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Longs Drug Stores California, Inc. v. jg aka Josh Green [2005] GENDND 754 (29 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Longs Drug Stores California, Inc. v. jg aka Josh Green

Case No. D2005-0286

1. The Parties

The Complainant is Longs Drug Stores California, Inc., Walnut Creek, California, United States of America, represented by Thelen Reid & Priest LLP, San Francisco, California, United States of America.

The Respondent is jg aka Josh Green, New York, New York, United States of America. As indicated below, in some records Respondent is named only with the lower-case initials “jg.”

2. The Domain Name and Registrar

The disputed domain name <longs-drug.com> (“Domain Name”) was registered with eNom inc, using registration services provided by RegisterFly.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2005. On March 22, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On the same date, eNom transmitted by email to the Center a partial verification response confirming that the language of the proceedings is English and that the domain name would remain under Registrar Lock throughout the proceeding. In addition to eNom’s partial response, the Center made a WHOIS printout, which showed that the disputed Domain Name was registered with eNom, and that Respondent jg was the current registrant of the disputed Domain Name. Listed as the administrative and technical contact at the same address as jg is Josh Green. .

The Center verified that 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 March 31, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 20, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 29, 2005.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on May 12, 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

The following facts are established by Complainant’s uncontested Declaration of counsel and supporting documents, as well as by WHOIS queries and visits to the relevant websites that were conducted by Complainant, the Center, and the Panel at various times in connection with this proceeding.

Complainant Longs Drug Stores California Inc. is a publicly traded company operating a chain of over 400 drug stores with some 19,000 employees. It has used the LONGS DRUGS mark in the United States since 1938, filing a pending trademark application for that mark with the United States Patent and Trademark Office (USPTO) in November 2002. Complainant has used the LONGS mark (without additional words) since 1957. It holds several US and Japanese registered trademarks for LONGS, LONGS PHARMACY, and the name “LONGS” combined with other relevant words and phrases. The earliest of these registered marks was issued in April 1981. Complainant has operated a website advertising pharmaceutical and other products at <longs.com> since 1994.

After learning of Respondent’s use of <longs-drug.com > and a similar domain name, Complainant sent a cease-and-desist letter by email and courier service to Respondent’s registered contact addresses in July 2004. Respondent made no reply to the email, and the letter sent by courier was returned as “undeliverable.”

Since Respondent did not reply to Complainant or the Center, all that is known of Respondent’s business is what appears online. A WHOIS query shows that the Domain Name was created on October 3, 2003, and registered to Josh Green at an address in New York City. The Registrant Contact is given as “jg” at the same New York address provided for the Registrant and for the Administrative Contact. The latter is shown as “josh green.”

At the time the Complaint was filed, the Domain Name was not used for a website operated by Respondent. The URL instead redirected visitors to “www.prescriptions.org”, a website selling a variety of popular prescription drugs to be delivered to the visitor from a “convenient online pharmacy” after “approval by our board-certified & U.S. Licensed physicians.” According to the uncontested allegations of Complainant, Prescriptions.org at that time compensated “affiliates” who redirected Internet users to its site.

At the time of this Decision, the Domain Name resolved to “www.information.com”, which displays links to websites operated by a variety of merchants and service or content providers. The Panel notes that Respondent’s registration services provider, RegisterFly.com, advertises “paid parking services” (a form of what is often termed “DNS parking” or “domain parking”), allowing registrants to redirect otherwise unused domain names to a commercial portal or a site displaying advertising, in return for a percentage of the compensation paid by those website operators or advertisers.

Respondent also uses the initials “jg.” This is given as the Registrant Contact for the Domain Name at the same New York address listed for Registrant and for the Administrative Contact. The latter is shown as “josh green .”

Exhibit E to the Complaint is a printout of a MarkMonitor “REVERSEwhois” search of Respondent’s e-mail address conducted on March 8, 2005. It shows that this email address was listed in WHOIS databases in connection with 1,552 domain names. The registrant for these names is in almost every case given as “jg” or “josh green.” The WHOIS data on the Registrant and Administrative Contacts for a sampling of those domain names reveals the same postal address in New York, as well as the same email address, given for the Domain Name at issue here.

Nearly all of the domain names registered by “josh green” or “jg” refer to prescription medicines, health, diet, weight loss, or hair restoration. Often they include trademarked brand names for prescription drugs, typically combined with other words or with slight misspellings, such as <viagrasubstitute.com> and <viagraa.com>.

At the time the Complaint was filed, a sampling of these domain names redirected Internet users to “www.prescriptions.org”, as did the Domain Name. At the time of this Decision, the sampled domain names resolved, as did the Domain Name, to “www.information.com”.

Respondent has not replied to communications from the Center concerning this proceeding.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the Domain Name is confusingly similar to its well-known LONGS and LONGS DRUGS marks, and that the Respondent has no rights or legitimate interests in using the marks in the Domain Name.

