DECISION

Fred & Lucy, Inc. v Pharmacy Direct, Michael Rowen

Claim Number: FA0105000097196

PARTIES

Complainant is Fred & Lucy, Inc., Rancho Cucamonga, CA, USA (“Complainant”) represented by Gary J. Nelson, of Christie, Parker & Hale LLP.  Respondent is Michael Rowen Pharmacy Direct, Hillsborough, NC, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <rx2go.net>, <rx2go.org>, registered with Register.com, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

Hon. James A. Carmody,  as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on May 14, 2001; the Forum received a hard copy of the Complaint on May 15, 2001.

On May 14, 2001, Register.com, Inc. confirmed by e-mail to the Forum that the domain names <rx2go.net>, <rx2go.org> are registered with Register.com, Inc. and that the Respondent is the current registrant of the name.  Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On May 15, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 4, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@rx2go.net, postmaster@rx2go.org by e-mail.

A timely response was received and determined to be complete on June 4, 2001.

On June 12, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Hon. James A. Carmody as Panelist.

RELIEF SOUGHT

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant alleges that it is the owner of the registered trademark “RX2GO” and that the domain names at issue, <rx2go.net> and <rx2go.org>, are identical or confusingly similar to its trademark.  Further, Complainant claims that Respondent has no rights or legitimate interests in respect of the domain names at issue and is not generally known by the name “RX2GO.”  Finally, Complainant alleges that Respondent registered and is using the domain names at issue in bad faith by intentionally attracting, for commercial gain, Internet users to a website not associated with the Complainant.

B. Respondent

Respondent denies that the domain names at issue are identical or confusingly similar to Complainant’s registered mark because Respondent does not provide pharmacy services and there is thus no likelihood of confusion. Also, Respondent suggests that Complainant has failed to prove ownership of the registered trademark. Respondent claims a legitimate interest in the domain names at issue because it registered them without knowledge of Complainant’s registered trademark, because it has sold nutritional and other products using the domains and because Respondent has spent a large (but unspecified) amount of money in advertising the domain names at issue.  Finally, Respondent denies that its registration and use of the domain names at issue has been in bad faith because of its ignorance of Complainant’s registered mark, and insists that its use of redirection of web surfers to other of Respondent’s websites from sites associated with the domain names at issue is a legitimate Internet practice.  Respondent also advises that it has applied for registration of  “RX2GO” as a trademark for electronic retailing services the month prior  to the commencement of this proceeding.

C. Additional Submissions

Complainant’s additional submission points out that Respondent sells pharmacy related goods and services, even if it is not a pharmacy, that Respondent’s pending trademark registration is merely in reaction to a notification of the filing of the Complaint in this proceeding and that Complainant’s trademark registration is prima facie evidence of ownership of the mark.

Respondent’s additional submission argues that it is not in the pharmacy services business, such as Complainant.  Thus, says Respondent, there can be no confusion between the domain names at issue and Complainant’s registered trademark.  Further Respondent points out that its own May 2001 application to register “RX2GO” is for “certain non-pharmaceutical goods.”  Although Respondent (without support) claims to be widely known on the Internet, it suggests that Complainant is merely a small, one store, operation in Rancho Cucamonga, California, “…so actual confusion is impossible.”

FINDINGS

Complainant is the owner of United States Trademark Registration No. 2,081,612 and began using its “RX2GO” trademark at least as early as June of 1996 (more than three years earlier than Respondent’s registration of the domain names at issue and first claimed use of the domains).  Complainant has been using the mark continuously ever since its initial adoption.   Complainant has also established common law trademark rights in its “RX2GO” mark since June of 1996, or earlier.  Complainant uses its “RX2GO” trademark in association with the operation of a pharmacy and the offering of pharmacy related services.

Respondent registered the domain names at issue on December 18, 1999, after Complainant’s trademark registration had issued on July 22, 1997, and well after Complainant’s rights in its RX2GO trademark had been firmly established.

When an Internet user attempts to access the web sites associated with the domain names at issue, the Internet user is taken to the website associated with the <rx2go.com> domain name, a web site not associated with Complainant. Once at this web site, Internet users can purchase products directly from this website, or they can click through to a variety of other web sites owned or controlled by Respondent.  Such automatic re-targeting of these domain names to Respondent controlled web sites is designed to create a likelihood of confusion between itself and Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites, and any corresponding goods/services offered by Complainant.

Respondent does not claim to have ever been commonly known by the name “RX2GO”.

Although Respondent claims ignorance of Complainant’s trademark registration at the time of registration of the domain names at issue, such ignorance is no excuse and constructive knowledge is presumed.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “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.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant registered the RX2GO mark with the USPTO on July 22, 1997, and used the mark in commerce as early as June 6, 1996.  The domain names at issue are identical to Complainant’s registered trademark.  See Sulzer Vascutek Ltd. v. Adam Power/Mantis Surgical Ltd., AF-0271 (eResolution Sept. 28, 2000) (finding that the domain names <vasutek.com>, <vasutek.net>, and <vasutek.org> are identical to the Complainant's trademark VASUTEK).

Respondent’s trademark application filed on May 24, 2001 does not circumvent Complainant’s rights in the mark.  See Banco Mercantil del Norte, S.A., v. Servicios de Comunicación En Linea, D2000-1215 (WIPO Nov. 23, 2000) (finding that Complainant has rights in the mark because of the Complainant’s first use of the mark where Respondent filed for a trademark registration of the same mark but under a different class).

Respondent’s domain names are so confusingly similar to Complainant’s mark that a reasonable Internet user would assume that the domain names are somehow affiliated with Complainant.  See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s web site, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).

I find that Paragraph 4(a)(i) of the Policy has been satisfied by Complainant.

Rights or Legitimate Interests

Respondent has not used the domain names at issue in connection with a bona fide offering of goods under Policy ¶ 4(c)(i), because Respondent is causing confusion as to the source of the goods by using domain names identical to Complainant’s registered trademark.  See MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services); see also The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that Respondent’s use of the disputed domain names is confusingly similar to Complainant’s mark.  Respondent’s use of the domain names to sell competing goods was an illegitimate use and not a bona fide offering of goods).

Respondent’s use is not a legitimate noncommercial or fair use within Policy ¶ 4(c)(iii).  See Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from the Complainant's site to a competing website).

Respondent is not commonly known by the domain names, Complainant established prior rights in the mark, and Respondent is not a licensee of Complainant.  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

I find that Paragraph 4(a)(ii) of the Policy has been satisfied by Complainant.

Registration and Use in Bad Faith

Respondent is using its RX2GO mark to intentionally attract, for commercial gain, Internet users to a website location not associated with Complainant.  See Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to website that competes with Complainant’s business).

Respondent’s use of a Complainant’s  trademark pharmaceutical business name in the  domain names at issue, for sales in the pharmaceutical field or a closely related field,  for no particular good reason, supports an inference of a bad faith attempt to use the name to harass or exploit the rights of the legitimate owner of the trademark.  See America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that ICQ mark is so obviously connected with Complainant and its products that the use of the domain names by Respondent, who has no connection with Complainant, suggests opportunistic bad faith).

I find that Paragraph 4(a)(iii) of the Policy has been satisfied by Complainant.

DECISION

For the reasons articulated above, this Panel finds for the Complainant and directs that the domain names at issue, <rx2go.net> and <rx2go.org>, be transferred from Respondent to Complainant.

Hon. James A. Carmody, Panelist

Dated: June 21, 2001

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