DECISION

ClickPharmacy.com, Inc. v. Server Central Network a/k/a Customer Owned Domain

Claim Number:  FA0308000190512

PARTIES

Complainant is ClickPharmacy.com, Inc., Miami, FL (“Complainant”) represented by Michael C. Cesarano of Akerman Senterfitt.  Respondent is Server Central Network a/k/a Customer Owned Domain, Chicago, IL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <click-pharmacy.com>, registered with Enom, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 22, 2003; the Forum received a hard copy of the Complaint August 25, 2003.

On August 28, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <click-pharmacy.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. verified that Respondent is bound by the Enom, 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 August 28, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 17, 2003, 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@click-pharmacy.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On September 26, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain name registered by Respondent, <click-pharmacy.com>, is confusingly similar to Complainant’s CLICKPHARMACY.COM mark.

2. Respondent has no rights to or legitimate interests in the <click-pharmacy.com> domain name.

3. Respondent registered and used the <click-pharmacy.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, ClickPharmacy.com, Inc., established in this proceeding that it owns the CLICKPHARMACY.COM mark, as registered on the Prinicpal Register of the U.S. Patent and Trademark Office December 5, 2000. Under this mark, Complainant (through its agent, Kramer Laboratories) operates a website at the <clickpharmacy.com> domain name through which Internet users can order pharmaceutical products online.

Complainant has operated this business under the CLICKPHARMACY.COM mark since 1998, and its website is recognized by the National Association of Board of Pharmacy as one of twelve Verified Internet Pharmacy Practice Site (VIPPS certified website) in the United States.

Respondent, Server Central Network a/k/a Customer Owned Domain, registered the <click-pharmacy.com> domain name February 13, 2003. Respondent is not licensed or authorized to use Complainant’s CLICKPHARMACY.COM mark for any purpose. Respondent operates a website that offers pharmaceutical products at the disputed domain name.

DISCUSSION

Paragraph 15(a) of 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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical to or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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 to and/or Confusingly Similar

Complainant established in this proceeding that it has rights in the CLICKPHARMACY.COM mark through registration of the mark on the Principal Register of the U.S. Patent and Trademark Office and by use in commerce. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

The domain name registered by Respondent, <click-pharmacy.com>, is confusingly similar to Complainant’s CLICKPHARMACY.COM mark. Without the addition of the hyphen between the words CLICK and PHARMACY.COM in Complainant’s mark, the domain name would be identical to the mark.  The mere addition of a well-placed hyphen does not prevent a finding of confusing similarity under the Policy. See Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) ( “the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Easyjet Airline Co. Ltd. v. Harding, D2000-0398 (WIPO June 22, 2000) (finding it obvious that the domain name <easy-jet.net> was virtually identical to Complainant's EASYJET mark and therefore that they are confusingly similar).

Accordingly, the Panel finds that the <click-pharmacy.com> domain name is confusingly similar to Complainant’s CLICKPHARMACY.COM mark under Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Complainant established in this proceeding that it has rights to and legitimate interests in the mark contained within the domain name that Respondent registered.  Respondent uses the <click-pharmacy.com> domain name to operate an online pharmaceutical company, just as Complainant uses its CLICKPHARMACY.COM mark to operate an online pharmaceutical company at the <clickpharmacy.com> domain name. The difference between Complainant and Respondent’s use is that Complainant registered the CLICKPHARMACY.COM mark and began using the mark as early as 1998. Respondent is using Complainant’s mark, without authorization by Complainant, to compete with Complainant. Respondent’s use is not a “bona fide” offering of goods or services at the disputed domain name. Similarly, Respondent’s use is not a legitimate noncommercial or fair use of the domain name. Thus, Respondent’s activities do not fall within the ambit of Policy ¶¶ 4(c)(i) and (iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website).

As Complainant is granted the exclusive right to use the CLICKPHARMACY.COM mark in the United States for certain pharmaceutical goods and services through its registration of the mark on the Principal Register of the U.S. Patent and Trademark Office, and as Respondent has not come forward to explain how Respondent could be considered to be “commonly known by” Complaint’s mark or the <click-pharmacy.com> domain name, the Panel finds that Respondent may not avail itself of Policy ¶4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <click-pharmacy.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant alleges that Respondent registered and used the disputed domain name in bad faith. Respondent uses the disputed domain name to operate an online business that provides nearly identical services to those provided by Complainant. In providing these services, Respondent chose to identify itself with a confusingly similar variant of Complainant’s registered CLICKPHARMACY.COM mark. Respondent is thereby creating a likelihood of confusion as to sponsorship or affiliation of its website with Complainant’s <clickpharmacy.com> domain name and CLICKPHARMACY.COM mark. As Respondent is capitalizing on this likelihood of confusion for commercial gain, its activities run afoul of the provisions of Policy ¶ 4(b)(iv), and evidence bad faith registration and use of the disputed domain name. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the <saflock.com> domain name to offer goods competing with Complainant’s illustrates Respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy 4(b)(iv)); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same chat services via his website as Complainant).

The Panel thus finds that Respondent registered and used the <click-pharmacy.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.  Accordingly, it is Ordered that the <click-pharmacy.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: October 8, 2003.

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