WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

London Drugs Limited v. Moniker Privacy Services / Janice Liburd

Case No. D2011-0464

1. The Parties

Complainant is London Drugs Limited of Richmond, British Columbia, Canada represented by Bull, Housser & Tupper LLP, Canada.

Respondents are Moniker Privacy Services and Janice Liburd, of Pompano Beach, Florida, United States of America and Panama, Panama, respectively.

2. The Domain Name and Registrar

The disputed domain name <londonsdrugs.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2011. On March 11, 2011, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On March 11, 2011, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 14, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 14, 2011.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on March 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 4, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 5, 2011.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on April 14, 2011. 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

Complainant is the owner, amongst many listed others, of the following trademark registrations:

5. Parties’ Contentions

A. Complainant

Complainant argued the following:

That Complainant is a leading Canadian drugstore and retailer of general merchandise, with an average of three-quarter of a million customer transactions that take place at London Drugs’ retail locations each week. London drugs provide general merchandise including clothing, footwear, fashion accessories, cosmetics, health and beauty products, electronics, computers, photographic services and products, books and magazines and optical products, among many others products and services.

1. Identical or Confusingly Similar

• That Complainant owns and has registered the domain names <londondrugs.com> and <londondrugs.ca>, and maintains an active website at these domain names on which it advertises its general department store services.

• That Complainant opened its first store in Vancouver, British Colombia, in or about 1946. Today there are 73 locations in Canada.

• That Complainant has used its trademarks in association with drugstore and general merchandising retail store services and that it has sold prescription and non-prescription drugs, since at least as early as 1946.

• That the disputed domain name <londonsdrugs.com> is identical or confusingly similar to Complainant’s mark LONDON DRUGS.

• That the Complainant owns and has applied for approximately 78 trademarks for the LONDON DRUGS brand in Canada, the United States and other countries.

• That as a result of Complainant’s extensive efforts aimed at developing and marketing its products and services under the LONDON DRUGS mark, it has become well-known and famous among members of the consuming public.

• That the disputed domain name <londonsdrugs.com> is confusingly similar to the London Drugs mark in which the Complainant has exclusive rights.

• That the disputed domain name <londonsdrugs.com> is confusingly similar to Complainant’s LONDON DRUGS trademarks, as it incorporates Complainant’s famous mark LONDON DRUGS in its entirety and only deviates with the addition of the letter “s” between the words “London” and “drugs”.

• That Respondent has intentionally introduced a typographical error into the Complainant’s famous mark LONDON DRUGS.

2. Rights or Legitimate Interests

• That Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name <londonsdrugs.com>.

• That Complainant’s rights and legitimate interests in the London Drugs trademarks are well founded, and that Respondent’s activities are intended to circumvent those rights and interests of Complainant in the LONDON DRUGS brand.

• That Complainant first became aware of the registration of the disputed domain name on December 21, 2010 when its counsel received a watching service report conducted by Thomson Reuters, alerting it of the new registration for the disputed domain name.

• That Respondent, as an individual, corporation, or other business organization, is not and has never been commonly known by the disputed domain name <londonsdrugs.com> in the brief period between the registration and transfer of the disputed domain name (December 5, 2010) and the date of this Complaint (March 11, 2011).

• That Respondent did not and could not have built a reputation in the name LONDON DRUGS on its own efforts for its online business during that brief period.

• That Respondent has a deliberate intent for commercial gain by knowingly misleading consumers to believe that Respondent is associated with the legitimate LONDON DRUGS brand.

• That the disputed domain name resolves to a website which provides several links to other websites related to online pharmacies, computer and electronic products, beauty and cosmetics products, clothing, office supplies, home insurance, life insurance, toys, among many others.

• That when Internet users browse through Respondent’s website and click on the sponsored links, Respondent generates revenue from each click that exposes the Internet users to the advertisements on the Sponsored Links. This is called pay-per-click advertising, a form of affiliate marketing in which a host website is financially rewarded by sponsoring companies of advertisements in exchange for providing purchase opportunities for the goods and services offered by companies associated with the sponsored links.

