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Together Rx Access, LLC and Together Rx, LLC v. Make Purchase Offers To: mainstreet@gmail.com - Dan Brown [2005] GENDND 1593 (28 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Together Rx Access, LLC and Together Rx, LLC v. Make Purchase Offers To: mainstreet@gmail.com - Dan Brown

Case No. D2005-0797

1. The Parties

The Complainant is Together Rx Access, LLC and Together Rx, LLC, Virginia, United States of America, represented by Sidley Austin Brown & Wood, United States of America.

The Respondent is Make Purchase Offers To: mainstreet@gmail.com - Dan Brown, Long Beach, California, United States of America.

2. The Domain Names and Registrar

The disputed domain names <togetherrxacces.com> <togetherrxacess.com> <togetherxaccess.com> are registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2005. On July 27, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On August 12, 2005, eNom transmitted by email to the Center its verification response confirming that the ultimate Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. Complainant had originally listed Whois Privacy Protection Service, Inc. as the Respondent. Whois Privacy Protection Service, Inc. is an affiliate of eNom that provides an identity protection service for domain name registrants. In response to a notification by the Center that the Complaint was administratively deficient with respect to naming the correct Respondent, the Complainant filed an amendment to the Complaint on August 15, 2005. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 22, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 13, 2005.

The Center appointed Timothy D. Casey as the sole panelist in this matter on September 14, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Together Rx, LLC is jointly owned or controlled by seven pharmaceutical companies. It was established in 2002 to help lower-income American Medicare enrollees, without prescription drug insurance, get access to prescription medicines. People utilizing the Together Rx program receive a free prescription drug savings card, the Together Rx card, which can be used at pharmacies to buy medicines at lower costs. The Together Rx card and program have been advertised and promoted extensively throughout the United States of America, including on the “www.togetherrx.com” website, which has received over 129 million hits. The card and program have been promoted in conjunction with citizen groups, pharmacies, physicians, and federal, state, and local governments. Currently, there are 1.6 million cardholders. (See Scott Declaration Annex ?? to Complaint).

Together Rx applied to register the Together Rx mark with the United States Trademark Office on November 12, 2002. According to Trademark Office records available on-line, the mark was registered August 9, 2005, after the filing date of this Complaint.

Together Rx Access is a program similar to Together Rx, but includes four additional pharmaceutical companies and is targeted at larger group of lower-income Americans who lack prescription drug insurance. Together Rx Access has also been similarly advertised and promoted throughout the United States of America, including two websites “www.togetherrxaccess.com” and “www.traccess.com”. Together Rx Access filed applications to register its word mark and logo for Together Rx Access with the United States Trademark Office on January 10, 2005. There has been no final decision on the status of these applications.

According to records available in Annexes to the Complaint the disputed domain names have resolved to websites including specific links to providers of prescription drugs, medicines, drugs, health insurance, and a variety of other products and services unrelated to medicine and health, such as travel, financial services and gambling. The primarily blue and black color scheme used on these websites is also similar to the color scheme used by Complaint for the websites associated with their marks noted above.

On June 13, 2005, counsel for Together Rx Access wrote to Respondent regarding the domain names <togtherrxacess.com> and <togetherxaccess.com>, alleging various legal claims, and demanding various immediate actions by Respondent, including transfer of the specified domain names to Together Rx Access. In an email message dated June 16, 2005, Respondent acknowledged receipt of the June 13^th letter and agreed to transfer all rights and interests in the specified domains. Respondent did not challenge any of the assertions made by Together Rx Access.

5. Parties’ Contentions

A. Complainant

Complainant contends that they have established trademark rights in the Together Rx and Together Rx Access marks and that as a result of the extensive advertising and promotion of, first, the Together Rx mark and, then, the related Together Rx Access mark, that both marks have become well known in the United States. Complainant asserts that the disputed domain names are virtually identical as to sight, sound, and meaning when compared to Complainant’s marks. Complainant further asserts that Respondent is engaged in typosquatting in order to confuse consumers through the use of one-letter variations between the disputed domain names and the Complainant’s marks. With respect to the Together Rx mark, Complainant contends that two of the dispute domain names incorporate the mark in its entirety, and the third incorporates it except for a repeated “r.” The Panel notes, however, that the difference is a missing “r” not a repeated one. Complainant also contends that the addition of the term “access,” in its various misspelled forms, does not differentiate the disputed domain names from the marks and actually serves to increase the similarity to the Together Rx Access mark.

