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Longs Drug Stores California, Inc. v. Kal Kuchora [2005] GENDND 519 (6 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Longs Drug Stores California, Inc. v. Kal Kuchora

Case No. D2005-0428

1. The Parties

The Complainant is Longs Drug Stores California, Inc., Walnut Creek, California, United States of America (the “Complainant”), represented by E. Lynn Perry, Jonathan E. Schwartz and E. Shalu Shaluja of United States of America.

The Respondent is Kal Kuchora, Rawalpindi, Pakistan (the “Respondent”).

2. The Domain Name and Registrar

The domain names at issue are <longs-drugs> and <longspharmacy.com> (the “Domain Names”), with Intercosmos Media Group, Inc. d/b/a directNIC.com, New Orleans, Lousiana, United States of America (the “Registrar” or “directNIC.com”).

3. Procedural History

A Complaint dated April 21, 2005, was submitted by e-mail to the WIPO Arbitration and Mediation Center (the “Center”). The submission was made in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN), on August 26, 1999, (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On April 22, 2005, The Center acknowledged receipt of the Complaint and received and stamped the hard copy on April 28, 2005. On April 22, 2005, The Center notified the Registrar on record, that Complainant filed a complaint against Respondent, and that it concerned the domain names <longs-drugs.com> and <longspharmacy.com> (the “Domain Names”). A request was made to Registrar to indicate receipt of the Complaint, to confirm that the Domain Names were registered with Registrar and that Respondent was the current registrant, among others. The Center requested confirmation from the Registrar that the Domain Names should be kept locked during the pending administrative proceeding.

On the same date, that is, April 22, 2005, Registrar responded stating that the Domain Names are registered with Registrar by the Respondent. Registrar confirmed that the Domain Names would remain locked for the duration of the proceeding and that the language of the agreement was English.

On April 29, 2005, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent at the address that Complainant had indicated in the Complaint. The Center marked May 19, 2005, as the deadline for the submission of response to the Center and the Complainant.

On May 20, 2005, the Center sent a Notification of Respondent Default to the Respondent by e-mail.

After having received the undersigned’s Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed Luis C. Schmidt as the Sole Panelist.

Sharing the assessment of the Center, the Panel independently finds that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules, and that payment of the fees was made in time. The Panel finds that the Center has duly notified Complaint to the Respondent, pursuant to Rules, paragraph 2(a), and that the Notification of Respondent Default was also properly noticed.

The registration agreement for the Domain Names at issue has been written and executed in English by Respondent-Registrant and the Registrar. The Complainant has submitted its Complaint without any observation or objection on this regard. By undertaking that there are no special circumstances to determine otherwise, as provided in Rule paragraph 11, the language of this proceeding is English.

4. Factual Background

After Complainant’s assertions, supported by the documents attached to the Complaint, all of them undisputed by Respondent –as having defaulted to the Complaint– and after proper verification conducted at the database of the U.S. Trademark Office by the Panel itself, based on the discretional powers conferred upon this latter, in accordance with paragraph 10 (a) of the Rules, applicable to the present matter, and supported by precedents such as InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076, the Panel finds that the Complainant owns the following service marks (referred hereinafter as the “Marks” or the “LONGS marks”) registered in the Principal Register of the U.S. Trademark Office or with the Japanese Trademark Office:

Mark	Country	Reg. No.	Date Issued	First Use
LONGS	USA	2028266	January 7, 1997	December 1986
LONGS	USA	1634945	February 12, 1991	October 1957
LONGS (Stylized)	Japan	3292729	April 25, 1997	n/a
LONGS (Stylized)	Japan	3262705	February 24, 1997	n/a
LONGS (Stylized)	Japan	4253529	March 19, 1999	n/a
LONGS (Stylized)	Japan	3346472	September 12, 1997	n/a
LONGS (Stylized)	Japan	4087341	November 28, 1997	n/a
LONGS (Stylized)	USA	1150484	April 7, 1981	May 26, 1977
LONGS (Stylized)	USA	2842946	May 18, 2004	March 1989
LONGS DRUGS	USA	2838531	March 30, 2004	May 15, 1938
LONGS PHARMACY	USA	1799782	October 19, 1993	April 1, 1987
LONGS SENIOR ADVANTAGE	USA	2841727	May 11, 2004	n/a
TURN TO LONGS THE BEST DRUG STORE IN TOWN	USA	2382566	September 5, 2000	June 25, 1996

Applications for at least six service marks LONGS or variations were filed on the basis of actual use, under section 1(a) of the U.S. Lanham Act (USC 15, Chapter 22, Subchapter 1, and Section 1051). The dates of first use reported to that effect was December 1986 for registration number 2028266; October 1957 for registration number 1634945; 05/26/1977 for registration number 1150484; March 1989 for registration number 2842946; 05/15/1938 for registration number 2838531; and 04/01/1987 for registration number 1799782.