• That while pay-per-click advertising is a legitimate form of doing business online, Respondent’s deliberate introduction of typographical error in the disputed domain name is in and of itself infringement on the well-known London Drugs trademarks held by Complainant (and citesDow Jones & Company, Inc. and Dow Jones, L.P. v. Powerclick, Inc., WIPO Case No. D2000-1259).

• That it is apparent from the links themselves that Respondent is directing traffic to a third-party website that sells competing wares and services to London Drugs.

• That Respondent is intentionally diverting business away from Complainant by “piggy-backing” on the reputation of the well-established LONDON DRUGS trademarks.

• That Respondent’s unauthorized capitalization of Complainant’s mark LONDON DRUGS does not create rights to and legitimate interests in the disputed domain name.

3. Registered and Used in Bad Faith

• That Respondent is engaged in “typosquatting”, a practice that has been condemned as inherently parasitic and of itself evidence of bad faith: National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball, v. Zuccarini, WIPO Case No. 2002-1011.

• That Respondent’s use of the disputed domain name diverts potential customers of Complainant either to legitimate competitors or illegitimate providers of counterfeit drugs.

• That all London Drugs pharmacies are legitimate, licensed pharmacies with a reputation for high standards of quality assurance, professionalism and customer service.

• That counterfeit drugs are endemic on the Internet, and that said drugs may contain inappropriate quantities of active ingredients, may have improper absorption and elimination profiles in the body, may contain ingredients that are not on the label (which may not be harmful), and are often sold with inaccurate, incorrect, or fake packaging and labeling. Counterfeit drugs are often produced and sold on the Internet with the intent to deceptively represent their origin, authenticity or effectiveness.

• That the unauthorized use by Respondent of Complainant’s famous mark in association with the sale of drugs that may be counterfeit drugs is detrimental to Complainant’s reputation and good will.

• That Respondent’s unauthorized use of Complainant’s mark is contemplated by paragraph 4(b)(iv) of the Policy, as it attracts, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s famous mark.

• That Complainant and its trademarks are highly distinctive in Canada, enjoying a considerable reputation with regard to drugstore and general merchandise products and services.

• That Respondent is trading on the goodwill of Complainant and is free-riding on the recognition that the Complainant’s famous mark enjoys in the marketplace.

• That at the time of registering the disputed domain name, Respondent must have known about the notoriety of Complainant’s trademarks and the success of the LONDON DRUGS brand in the pharmaceutical and retail business. This is evidenced by the similarities in the goods and services offered by Respondent on Respondent’s website to those offered by London Drugs.

• That Respondent’s actual knowledge of Complainant’s mark is evidenced because certain inferences may be drawn in terms of likely knowledge of Respondent from, inter alia, the fame of Complainant’s mark (and cites Ets Leobert, SARL v. Jeonggon Seo, WIPO Case No. D2009-0004).

• That Respondent does not have Complainant’s consent or a license from Complainant to use a domain name that is confusingly similar to the LONDON DRUGS brand.

• That Respondent is not an authorized agent or representative of Complainant and does not have the authority to use Complainant’s LONDON DRUGS mark in connection with the sale of drug products.

• That Respondent is using the LONDON DRUGS brand intentionally to attract, for commercial gain, online customers to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship and/or affiliation of Respondent’s website and products.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

In accordance with the Policy, paragraph 4(a), Complainant must prove that:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name, and

(iii) The disputed domain name has been registered and is being used in bad faith.

In the administrative proceeding, Complainant must prove that each of these elements are present.

As Respondent has failed to submit a Response to Complainant’s contentions, the Panel may choose to accept as true all of the reasonable allegations of the Complaint, Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487.