Complainant asserts that Respondent has no rights or legitimate interest in respect of the disputed domain names. Complainant is unaware of any use, attempted use or demonstrable preparations to use the disputed domain names with a bona fide offering of goods and services, or that Respondent has ever been commonly known by the disputed domain names. Respondent makes no legitimate non-commercial or fair use of the disputed domain names, but rather uses the disputed domain names to intentionally, misleadingly divert consumers for Respondent’s commercial gain. Complainant further asserts that Respondent has caused the <togetherrxacces.com> domain to resolve to the website of Complainant Together Rx Access, thereby demonstrating Respondent’s awareness of the Together Rx Access mark.

Complainant contends that Respondent registered and is using the disputed domain names in bad faith. To support this contention, Complainant points out that the disputed domain names were registered just days after the public announcement of the Together Rx Access program, which was long after Complainant had first applied for trademark protection, begun using the Together Rx marks, and registered domain names based on the marks. As Complainant asserts that its marks are well known, it follows that Respondent must have been aware of the marks before attempting to register the dispute domain names. As further evidence of bad faith, Complainant notes Verisign, Inc. v. Onlinemalls, Case No. D2000-1446 supports its contention that the registration of disputed domain names with slight misspellings and the offering of similar goods and services on the websites served by the disputed domain names constitute bad faith. Complainant offers proof of two third party websites that feature articles on the Together Rx Access program, but mistakenly include links to Respondent’s website. Complainant further argues that Respondent’s actions may cause consumers to enroll in other prescription discount programs by mistake.

Finally, Complainant asserts that Respondent’s use of the eNom privacy protection feature is a bad faith attempt to disguise its true identity, and that its current registrations under the name “Make Purchase Offers To: mainstreet@gmail.com” is an overt solicitation of offers to purchase the disputed domain names.

Complainant has requested that the disputed domain names be transferred to Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy, adopted by the Internet Corporation for Assigned Names and Numbers on August 26, 1999, applies inter alia to domain name registrations made in the “.com” namespace. Paragraph 4(a) of the Policy requires a complainant to make out three elements to succeed in an administrative proceeding initiated under the Policy:

1. The complainant has rights in a trade or service mark, with which Respondent’s domain name is identical or confusingly similar (paragraph 4(a)(i)); and

2. The Respondent has no rights or legitimate interests in respect of the domain name (paragraph 4(a)(ii)); and

3. The respondent registered and is using the domain name in bad faith (paragraph 4(a)(iii)).

A. The Complainant has Rights in a Trade or Service Mark, with which Respondent’s Domain Name is Identical or Confusingly Similar

There are two requirements that a complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the disputed domain names are identical or confusingly similar to the Complainant’s marks.

The Complainant has provided sufficient documentation to establish its rights in one or more trademarks under paragraph 4(a)(i) of the Policy.

The second requirement is that the disputed domain names are identical or confusingly similar to the marks. With the exception of spaces between words, which are not possible in domain names anyway, and various misspellings, the disputed domain names are certainly confusingly similar to one or both of Complainant’s trademarks. The Panel notes it had an exceedingly difficult time attempting to keep track of the spelling of each of the disputed domain names and the marks in question, and concludes that Complainant’s typosquatting contention is well supported. Hence the Panel concludes that the disputed domain names are, for the purposes of the Policy, confusing similar to the Complainant’s marks.

The Complainant has therefore shown that it has the appropriate rights in a trademark, and that the disputed domain names are confusing similar to this mark. The Panel concludes therefore that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. The Respondent has no Rights or Legitimate Interests in Respect of the Domain Name

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain names, as required under paragraph 4(a)(ii) of the Policy. It makes a number of assertions as to this point, most notably that there is no relationship between the parties, that the Respondent is using the disputed domain names to take advantage of the Complainant’s goodwill, and that the Respondent is not making any bona fide offering of goods or services using the disputed domain names.

