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Associated British Foods plc v. Pacific Game Technology (Holding) Limited [2005] GENDND 601 (8 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Longs Drug Stores California, Inc. v. Seung Nam Kim

Case No. D2005-0426

1. The Parties

The Respondent is Seung Nam Kim, Nam-Ku Pohang, Kyungbuk, Republic of Korea (the "Respondent").

2. The Domain Name and Registrar

The domain name at issue is <longdrugstores.com> (the "Domain Name"), with OnlineNic, Inc. d/b/a China-Channel.com, (the "Registrar" or "OnlineNic, Inc.").

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 the same date, that is, April 21, 2005, the Center acknowledged receipt of the Complaint and received and stamped the hard copy on April 26, 2005.

On April 22, 2005, the Center notified the Registrar, that Complainant filed a complaint against Respondent, and that it concerned the domain name <longdrugstores.com> (the "Domain Name"). A request was made to Registrar to indicate receipt of the Complaint, to confirm that the Domain Name is registered with Registrar and that Respondent was the current registrant, among others. The Center requested confirmation from the Registrar that the Domain Name shall be kept locked during the pending administrative proceeding.

On April 25, 2005, Registrar responded stating that the Domain Name is registered with Registrar by the Respondent. Registrar confirmed that the Domain Name would remain locked for the duration of the proceeding and that the language of the agreement was English.

On April 29, 2005, the Center notified a Complaint Deficiency, requesting that Complainant submits itself to the jurisdiction of the courts at the location of the Domain Name holder’s address.

On May 4, 2005, Complainant submitted by e-mail to the Center an Amendment to Complaint, submitting itself to the jurisdiction of the courts at the location of the Domain Name holder’s address. On May 10, 2005, the Center received the hard copy of the Amendment to Complaint.

On May 11, 2005, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent. The Center marked May 31, 2005, as the deadline for the submission of response to the Center and the Complainant.

On June 2, 2005, the Center sent a Notification of Respondent Default to the Parties 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 and Amendment to Complaint were 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 notified.

By undertaking that there are no special circumstances to determine otherwise, as provided in paragraph 11of the Rules, the language of this proceeding is English, the language of the registration agreement.

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:

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 were December 1986, for registration number 2028266; October 1957 for registration number 1634945; May 26, 1977, for registration number 1150484; March 1989, for registration number 2842946; 05/15/1938 for registration number 2838531; and April 1, 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 in 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 DRUGS and design, as it is prominently displayed on the upper left corner of the page. While browsing through the homepage, general information can be obtained about the company and the services that it renders to the public.

The Domain Name <longdrugstores.com> was registered on January 25, 2004, as evidenced by the documents.

It appears that Respondent applied for the registration of the Domain Name <longdrugstores.com> approximately seven years after Complainant had filed the first service mark application (although Complainant has claimed use of the LONGS marks since 1938) and nearly ten years after Complainant had obtained the <longs.com> domain name registration.

There is actually no site that can be accessed under the Domain Name <longdrugstores.com> as the website seems to be inactive.

On or about July 28, 2004, Complainant’s Counsel sent by e-mail and DHL a cease and desist letter to the Respondent, demanding this latter to immediately cease all infringing activity and transfer the ownership of the Domain Name to Complainant. According to the statements by Complainant, undisputed for the purposes of the present proceeding, Respondent did not reply to the letter.

From the evidence submitted by Complainant and the searches made at discretion of this Panel, it could be perceived that the owner of the Domain Name at issue has presumably been involved in at least one other UDRP proceeding, having lost <haavind.com> and <haavindvislie.com> to Advokatfirmaet Haavind Vislie DA, a law firm in Norway.

The Complainant asserts that:

- The Domain Name is nearly identical to and incorporates the word LONGS, service mark in which Complainant has rights. Complainant, Longs Drug Stores California, Inc., is commonly known as "Longs", "Longs Drugs" and "Lonngs Drug Store" and owns broad rights in the LONGS marks, which are embodied in the Domain Name <longsdrugstores.com>.

- Under the LONGS marks, Complainant offers a wide range of pharmaceutical, retail and film related services. The Complainant has registered its trademark rights in the United States of America and Japan. The Complainant has also registered 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 of America 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.

- Respondent has made no effort to commence use of the Domain Name in connection with a bona fide offering goods and services. Efforts to misleadingly divert customers with the intent of commercial gain is not evidence of bona fide use of the Domain Name, but rather evidence of bad faith.

- Respondent is not commonly known by the Domain Name, indeed, Respondent refers to itself as "Seung Nam Kim".

- There is lack of legitimate trademark rights of the Respondent to the Domain Name, because Complainant is the owner of record of the LONGS trademarks. In line with the argument of Complainant, Respondent registered the Domain Name for the purpose of attracting Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Marks as to the source, sponsorship, affiliation or endorsement of the products and services advertised on Respondent’s website.

- By use of HTML code on Respondent’s web page, Respondent’s website gathers search data from Trafficz.com and Seek2.com, pay-per-click search engines which are both owned by Thought Convergence, Inc., and displays links from various pharmaceutical and drug related companies.

- By way of an affiliate agreement with Trafficz.com and/or Seek2.com, Respondent earns a portion of the revenue generated by "clicks" to the links provided by Trafficz.com and/or Seek2.com.

- Respondent’s website provides links to various pharmaceutical companies that offer goods and services in direct competition with Complainant. This conduct by the Respondent is a blatant example of typo-squatting.

- The Domain Name which simply eliminates a letter "s" from "Longs" and adds the words "Drug" and "Stores" to what would be LONGS’ proper website "www.longs.com" appears specifically designed to attract LONGS’ customers who have inadvertently made a typographical error when trying to visit LONGS’ website.