In addition to the service mark registrations or the “Marks” that are referred to above, on December 8, 1994, Complainant sought and obtained registration for the domain name <longs.com>.

Complainant, Longs Drug Stores California, Inc., is a company doing business in the field of retail drug store services. Services are rendered using marks LONGS, LONGS DRUGS and LONGS PHARMACY. The principal place of business of Complainant is 141 N. Civic Drive, Walnut Creek, California, United States of America.

The website of Complainant (www.longs.com), shows that Complainant is dedicated to drug store retailing services, including on-line sales, using trademark LONGS DRUG and design, as it is prominently displayed on the upper left corner of the page. While browsing through the homepage, it can be obtained general information about the company and the services that it renders to the public. The contents of the website concur with Complainants statements in the Complaint. On the other hand, the Whois database indicates that the registration of the domain name <longs.com > was created on May 9, 1995, Complainant having performed as registrant, while Network Solutions, LLC. as the registrar.

The Domain Names were registered respectively on April 22, 2002, <longspharmacy.com> and September 27, 2003, <longs-drugs.com> in conformance with the documentation that the Center and Complainant have submitted and the searches that the Panel has discretely conducted, at the Whois database of Network Solutions, Inc.

It is clear from evidence submitted and inquiries made at discretion of this Panel, Respondent applied for the registration of the domain name <longspharmacy.com> approximately five years after Complainant had filed the first service mark application (although Complainant has claimed use of the LONGS marks indeed since 1938) and nearly seven years after Complainant had obtained the <longs.com> domain name registration.

The Domain Names are linked to a website under the domain name <americanpharmacy.com> related as well to Internet drug retailing services.

Complainant has submitted as evidence a printout of information obtained from Respondent’s website, made before the submission date of the complaint, on April 21, 2004. The Panel has verified the printout that Complainant filed, and has taken note that the Domain Names give access to the website referred to in the Complaint. From the foregoing, the Panel concludes that Respondent has used the Domain Names by linking the same to a site that is operated by a competitor of Complainant.

On March 24, 2005, Complainant wrote a cease and desist letter to the Respondent, requesting this latter to voluntarily transfer the ownership of the Domain Names to Complainant. On or about the same date, Complainant sent to Respondent an electronic version of such cease and desist letter. According to the statements by Complainant, undisputed for the purposes of the present proceeding, Respondent did not reply to the letter.

5. Parties’ Contentions

5.1 Complainant

The Complainant asserts that:

- The Domain Names are nearly identical to and incorporate the word LONGS, service marks in which complainant has rights.

- The trademarks by which it is commonly known, “LONGS”, “LONGS DRUGS” and “LONGS PHARMACY”, identify drug retail services, including on-line sales. The Complainant has registered its trademark rights in the United States of America and Japan, with complete success. The same is true concerning the domain name <longs.com>. There is thus no other individual or corporation than the Complainant holding trademark rights on the LONGS marks in the United States and Japan, at least in connection with drug retailing, and certainly the Respondent holds no rights whatsoever on said Marks.

- The LONGS marks are distinctive, representing that, in addition to the inherent capability of LONGS to perform as a distinctive mark per se, Complainant has built up valuable goodwill, which is symbolized by the LONGS marks, that has reached the status of well known as associated with Complainant.

- On April 22, 2002, and September 27, 2003, Respondent commenced use of the domain names < longspharmacy.com > and < longs-drugs.com >, respectively, which are subsequent dates to when Complainant started using terms associated with the word LONGS as a trademark and domain name.

Complainant sent a demand letter to Respondent without response.

- There is lack of any legitimate trademark rights of the Respondent to the Domain Names, because Complainant is the owner of record of the LONGS trademarks. In line with the argument of Complainant, Respondent has used the Domain Names to deliberately attempt to exploit users’ typographic errors made when seeking the site of Complainant and to misleadingly divert consumers with the intent of commercial gain. Responded has not used the Domain Names in connection with active websites, but instead, they are used to redirect Internet users to the “www.americanpharmacy.com” website, an on-line drugstore in direct competition with Complainant. Finally, Respondent is not commonly known by the Domain Names or is not making legitimate non-commercial or fair use of the Domain Names. That is evidenced by the fact that Respondent redirects the Domain Names to a website showing a drugstore making business.

