factor, whether the trademark is weak or strong, whether consumers would avoid confusion by reviewing the content of Respondent’s website or whether Complainant has shown any instance of actual confusion.

As numerous courts and prior ICANN panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.

The Panel finds that the Domain Name <rxamerican.com> is identical to the RX AMERICA Marks except for the addition of an “n.” The additional “n” is merely descriptive. Therefore, the Panel finds that the Domain Name is confusingly similar to the RX AMERICA Marks pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest.

Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Name. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 .

The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to conclude that Respondent has rights or a legitimate interest in the Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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 contends that Respondent has not made use, or demonstrable preparations to use, the Domain Name in connection with the bona fide offering of goods or services, is not commonly known by the Domain Name and has no license or other authorization to use the RX AMERICA Marks. Complainant further contends that Respondent is not making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue. Complainant contends that Respondent has deliberately registered the Domain Name containing the RX AMERICA Marks to attract the attention of Internet users. Complainant contends that Respondent redirects his Domain Name to <canadarxshop.com> which sells competitive goods, hence Respondent is using the Domain Name to misleadingly divert consumers and tarnish the RX AMERICA Marks.

The Complainant has sustained its burden of coming forward with sufficient evidence to make a prima facie showing that Respondent lacks rights to or legitimate interests in the Domain Name.

Respondent rebuts the assertions of Complainant by arguing that Complainant has not met its burden of disproving that Respondent has rights to or legitimate interests in the Domain Name. Respondent argues that he is conducting a legitimate business offering cheaper pharmaceuticals to older and low-income citizen of the United States of America. He further asserts that he has conducted this business for at least two years without actual knowledge of Complainant’s RX AMERICA Marks and therefore has rights and legitimate interest in the Domain Name.

Having found confusing similarity for purposes of the Policy, the redirecting of the traffic from the Domain Name to a competitive website cannot be found to be bona fide use. Therefore, the Panel finds that the preparations of Respondent to use the Domain Name were not in connection with a bona fide offering of goods or services, making Paragraph 4(c)(i) inapplicable. Respondent has not offered evidence that he is commonly known by the moniker “RX America,” making Paragraph 4(c)(ii) inapplicable. Finally the record in this proceeding, the redirecting of this traffic was intentional by Respondent and for the purpose of commercial gain by misleadingly diverting customers to the <rxcanada.com> website, making Paragraph 4(c)(iii) inapplicable.

The file contains insufficient evidence that the use of the Domain Name meets the elements for any of the methods provided for in the Policy paragraph 4(c). Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Bad Faith.

Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your: 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 your : or location or of a product.

Complainant argues that the Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the registrations to the Complainant for valuable consideration in excess of the registrant’s out-of-pocket costs. Complainant contends that Respondent agreed to transfer the Domain Name to Complainant for “reasonable compensation.”

Complainant further argues that Respondent has registered the Domain Name to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Complainant’s RX AMERICA Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.

Respondent denies that Complainant has shown any of the circumstances required by the Policy paragraphs (4)(b)(i)-(iv). Respondent further argues that he used the Domain Name to purchase prescription drugs in Canada for the elderly and low-income citizens of the United States of America for two years. Pursuant to the Respondent he did so without actual knowledge of the RX AMERICA Marks, establishing that his use was legitimate and in good faith.

The Panel hereby finds that the discussion regarding the possible sale of the Domain Name for a “reasonable price” is not sufficient to show the intent of Respondent to register the Domain Name for the purpose of selling it to Complainant for an amount in excess of Respondent’s out-of-pocket costs.

Respondent does not contest that he intentionally attempted to attract Internet users to his website for commercial gain. The Panel found above that for purposes of this proceeding the Domain Name is confusingly similar to the RX AMERICA Marks, thus creating confusion as to the sponsorship, affiliation or endorsement of Respondent’s website. Therefore, the elements of Paragraph 4(b)(iv) have been met and the Panel finds that for purposes of this proceeding Respondent has registered and used the Domain Name in bad faith pursuant to the Policy paragraph 4(a)(iii).

7. Decision

The Panel concludes (a) that the Domain Name <rxamerican.com> is confusingly similar to Complainant’s registered RX AMERICA Marks, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.

Richard W. Page
Panelist

Date: July 26, 2005