A. Identical or Confusingly Similar

Complainant is the holder of numerous registered trademarks for LONDON DRUGS. According to the affirmations and evidence submitted by Complainant, which have not been contested by Respondent, the trademark LONDON DRUGS has been in use since 1946 in Canada.

The disputed domain name <londonsdrugs.com> is a misspelling or variation of the trademark LONDON DRUGS, which is entirely incorporated into the disputed domain name, plus the addition of a letter “s”, between “london” and “drugs”. This variation falls within the definition of typosquatting, which is a practice that generates confusion among Internet users who are misled when exposed to the mistakenly typed domain name. (See Expedia, Inc. v. Alvaro Collazo, WIPO Case No. D2003-0716, citing in turn VeriSign, Inc. v. Onlinemalls, WIPO Case No. D2000-1446; Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035; Playboy Enterprises International, Inc. v. SAND WebNames - For Sale, WIPO Case No. D2001-0094; NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768; Telstra Corporation Ltd v. Warren Bolton Consulting Pty Ltd, WIPO Case No. D2000-1293).

The disputed domain name is inherently confusingly similar to the trademark LONDON DRUGS, graphically and phonetically, because it consists of the trademark LONDON DRUGS per se, with the addition of a letter “s”, between “london” and “drugs”.

The addition of the generic top-level domain “.com” is immaterial for purposes of the Policy. To carry into effect the confusing similarity analysis, a panel usually does not take into account the generic top-level domain (gTLD) “.com”, because such gTLD has no legal significance. (See Diageo Brands B.V., Diageo North America, Inc., and United Distillers Manufacturing, Inc. v. iVodka.com a.k.a. Alec Bargman, WIPO Case No. D2004-0627).

Therefore this Panel finds that the disputed domain name <londonsdrugs.com> is confusingly similar to Complainant’s trademark LONDON DRUGS. The first requirement of the Policy has been fulfilled.

B. Rights or Legitimate Interests

The following are examples of circumstances where a respondent may have rights or legitimate interests in a disputed domain name:

(i) before any notice to you 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 (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. (Policy, paragraph 4(c)).

Respondent has not submitted evidence to show the existence of use of the disputed domain name in connection with a bona fide offering of goods or services, or that it has been commonly known as <londonsdrugs.com>.

The Panel finds Complainant has argued and proven that the disputed domain name redirects users to a website with links offering drugs and other products. Respondent’s implementation of this pay-per-click advertising model is in the present circumstances (and in view also of the Panel’s finding below of bad faith) not legitimate. It is commercial. It cannot be deemed to be fair use. It is intended for commercial gain to misleadingly divert consumers. See The Paragon Gifts Holdings, Inc. v. Click Cons. Ltd, WIPO Case No. 2007-0304; see also Dow Jones & Company, Inc. and Dow Jones, L.P.v. Powerclick, Inc., WIPO Case No. D2000-1259.

The Panel finds no rights or legitimate interests on the side of Respondent. The second element of the Policy has been met.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in 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.”

Complainant’s Complaint and evidence show that Respondent has intentionally attempted to attract, for commercial gain, Internet users to a web site to which the disputed domain name <londonsdrugs.com> resolves, which features pay-per-click advertisements of drugs and other products which Complainant commercializes. The diversion is created by a domain name that entirely incorporates Complainant’s trademark, plus the letter “s”. The fact that the disputed domain name is a typosquatting of Complainant’s trademark LONDON DRUGS, that said mark has been used in commerce since 1946, that it is strongly publicized, that the website to which the disputed domain name resolves contains links to products that compete with those of Complainant, constitute bad faith under Paragraph 4(b)(iv) of the Policy. See Beckman Coulter, Inc. v. Suzan Wilson, WIPO Case No. D2010-1163; MasterCard International Incorporated v. Dhe Jonathan Firm, WIPO Case No. D2007-0831).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <londonsdrugs.com> be transferred to Complainant.

Kiyoshi Tsuru
Sole Panelist
Dated: April 29, 2011