- Respondent used the Domain Name in bad faith for misdirecting customers to a competing site operating for commercial gain. As such, Complainant has argued that, Respondent has used the Domain Name intentionally attempting to attract, for commercial gain, Internet users to the website of the Respondent or other on-line location, by creating a likelihood of confusion with the LONGS marks of Complainant, as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the website or location of the Respondent. Typo squatting is in fact evident to trigger confusion, since Respondent has just added a hyphen and the words “drugs” and “pharmacy” to what would be LONGS’ legitimate website. By having performed a search through Mark Monitor of domain names registered in the name of Respondent, Complainant found at least 529 registrations under his name. Complainant made a sampling proof that revealed that many of these domain names take users to the < americanpharmacy.com > website.

- The Complainant requests the Administrative Panel to issue a decision that the contested Domain Name must be transferred to the Complainant.

- The Complainant agrees, with respect to any action that Respondent may bring against decisions of the Administrative Panel, that it would stick to the jurisdiction of the courts where the principal office of the concerned registrar is located.

5.2 Respondent

The Respondent has not submitted a response, and therefore is in default.

6. Discussion and Findings

6.1 Effects of Respondent Default

Respondent was required to a respond to the Complaint as filed by the Complainant. According to Rules, paragraph, 5(b)(i) “(t) he response shall (...) (r)espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name (...)”.

Under the Rules, and in particular paragraph 14 (a), the Panel “shall proceed to a decision on the complaint”, and under paragraph 14(b), the Panel “shall draw such inferences there from as it considers appropriate”.

In line with the foregoing, failure to respond could indicate that the assertions that the Complainant raised would give sufficient grounds to a default decision in the favor of this latter. However, under the Policy the defaulting response still needs to be qualified, because “the complainant must prove that each of these three elements are present”. Policy, paragraph 4(a) in fine.

6.2 The websites of the Respondent

As concluded in InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076, the Panel considers that under Paragraph 10(a) of the Rules, the Panel has the power to independently search the Internet, in order to obtain as much information as required to render a decision.

The Panel visited the www.longs-drugs.com and www.longspharmacy.com websites of the Respondent. The address routed the user to an active website displaying advertisements and sales offers related to the pharmacy business.

6.3 Identity or Confusing Similarity of Domain Names with a Mark in which Complainant has Rights.

The Panel has carefully considered the allegation that the Complainant has made that the Domain Names are virtually identical or confusingly similar to the registered trademarks based on the term LONGS. Likewise, the Panel reviewed the allegation and evidence claiming that Complainant has rights upon the Marks.

The Panel has made a comparison of the Domain Names vis-à-vis the Complainant’s Marks, and finds that that the second level domain names “longs-drugs” and “longspharmacy”, are virtually identical to the word Longs, which they both incorporate. Respondent has employed a misspelled version of the LONGS marks, in particular the marks LONGS PHARMACY and LONGS DRUGS, by adding features such as hyphens (ie: longs-drugs) or by deleting the space between words (ie: longspharmacy).

The LONGS marks are strong due to their inherent capability to distinguish drug store and related services. The copying or imitation of a strong mark leads to presumption of confusion. This is a universal principle of trademark law resulting from international treaties and doctrines. Panelists have analyzed similar cases finding confusion, as it happened in VeriSign, Inc. v. Onlinemalls, WIPO Case No. D2000-1446; or Banca Popolare Friuladria S.p.A. v. Giovanni Zago, WIPO Case No. D2000-0793; Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199, influenced by Bayer Aktiengesellschaft v. Yongho Ko, WIPO Case No. D2001-0205; or InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck, WIPO Case No. D2000-0069.

From the foregoing, this Panel concludes that the Domain Names are confusingly similar to the LONGS marks.

6.4 Rights or Legitimate Interests in the Domain Name

In the present default proceeding there is no contention on record, made by the Respondent, or that the Panel could rely on, to conclude that it might have trademark or other intellectual property rights, or in general, legitimate interests in the Domain Names. Nothing can be reasonably obtained leading to infer to the foregoing fact, pursuant to the Policy, paragraph 4(c). Complainant has argued that there is no legitimate interest considering that far from having rights over the Domain Names Respondent has merely used it in a deliberate attempt to exploit users’ possible typographical mistakes when seeking Complainant’s website.

For the Panel Respondent has not done anything that could be regarded a legitimate interest under paragraph 4(c). As it has been discussed above, there is nothing on record indicating that the Domain Names are in use or that there have been preparations for being used, in connection with a good faith business or any activity in general. On the contrary, from the Complainants evidence, and from the checks that the Panel has made of Respondent’s website, the Domain Names have only been used for the purpose of linking Internet users to the locations of a third party, conducting competing activities to those of Complainant.