The Complainant concludes that the Respondent’s registration and use of the Domain Name was in bad faith, given the apparent purpose of diverting traffic from the Complainant for commercial gain and the Respondent’s pattern of using domain names, including those incorporating or approximating well-known company names and trademarks, to redirect traffic to commercial websites operated by third parties.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the Domain Name, the Complainant must demonstrate each of the following:

- The Domain Name is identical or confusingly similar to the Complainant’s mark; and

- The Respondent has no rights or legitimate interests in the Domain Name; and

- The Domain Name has been registered and is being used in bad faith.

It is very common in domain name proceedings that either (a) the respondent does not make a response or (b) communications to the respondent’s registered contact addresses are undeliverable. This does not mean that the complaint is automatically granted. Nor does it mean that the respondent is allowed to evade the Policy simply by failing to maintain accurate contact information with its registrar.

In cases such as this one where the Respondent fails to make a submission, the Panel must still satisfy itself that the Complainant has met its overall burden of proof under paragraph 4 of the Policy. This determination is based on “the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable” (Rules, paragraph 15(a)). The Panel is empowered to “determine the admissibility, relevance, materiality and weight of the evidence” (Rules, paragraph 10(c)). Therefore, the uncontested facts – supported by credible and sufficient evidence – must establish a prima facie case for the probability of confusion, lack of legitimate interest, and bad faith. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (August 21, 2003) <croatiaairlines.com>.

Once it has met its burden of going forward with evidence of a prima facie case, Complainant is not obliged to prove a negative and attempt to hypothesize – and then refute – every possible legitimate interest or good-faith purpose that the Respondent might have advanced to explain its registering and using a Domain Name that is identical or confusingly similar to a protected mark. In fact, the Panel is entitled to draw inferences about the Respondent’s lack of such justification from its failure to respond. Paragraph 5(a) of the Rules states that Respondent “shall submit a response” within twenty days after the commencement of the administrative proceeding.” Where a party fails to comply with a provision of the Rules, as is the case here, “the Panel shall draw such inferences therefrom as it considers appropriate” (Rules, paragraph 14(b)).

Such adverse inferences would be fair even if notice did not reach the Respondent by either postal or electronic channels. Registration agreements in the .com gTLD (including the one currently posted for Respondent’s registration services provider) require registrants to provide electronic and postal address information and keep it current, complete, and accurate. A key reason for this requirement is precisely to ensure that allegations of bad-faith registration can be resolved.

Under current ICANN policy, registrants are periodically reminded of this obligation. The Whois Data Reminder Policy (WDRP), which is published online at “www.icann.org/registrars/wdrp.html”, was adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on March 27, 2003, as a “consensus policy” that is binding on all ICANN-accredited registrars. The WDRP provides as follows:

“At least annually, a registrar must present to the registrant the current Whois information, and remind the registrant that provision of false Whois information can be grounds for cancellation of their domain name registration. Registrants must review their Whois data, and make any corrections.”

Notice of this proceeding was provided through the registered contact addresses in accordance with the Rules. The Complainant delivered the Complaint to the email address and postal address listed in the registration, as required by Rules, paragraph 2(a) and Supplemental Rules, paragraph 4. Correspondence to the postal address was returned as “undeliverable.” Emails to the Respondent from the Complainant and the Center have been transmitted to the registered email address without generating delivery failure messages. The Center discharged its responsibility under the Rules, paragraph 2(a) to employ “reasonably available means calculated to achieve actual notice to the Respondent” of the Complaint and subsequently of the Respondent’s default. The Respondent failed to make any reply to the Complaint or to the earlier cease-and-desist letter and has not otherwise attempted to answer the Complainant’s evidence or contentions.

The Panel finds that the Respondent has been given a fair opportunity to present its case, and the Panel will proceed to a decision on the Complaint based on its substantiated claims and appropriate inferences from the Respondent’s documented activities with this Domain Name and other domain names, as well as the Respondent’s failure to reply to Complainant’s allegations.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established both LONGS and LONGS DRUGS as trademarks in the United States. Both became well known in commerce as common-law marks long before registration. The LONGS mark, first used in 1957, was registered in 1981. An application to register the LONGS DRUGS mark has been pending since 2002, showing first use in 1938.

The Domain Name <longs-drug.com> incorporates the LONGS mark in full, and it is nearly identical with the LONGS DRUGS mark. The addition of a hyphen and the use of the singular rather than plural form of the word “drug” do not lessen the likelihood of confusion among Internet users seeking Complainant’s website. Inserting hyphens between words is a device commonly used to make long domain names easier for a reader to parse. And Internet users would expect the relevant term “drug” to be associated with Complainant even if they noticed the missing “s” in the name of the famous drug store chain. See, Microsoft Corporation v. Wayne Lybrand, WIPO Case No. D2005-0020 (March 18, 2005) <microsoftcustomerservice.com> (“[t]he addition of such relevant descriptive words reinforces rather than detracts from the conclusion that the Domain Name confusingly refers to the business of Complainant and would likely cause at least some customers to assume that the Domain Name is associated with Complainant”).

