DECISION

e-Scripts.MD, LLC v. Roy Duke

Claim Number:  FA0309000193893

PARTIES

Complainant is e-Scripts.MD, LLC, Atlanta, GA (“Complainant”) represented by Celeste McCollough, Esq. and M. Darren Traub, Esq. of Chorey, Taylor & Feil, P.C.  Respondent is Roy Duke, Larchmont, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <e-sripts-md.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com.

PANEL

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

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 11, 2003; the Forum received a hard copy of the Complaint on September 12, 2003.

On September 11, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed by e-mail to the Forum that the domain name <e-sripts-md.com> is registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.Com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.Com 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 September 16, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 6, 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@e-sripts-md.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 October 13, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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. Respondent’s <e-sripts-md.com> domain name is confusingly similar to Complainant’s E-SCRIPTS-MD mark.

2. Respondent does not have any rights or legitimate interests in the <e-sripts-md.com> domain name.

3. Respondent registered and used the <e-sripts-md.com> domain name in bad faith.

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

FINDINGS

Complainant operates its business through its principal website at the <e-scripts-md.com> domain name.  Complainant’s customers access its secure website to engage in online patient-to-physician evaluations whereby customers fill out a medical history.  Upon receipt of the patient’s medical history, Complainant forwards the medical history to a licensed physician for review and to write a prescription for the appropriate pharmaceutical product, if necessary.   

Complainant has been marketing its services nation-wide under the E-SCRIPTS.MD mark for almost four years.  For over two years, Complainant has advertised it services both directly and through over 800 affiliates worldwide.  Currently, Complainant has over 45,000 customers nation-wide and has conducted over $50,000,000.00 in sales during 2003.

Respondent is in the same business as Complainant and works for one of Complainant’s largest competitors.  On April 29, 2002, Respondent registered the <e-sripts-md.com> domain name.  When Internet users type the <e-sripts-md.com> domain name into their browser’s, they are directed to Respondent’s online pharmacy homepage.

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 draw such inferences it 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 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 and/or Confusingly Similar

Complainant has established common law rights in its E-SCRIPTS.MD mark.  Complainant has marketed its services under the E-SCRIPTS.MD mark for almost four years and has advertised its services for two years at its website.  In addition, Complainant has numerous customers and has had over $50,000,000.00 in sales in 2003.  Furthermore, Respondent has not presented any evidence to rebut Complainant’s assertions.  Thus, the Panel concludes that Complainant has established common law rights in its E-SCRIPTS.MD mark.  See Passion Group Inc. v. Usearch, Inc., AF-0250 (eResolution Aug. 10, 2000) finding that Complainant established sufficient rights by virtue of its distribution and advertising to enable it, at common law, to prevent another magazine by the same name from being passed off as that of Complainant. Thus Complainant established that it ‘has rights’ under the ICANN Policy); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) finding that Complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify Complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services.

Respondent’s <e-sripts-md.com> domain name is confusingly similar to Complainant’s E-SCRIPTS.MD mark.  Respondent merely eliminates the letter “c” and replaces the period with a hyphen.  Eliminating a letter or altering punctuation marks are common errors made by Internet users who are searching for a particular website.  Thus, the Panel finds that Respondent’s minor alterations to Complainant’s mark in the domain name at issue do not sufficiently distinguish the domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) holding “that 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 Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such generic typos do not change respondent’s infringement on a core trademark held by Complainant.

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied. 

Rights or Legitimate Interests

In this proceeding, Respondent did not submit a Response providing evidence that it has rights or legitimate interests in the mark.  Thus, the Panel accepts as true all allegations set forth in Complainant’s Complaint.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name; see also Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do; see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed.

There is no evidence before the Panel showing that Respondent is commonly known by the <e-sripts-md.com> domain name.  In considering the nonsensical nature of the terms in the domain name, it would be difficult for the Panel to infer that Respondent is commonly known by the domain name.  Consequently, the Panel finds that Respondent is not commonly known by the domain name at issue pursuant to Policy ¶ 4(c)(ii).  See 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"; see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use.

Respondent is using the <e-sripts-md.com> domain name to redirect Internet users who incorrectly spell Complainant’s mark to Respondent’s homepage.  Respondent offers services that directly compete with services offered by Complainant.  Thus, the Panel finds that Respondent’s use of the domain name to offer competing services is evidence that Respondent is not using the domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) finding no rights or legitimate interests in a domain name that diverted Internet users to Respondent’s competing website through the use of Complainant’s mark; see also 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.

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent is diverting Internet who incorrectly type Complainant’s mark to Respondent’s website that offers the same services as Complainant.  The Panel finds that Respondent’s use of the <e-sripts-md.com> domain name to resolve to its own competing website is likely to cause confusion, leading Internet users to believe that the services offered at Respondent’s website are sponsored by Complainant.  Accordingly, the Panel concludes that Respondent registered and uses the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site; see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) finding that Respondent has engaged in bad faith use and registration by linking the domain name to a website that offered services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks.

Furthermore, when Respondent uses a domain name which incorporates Complainant’s mark with only a typographical error in order to attract Internet traffic to its website, it is engaging in typosquatting.  Panels have consistently found that typosquatting is evidence of bad faith in itself.  Consequently, the Panel finds that Respondent registered and used the <e-sripts-md.com> domain name in bad faith based on the fact that it is a typosquatted version of Complainant’s mark.  See Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) which stated “Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith”; see also Black & Decker Corp. v. Azra Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the “www” portion of [a] web-address,” evidence that the domain name was registered and used in bad faith.

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been 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 <e-sripts-md.com> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  October 24, 2003

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