The situation above could only be interpreted as a disrupting and misleading practice resulting from the intent of Respondent to attract Internet users to other directly competitive sites, and that cannot be a legitimate use of a domain name. Cases as Ticketmaster Corporation v. Woofer Smith, WIPO Case No. D2003-0346; Alta Vista Company v. O.F.E.Z. et al., WIPO Case No. D2000-1160; Expedia, Inc. v. Dotsan, WIPO Case No. D2001-1220; or CSA International v. John O. Shannon and Care Tech Industries, Inc., WIPO Case No. D2000-0071, would support the foregoing assertion. There is no evidence in the records or inference possible leading to conclude that Respondent has acted with an intention to obtain a commercial gain from misleadingly diverting consumers or to tarnish a mark. However, the practice that Respondent has undertaken by registering domain names so close to the LONGS marks, and for use in connection with a website that only would send the users to locations of competing third parties “could hardly be called ‘legitimate noncommercial or fair use’ of the Domain Name” CSA International v. John O. Shannon and Care Tech Industries, Inc., WIPO Case No. D2000-0071.

Respondent is not related or “connected” to the Complainant. There is probably no “connection” between the Domain Names, the site of Respondent or the linked sites. There is at least no evidence from the file that would possibly suggest the foregoing. However, activities such as connecting, directing or linking sites that are unrelated, in a manner as Respondent has made, cannot be regarded legitimate use. A practice as the above could represent an infringement of trademark rights instead in a number of national jurisdictions. The foregoing is supported by cases such as Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199; Royal Bank of Canada v. Personal, D2001-0761; and Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413.

This Panel gives particular weight to the fact that Respondent defaulted. It can be inferred that by having defaulted Respondent showed nothing else but an absolute lack of interest in the Domain Names. The same could be said as for the cease and desist letter is concerned. And in the absence of a response, it is truly hard to conclude about the legitimate interest of the Respondent. The Panel understands the difficulty that Complainant would face to show what is actually in the mind of Respondent, apart from what it has been determined from the likeness between Domain Names and trademarks, and from the contents of the website itself. Proving negative facts is not particularly an easy task. For that reason, Rule 4(a)(ii) binds the Complainant showing a prima facie case.

The Panel finds that the Respondent has no rights to or legitimate interests in the Domain Names at issue.

6.5 Registration and Use in Bad Faith

6.5.1 Preliminary Remarks

There are a number of general considerations, of a factual nature, requiring analysis before actually addressing the particular factors of paragraphs 4(a)(iii) and 4(b) of the Policy. They are as follows:

Respondent was aware of the domain names and LONGS marks pertaining to Complainant. Respondent likely knew that Complainant was the holder of the domain name <longs.com> as well as the LONGS marks, or at least knew about the existence of Complainant’s drugstores in California and at Internet. It would have been difficult to believe that Respondent would have registered the Domain Names without to know the foregoing. First of all, it adopted the slightest variations possible for circumventing the domain name < longs.com > as Complainant had registered it. For that end, Respondent would necessarily have had to investigate the registries and perhaps Complainant itself.

Respondent has used the Domain Names for linking to sites that are unrelated to Complainant. It cannot be a coincidence that Respondent registers and uses the Domain Names, that happen to be virtually identical to the marks and domain name of a pharmacy, for link them to the site of a competing business. Another inference of knowledge triggers from the fact that Respondent has repeated its conduct, by linking domain names presumably of third parties, to the <americanpharmacy.com> website.

Turning to the provisions and standards applicable in connection with the current administrative proceeding, there are perhaps three that deserve special attention: Paragraph 4(a)(iii), addresses bad faith as a factor in the proceedings regarding the registration of domain names. The general requirement is that, in order for a registered domain name to be transferred to someone having trademark rights, the domain name would have to be “registered” and “used” in bad faith. Paragraph 4(b) of the Policy refers to certain factors which, if found to be present, shall be conclusive that the Domain Names have been registered and used in bad faith.

Paragraph 4(b)(i) concerns acquisition of a domain name for sale. Paragraph 4(b)(ii) concerns acquisition for the purpose of blocking the Complainant, provided that the Respondent has engaged in a pattern of such conduct. Paragraph 4(b)(iii) involves disruption of the business of a competitor. Paragraph 4(b)(iv) involves use of a domain name for the purpose of attracting visitors to the online location of Respondent or a third party, in the mistaken belief that they are visiting a location associated with the Complainant. In the present case, paragraph 4(b)(iv) deserves an in-depth review, not only as Complainant has invoked it in the Complaint, but in addition, by discretion of this Panel.

