The Complainant is Top Rx, Inc., Barlett, Tennessee, United States of America, represented by Evans & Petree, P.C., United States of America.
The Respondent is Idesigns, Nahariya, Israel.
2. The Domain Name and Registrar
The disputed domain name <top-rx.net> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2006. On February 15, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On February 16, 2006, Go Daddy Software transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 22, 2006. 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 February 27, 2006. In accordance with the Rules, Paragraph 5(a), the due date for Response was March 19, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2006.
The Center appointed Christophe Imhoos as the sole panelist in this matter on March 23, 2006. 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.
On April 6, 2006, in accordance with Rules, Paragraph 12, the Panel, by way
of Procedural Order No. 1, ordered the Complainant (i) to provide evidence of
the registration and ownership of the trademark rights upon which it relied
as it had not submitted any evidence of the trademark registrations and ownership
alleged in the Complaint and (ii) to provide evidence in support of its contention
that, as the owner of the registered mark TOP RX, it has the exclusive right
to the use of the name in connection with pharmaceutical sales. The Complainant
filed its additional submission on time and the decision is rendered within
the extended time limit.
4. Factual Background
The Complainant claims to be the owner of the trademark TOP RX, registered as Registration Number 2812886 with the United States Patent and Trademark Office on February 10, 2004, for wholesale distributorship featuring pharmaceuticals in International Class 35 and first in use on May 11, 1988.
In its response to Procedural Order No. 1, the Complainant
submitted a copy of the registration of the mark TOP RX as issued by the United
States Patent and Trademark Office from which it flows that the mark has been
in use since May 11, 1988. The registration was issued on February 10, 2004,
as Reg. No. 2,812,886; the initial registration is for ten years from the date
of issuance and Top Rx, Inc. is shown as the registrant of the mark. Top Rx,
Inc. continues to own the mark to this date. The said mark is registered for
wholesale distributorship featuring pharmaceuticals in class 35.
5. Parties’ Contentions
A. Complainant
The Complainant’s arguments are the following.
(i) The domain name is identical or confusingly similar to a trademark, as described above, in which it has rights.
The Respondent is using the domain name <top-rx.net> to advertise the sale of pharmaceutical products over the internet (Annex 3 to the Complaint).
(ii) The Respondent has no rights or legitimate interests with regard to the domain name.
As the owner of the registered mark TOP RX, the Complainant has the exclusive right to the use of the name in connection with pharmaceutical sales. The Respondent’s use of the domain name in dispute allows it to traffic off the good name of the Complainant and is not for a legitimate business purpose.
(iii) The domain name was registered and is being used in bad faith.
The Respondent has used the domain name at issue in connection with “spam” activities, including e-mailings to customers of the Complainant; such emails have caused confusion in the market place and resulted in complaints from its customers (Annexes 4 and 5 to the Complaint).
In its response to Procedural Order No. 1, the Complainant submitted that allowing others to “pass off” products under a confusingly similar name violates society’s standards of fair play and ethical conduct. The fact that the Respondent has used its domain name to conduct spam activities, which activities have caused the Complainant to receive complaints from its customers who were confused by the closeness between the names of the Complainant and of the Respondent is inherently unfair competition and should not be permitted.
The Complainant further submitted that the trend of the law is to enforce increasingly higher standards of commercial morality in trade. The Complainant has used its mark in trade for over seventeen years and good will is associated with its mark. To allow the Respondent to use its current domain name would create and has created confusion in the market-place and will cause dilution in the value of Complainant’s good will.
The Complainant finally submitted that it has the exclusive right to maintain the good will associated with its mark in connection with the sale of pharmaceutical products.
B. Respondent
The Respondent did not submit a response to the Complaint.
By email of March 21, 2006, the Respondent’s representative advised as follows :
“I do not have much to add, I’m just top-rx’s webmaster
I represent a pharmacy, and we chose this domain
because it fits our business type, we do not know toprx and do not wish to know
them.”
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Administrative Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:
(i) the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the Respondent’s domain name has been registered and is being used in bad faith.
The Complainant must prove in the administrative proceeding that each of the aforesaid three elements is present so as to warrant relief, according to Paragraph 4(a) of the Policy.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to Paragraph 15(a) of said Rules.
In accordance with Paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly Similar
The Complainant has established its rights in the trademark TOP RX with registration for such a name in the United States.
The Complainant’s trademark TOP RX is, obviously, confusingly similar to the domain name <top-rx.net>.
For the above reasons, the Panel finds that the disputed domain is confusingly similar to Complainant’s trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the domain name in dispute. Those circumstances are described as follows:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or 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.”
The Respondent, in not responding to the Complaint, has failed to invoke any
of the circumstances, which could demonstrate, pursuant to Paragraph 4(c) of
the Policy, any rights to and/or legitimate interests in the domain name in
dispute. This entitles the Panel to draw any such inferences from such default
as it considers appropriate pursuant to Paragraph 14(b) of the Rules (See e.g.
Talk City, Inc. v. Michael Robertson, WIPO
Case No. D2000-0009 or Isabelle Adjani .v. Second Orbit Communications,
Inc., WIPO Case No. D2000-0867).
Absent evidence to the contrary, the TOP RX trademark has been known for a significant period of time and the Complainant has not granted any license or otherwise permitting the Respondent to use such a trademark or to apply for any domain name incorporating the said trademark. Moreover, the Respondent is not known by the domain name at stake.
Under these circumstances and absent evidence to the contrary, the Panel is unable to find any evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive
list of circumstances that evidence registration and use of a domain name in
bad faith. Any one of the following behaviors is sufficient to support a finding
of bad faith:
“(i) circumstances indicating that you 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 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 have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(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.”
As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration or use of the domain name in issue.
Nevertheless, the Panel still has the responsibility of determining which of
the Complainant’s assertions are established as facts, and whether the
conclusions asserted by the Complainant can be drawn from the established facts
(see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO
Case No. D2000-0944).
The Complainant has submitted conclusive evidence (Annex 3 to the Complaint) that the Respondent’s behavior, typically, is the one described in Paragraph 4(b)(iv) of the Policy referred to above.
Moreover, the complaints of the customers of the Complainant as to the Respondent’s spam activity (Annexes 4 and 5 to the Complaint) can also be characterized as bad faith within the general meaning of Paragraph 4(b).
Bad faith registration and use are therefore established.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(iv) of the Policy and 15 of the Rules, the Panel orders that <top-rx.net> be cancelled.
Christophe Imhoos
Sole Panelist
Date: April 21, 2006
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