- By having performed a search through Mark Monitor on March 8, 2005, of domain names registered in the name of Respondent, Complainant found at least 1,209 domain names under his name, some of which appear to be confusingly similar with known trademarks.

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

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

Respondent was required to 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 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).

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.longdrugstores.com" website of the Respondent. The address did not lead to an active website.

The Panel has considered the allegation that the Complainant has made that the Domain Name is virtually identical or confusingly similar to the registered LONGS trademarks. Likewise, the Panel reviewed the allegation and evidence claiming that Complainant has rights upon the Marks. On the other hand, the Panel could not analyze any arguments from Respondent contesting to the forgoing, due to the fact that it defaulted.

The Panel has made its own comparison of the Domain Name vis-a-vis the Complainant’s Marks, and finds that the Domain Name is virtually identical or confusingly similar to the trademark LONGS, which is incorporated in the said Domain Name.

Respondent has employed a misspelled version of the LONGS marks, in particular the mark LONGS DRUGS, by eliminating the letter "s" from the word "Longs", turning the word "Drugs" into singular, and adding the term "Stores".

The LONGS marks are strong due to their inherent capability to distinguish drug store and related services. The copying or imitation of a such mark leads to presumption of confusion. UDRP 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.

The Panel concludes that the Domain Name is confusingly similar to the LONGS marks and to the domain name pertaining to Complainant. Accordingly, the Panel finds that Complainant has met the burden of confusing similarity as required by the Policy.

The Panel has considered the allegation of the Complainant as to the lack of rights or legitimate interests of the Respondent in respect of the Domain Name. In particular, the Panel has noted the argument that the Respondent lacks of any trademark or other rights in the Domain Name. The Panel would again state that Respondent did not bring any defensive statement or arguments against the Complaint.

In the present default proceeding there is no contention on record, made by the Respondent, or that anyhow 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 Name. Nothing can be evidenced reasonably 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 Name, Respondent has merely used it in a deliberate attempt to exploit users’ possible typographical mistakes when seeking Complainant’s website.

As it has been discussed above, there is nothing on record indicating that the Domain Name is 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 Complainant’s evidence, the Domain Name at issue has only been used for the purpose of attracting Internet users to its website, for commercial gain, by creating a likelihood of confusion with the LONGS marks, as to the source, sponsorship, affiliation or endorsement of the products and services advertised on Respondent’s website. However, as it was mentioned earlier, from the research that the Panel has made of Respondent’s website, the Domain Name does not currently point at any website.

This Panel gives particular weight to the fact that Respondent defaulted. It can be inferred that by defaulting Respondent showed nothing else but a lack of interest in the Domain Name. And in the absence of a response, it is difficult to conclude whether Respondent has legitimate interests in the Domain Name. The Panel understands the difficulty in proving negative facts. For that reason, it suffices that the Complainant has made a prima facie case.

Once the Complainant made a prima facie case, it is incumbent on Respondent to contribute to the fact-finding and if in default, the Complainant succeeds.

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

The Panel finds that Respondent was aware of the domain name 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 be unlikely that Respondent would have registered the Domain Name without having any knowledge of the foregoing. First of all, it adopted a variation of the domain name <longs.com> as Complainant had registered it. Therefore, Respondent would necessarily have had to make a search on the registries and perhaps Complainant itself.

Complainant argues that Respondent registered the Domain Name for the purpose of attracting Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s Marks as to the source, sponsorship, affiliation or endorsement of the products and services advertised on Respondent’s website. Complainant has shown that at the time the Complaint was filed, the Domain Name <longdrugstores.com> was leading users to a website gathering search data from Trafficz.com and/or Sek2.com and displaying links from various pharmaceutical and drug related companies.

Paragraph 4(a)(iii) of the Policy requires that, in order for a registered domain name to be transferred to a complainant, it 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 a domain name has 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 from registering a domain name, 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, closest attention should be given to the paragraph 4(b)(iv) of the Policy.

Complainant has argued that Respondent has fallen squarely into paragraph 4(b)(iv) of the Policy. It has also stated that Respondent has made no effort to commence use of the Domain Name in connection with a bona fide offering of goods and services. Accordingly, efforts to misleadingly divert customers with the intent of commercial gain is not evidence of a bona fide use of the Domain Name, but rather evidence of bad faith.

The Panel finds that Respondent has registered the Domain Name with the sole purpose of attracting Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s Marks as to the source, sponsorship, affiliation or endorsement of the products and services advertised on Respondent’s website.

The Complainant has proven that the Internet users seeking Complainant were routed by Respondent to a website operated directly or indirectly by this latter. The fact that Respondent has attracted consumers to a website by linking or otherwise redirecting the Domain Name, was not seemingly done for making a profit. It appears that Respondent stopped redirecting the Domain Name and that Domain Name is now inactive. The Panel finds that this is a further indication of bad faith. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and Kyobo Life Insurance Co., Ltd. v. Max, WIPO Case No. D2003-0008, inaction can be factor of registration and use of domain names in bad faith, "being used in bad faith is not limited to positive action; inaction is within the concept".

The Panel concludes that, the Domain Name was registered and used in bad faith as per paragraph 4(a)(iii) of the Policy.

The Panel finds that the Domain Name <longdrugstores.com> is identical or confusingly similar to the trademarks of the Complainant, and that the Respondent has no rights to or legitimate interests in said Domain Name. The Panel has further found that the Domain Name has been registered in bad faith, and that it has been used in bad faith.

Therefore, pursuant to Paragraphs 4(a)(i), (ii) and (iii) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <longdrugstores.com> be transferred to the Complainant.

Luis C. Schmidt
Sole Panelist

Dated: June 23, 2005