Indeed, as discussed further below, it is fair to conclude that the Respondent used the Domain Name, with its slight variation in spelling and punctuation from the Complainant’s marks, as a form of “typosquatting” designed to engender and profit from a likelihood of confusion with the Complainant’s mark.

The Panel finds that the Domain Name is confusingly similar to marks owned by the Complainant.

B. Rights or Legitimate Interests

As indicated by its cease-and-desist letter and the Complaint in this proceeding, the Complainant contends that it has not authorized the Respondent to use its marks in the Domain Name. The Respondent has not replied to this contention, and the Panel infers from the Respondent’s silence that it has no such authorization.

The Panel finds no evidence in the record suggesting that the Respondent otherwise has rights or legitimate interests in the Domain Name. There is no indication, for example, that the Respondent used the Domain Name in connection with a bona fide offering of goods and services or for legitimate noncommercial purposes, or that the Respondent was commonly known by the Domain Name (see Policy, paragraph 4(c)).

The Respondent’s use of slight variations in the Complainant’s marks – as in the case of other slight variations on brand names found among the 1,552 domain names registered by the Respondent – is suggestive not of legitimate purpose but of a deliberate effort to mislead Internet users for gain. The practice is often termed “typosquatting,” a form of cybersquatting involving deliberate misspelling or variant punctuation in order to create a new domain name very similar to a popular domain name or brand name that some Internet users will type by accident, or that will be returned by search engines as a close match to the requested search words.¹

The Respondent has used typosquatting to attract Internet users and then to redirect them first to a competitor’s site at “www.prescriptions.org” and then to another commercial site. The Panel finds that this is not a use of the Domain Name in connection with a bona fide offering of goods and services. Rather, it is evidence of bad-faith registration and use, as discussed below.

C. Registered and Used in Bad Faith

The Complainant’s marks (and its website at “www.longs.com”) were well established before the Respondent registered the Domain Name. The marks are associated with the sale of prescription drugs, and the Domain Name formerly resolved to a competing online retailer of prescription drugs at “www.prescriptions.org”.

Given these facts, it is not credible that the Respondent was unaware of the Complainant’s marks when registering and using the Domain Name. To the contrary, it is fair to conclude that the Respondent deliberately chose the Domain Name to attract Internet users and redirect them to a commercial site, presumably in return for compensation under Prescription.org’s “affiliate” program and later under a domain parking arrangement.

This conclusion is supported by the fact that the Respondent has registered more than 1,500 domain names, many of them variations on brand names, and yet does not appear actually to operate any online business other than redirecting Internet traffic to the commercial sites of others. It is not plausible that the Respondent engages in such activity (which entails, in the aggregate, substantial registration costs) without the prospect of some form of gain – either from compensation paid by the commercial site operators or potentially from selling the domain names.

The Panel finds that this registration and use of a deliberately misleading Domain Name is in bad faith and falls within one of the examples of bad faith given in the Policy, paragraph 4(b)(iv):

“(iv) by using the domain name, you 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 or service on your web site or location.”

The same conclusion has been reached by two other panels confronted with this Respondent’s practice of typosquatting in an effort to capitalize on the goodwill associated with well-known marks by redirecting traffic to another party’s commercial site: Hill’s Pet Nutrition, Inc. v. JG/Josh Green, WIPO Case No. D2004-0819 (November 26, 2004) <hillsperscriptiondiet.com> (ordering transfer of a domain name comprised of a trademark and relevant descriptive words, one of them misspelled) and Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (December 6, 2004) <pfizerforwoman.com> and <wwwpfizerforwomen.com> (ordering transfer of domain names including the PFIZER mark and slight variations on the pharmaceutical company’s PFIZER FOR WOMEN mark).

The Panel also notes that the Respondent’s failure to respond to a cease-and-desist letter and notice of these proceedings and the Respondent’s failure to provide or maintain accurate postal contact information with the Registrar are both more consistent with a pattern of abuse and evasion than with innocent registration and use of the Domain Name.

The Panel finds additional support for a conclusion of bad faith in the fact that the purportedly New York-based Respondent engaged in conduct that appears to be in violation of the United States Federal Anticybersquatting Consumer Protection Act. The ACPA establishes civil liability for registering or using a domain name that is identical or confusingly similar to a mark with a “bad faith intent to profit from that mark” (15 U.S.C. §1125(d) (1)(A)). The statute cites the following as a factor for a court to consider as evidence of bad faith:

“the person’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site . . . .” (15 U.S.C. §1125(d)(B)(i)(V))

The Panel concludes that there is ample evidence that the Respondent registered and used the Domain Name in bad faith.

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 name <longs-drug.com> be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist

Dated: May 29, 2005

¹ See “http://en.wikipedia.org/wiki/Typosquatting”; Ruth's Chris Steak House, Inc. v. Texas Internet, WIPO Case No. D2005-0292 (May 17, 2005) <ruthchris.com>.