Notwithstanding the above, paragraph (b) serves the purpose to indicate, on a non-exhaustive basis, when there is “registration” and “use” in bad faith of domain names. Paragraph 4(b) would thus allow other possible forms of demonstrating “registration” and “use” -by employing an inclusive, copulative solution- or “registration” or “use” -as an alternate, disjunctive solution- of domain names in bad faith. As a matter of fact, the Center has compiled UDRP decisions dealing with a number of issues, in particular forms of showing bad faith outside the categories of paragraph 4(b) that other panelists have used as reference in their own cases.

6.5.2 Bad Faith Factors in Paragraph 4(b) of the Policy

Complainant has argued that Respondent has fallen squarely into paragraph 4(b)(iv) of the Policy. In keeping with this, it has stated that Respondent registered the Domain Names and used the same for redirecting traffic to unrelated websites. It is Complainant’s view that Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.

For this Panel, it can be drawn from records that Respondent has registered and used the Domain Names with the sole purpose to attract Internet users and divert them to other locations, in particular the site of a third party promoting competitive services. From the standpoint of the Panel, it is clear that Respondent knows the pharmaceutical on-line distribution business. Actual and potential customers of Complainant could be mislead driven by confusion, and when arriving to the erroneous location where they were sent by the linking, believe that Respondent has been granted a sponsorship, has become affiliated to Complainant, or his activities have been endorsed by this latter. In Harrods Limited v. Pete Lormer, WIPO Case No. D2003-0504, the Panel found that the latter would constitute, “not only a legitimate use of the disputed domain name, but also bad faith use”. Holding otherwise “would be to undermine Complainant’s brand by misleadingly identifying its brand with the respondent”. The bad faith of Respondent “arises, too from a deliberate intention to create a false sense of origin or sponsorship for the Respondent’s products, goods and services”. That would necessarily result in what that panel called “initial interest confusion” and was sustained on a number of decisions including WIPO cases Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Javier Llorens, WIPO Case No. D2000-1319 and Xerox Corp. v. Stonybrook Investments, Ltd, WIPO Case No. D2001-0380.

The question is if the conduct that Respondent carried out has been performed for commercial profit or financial gain. The Panel in Harrods Limited did not discuss that issue, as it also did not happen in Dow Jones & Company, Inc. v. Down Jones Update, WIPO Case No. D2000-0495. On the other hand, other panels have addressed those points. In Microsoft Corporation v. Superkay Worldwide, Inc., WIPO Case No. D2004-0071, it was found that when a domain name has been routed to the site of a third party, it is only theoretically possible that the Respondent may obtain a commercial benefit. Something similar was said in Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021. The panel in Club de Regatas Vasco da Gama v. Building Centre International, WIPO Case No. D2000-0739, found that the respondent was profiting “by offering an e-mail service for addresses to be formed with the domain name of the user’s favorite team, against the annual fee of U$ (sic) 14,95”. The respondent in the Vasco da Gama case was apparently routing the domain name to a site managed by its own. On similar grounds, ViriSign, Inc. v. Onlinemalls, WIPO Case No. D2000-1446.

The case file shows that the Respondent is using the Domain Names for the purpose of making a profit. The fact that Respondent has used linking in order to send Internet users to a website for drugs sales, can be regarded an inference that Respondent can be participating in the business, or in another way is gaining comercially from the re-linking of web traffic. This is enhanced by the fact that Respondent is doing the same linking with other domain names that it has registered. Hence, paragraph 4(b) of the Policy is met.

Furthermore, and in addition to the non-exclusive list of factors evidencing bad faith in the said paragraph 4(b), it is clear from the case file that the Respondent had prior knowlegde of the Complainant and its trademark when the Respondent registered the domain names in question. This seems evident from the fact that the Respondent combined the Complainant’s mark with the words “drugs” and “pharmacy”, both of which are descriptive of the Complainant’s line of business.

7. Decision

The Panel has found that the domain names <longs-drugs.com> and <longspharmacy.com> are confusingly similar to the trademarks of the Complainant, the Respondent has no rights or legitimate interests in said domain names, and that the domain names have been registered and used in bad faith.

Therefore, pursuant to Paragraphs 4(a) (i), (ii) and (iii) of the Policy and 15 of the Rules, the Administrative Panel decides to request that the domain names <longs-drugs.com> and <longspharmacy.com> be transferred to the Complainant.

Luis C. Schmidt
Sole Panelist

Date: June 6, 2005