The Respondent has not responded to these assertions. However, in the interests of ensuring a fair application of the Policy, the Panel considers it relevant to consider whether there is any evidence to support the application of the examples provided in paragraph 4(c) of the Policy. Paragraph 4(c) provides the following examples of activities of the Respondent, which may lead to its obtaining rights or a legitimate interest in the domain name:

“(i) before any notice to you 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 (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 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.”

There is no evidence that any of the scenarios of paragraph 4(c) apply to the Respondent. Given the nature of the content that Respondent has provided on the websites to which the disputed domain names resolve, the Respondent’s usages of the disputed domain names appear to be calculated to attract mistaken users to the Respondent’s websites. There is no evidence that the Respondent was ever known by a name similar to the disputed domain names. Nor is there evidence of legitimate non-commercial or fair use of the disputed domain names, nor any other bona fide offering of goods and services by the Respondent, other than the provision of competing goods and services using the Complainant’s marks, which on its own is insufficient to constitute a bona fide offering of goods and services.

As a result the Panel concludes that, even having considered the possible application of paragraph 4(c), the Respondent has no rights or legitimate interests in the disputed domain names. The Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. The Respondent Registered and is using the Domain Name in Bad Faith

The final issue is that of bad faith registration and use by the Respondent. For paragraph 4(a)(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the disputed domain names in bad faith and has used them in bad faith. The Complainant makes a number of submissions in relation to this point (see section 5, above) the strongest of which are (1) the claim that the Respondent registered and uses the domain names to lure users to his websites in a mistaken belief that the websites are associated with the Complainant, and (2) the claim that Respondent filed the registrations for the disputed domain names just days after the Together Rx Access program was publicly announced.

The former claim is based on the bad faith exemplar outlined in paragraph 4(b)(iv) of the Policy, which reads:

“For the purposes of Paragraph 4(a)(iii), 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:

…

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

The Respondent has registered and used domain names that are very likely to be confused with the marks of the Complainant, and has served up competitive content from its corresponding websites. In fact, there is evidence of actual confusion in the context of the two third party websites providing links to Respondent’s website by mistake. It is therefore clear that Respondent has used the disputed domain names to attract users to its websites for commercial gain, by creating confusion in the minds of Internet users as to the source of the website. Given these points and the timing of the registrations, the requirements of paragraph 4(b)(iv) are clearly made out, and as a result the activity of the Respondent is deemed to fulfil the bad faith use and registration requirements of paragraph 4(a)(iii).

Although it may under specific ciscumstances, the Panel is not persuaded by Complainant’s assertions that Respondent’s use of the eNom privacy protection feature constitutes bad faith or that Respondent’s use of the name “Make Purchase Offers To: mainstreet@gmail.com” constitutes a bad faith offer to sell the disputed domain names.

Domain name registrants can legitimately utilize privacy protection features for a number of reasons, including avoiding spammers by not having their contact information available on publicly accessible whois databases. Furthermore, in many parts of the world, operators of politically sensitive websites might need to maintain their anonymity in order to protect their lives and families. Any determination that the mere use of such privacy protection features can constitute bad faith sets very dangerous precedence.

Furthermore, as is clear from the Complaint, Complainant knew full well that the disputed domain names were Respondent’s despite Respondent’s temporarily confusing use of a different name on the registrations. See, Complaint Section V, Numbered Paragraph 8. It is difficult to imagine how Respondent’s unsuccessful attempt to disguise its identity can constitute bad faith under such circumstances. It is likewise difficult to understand why Complainant filed this Complaint after it had previously contacted the Respondent and caused Respondent to transfer two similarly confusingly domain names without having to go through the UDRP, but that is Complainant’s problem.

Likewise, the mere use of the name “Make Purchase Offers To: mainstreet@gmail.com,” or something similar cannot, indeed should not, be found to constitute bad faith. As long as it is possible that the registrant of the domain name associated with a “make offer” name would be willing to sell the domain name for no more than the registration cost associated with that domain name, then the “offer to sell” cannot constitute bad faith.

The Panel nevertheless concludes that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <togetherrxacces.com> <togetherrxacess.com> and <togetherxaccess.com> be transferred to the Complainant.

Timothy D. Casey
Sole Panelist

Dated: September 28, 2005