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RX America, LLC. v. Matthew Smith [2005] GENDND 549 (26 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

RX America, LLC. v. Matthew Smith

Case No. D2005-0540

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 Matthew Smith (“Respondent”) located in Beverly Hills, California, United States of America.

2. The Domain Name and Registrar

The domain name at issue is <rxamerica.org> (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 with Amendment 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 6, 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 29, 2005, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.

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-arbitrator Panel.

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>.

Respondent registered the Domain Name <rxamerica.org> and began using the Domain Name to generate income through the use of a pay-per-click search engine. By use of HTML code on Respondent’s web page located at <rxamerica.org>, Respondent gathers search data from Oingo.com, a pay-per-click search engine affiliated with the Google AdSense Domain Program, and provides links to various pharmaceutical and drug related companies in competition with Complainant.

By way of an affiliate agreement with Oingo.com and/or Google’s AdSense Domain Program, Respondent earns a portion of the revenue generated by “clicks” to the links provided by Oingo.com and/or Google’s AdSense Domain Program.

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 is using the Domain Name to generate income through Respondent’s website located at <rxamerica.org> by gathering search data from Oingo.com, a pay-per-click search engine affiliated with the Google AdSense Domain Program, and providing links to various pharmaceutical and drug related companies in competition with Complainant. Complainant contends that 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 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 does not dispute Complainant’s allegation that the Domain Name is confusingly similar to the RX AMERICA Marks.

iii. Respondent does not dispute Complainant’s allegation that Respondent lacks rights to or legitimate interests in the Domain Name.

iv. Respondent does not dispute Complainant’s allegation that Respondent registered or used the Domain Name in bad faith.

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 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. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772.

Failure to File a Response

A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System, NAF.

Case No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Case No. FA0094957 and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA0094925.

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

ii) that the Respondent has no legitimate interests in respect of the domain name; and,

iii) that the domain name has been registered and is being used in bad faith.

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. 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 does not contest these assertions.

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 <rxamerica.org> is identical to the RX AMERICA Marks except for the addition of an “.org.” Respondent's addition of the gTLD “.org” is non-distinctive because it is required for registration of the Domain Name. 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 is using the Domain Name to generate income through Respondent’s website located at <rxamerica.org> by gathering search data from Oingo.com, a pay-per-click search engine affiliated with the Google AdSense Domain Program, and providing links to various pharmaceutical and drug related companies in competition with Complainant. Complainant contends that 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 has failed to contest any of these allegations. 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 [Respondent] 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 [Respondent] 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 [Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

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

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.

Respondent does not contest these assertions by Complainant. From the evidence presented, the actions of Respondent appear to be intentional. The Panel found above that for purposes of this proceeding that 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. The Panel has also found that Respondent is using the Domain Name to generate income through Respondent’s website located at <rxamerica.org> by gathering search data from Oingo.com, a pay-per-click search engine affiliated with the Google AdSense Domain Program, and providing links to various pharmaceutical and drug related companies in competition with Complainant. 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 <rxamerica.org> 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