WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Drugstore.com, Inc. v. Kevin Andrews

Case No. D2008-0231

1. The Parties

The Complainant is Drugstore.com, Inc., Bellevue, Washington, United States of America, represented by Cabrelle Abel, United States of America.

The Respondent is Kevin Andrews, Makati, Philippines, represented by Ari Goldberger of ESQwire.com PC, United States of America.

2. The Domain Name and Registrar

The Disputed Domain Name <mydrugstore1.com> is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2008. On February 15, 2008, the Center transmitted by e-mail to eNom, Inc. a request for registrar verification in connection with the Disputed Domain Name at issue. On February 19, 2008, eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 18, 2008. The Response was filed with the Center March 18, 2008. The Respondent elected to have the dispute decided by a three-member Panel. On March 25, 2008, the Complainant filed Supplemental Filings.

The Center appointed Alistair Payne, Richard Page and David E. Sorkin as panelists in this matter on April 15, 2008. The Panel finds that it was properly constituted. Each member of 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

The Complainant is a leading provider of health, beauty, vision and pharmacy products. The company was founded in 1998 and since that time it has been trading under the DRUGSTORE.COM trademark. The Respondent is an employee of Evergreen Technologies, Inc., a company which operates in the pharmaceutical sector. The Respondent registered the Disputed Domain Name, on his employer’s behalf, on August 8, 2007. The Complainant submitted a Supplemental Filing to its Complaint, highlighting issues surrounding the extensive use of the DRUGSTORE.COM trade mark and its substantial media recognition. Further, the Complainant provided evidence that it owns the domain name <mydrugstore.com>; this ownership was not brought to light in the Complaint. The Panel made a decision to allow and consider this filing. Subsequently, on April 23, 2008, the Panel issued a Panel Order inviting the Respondent to submit any reply by April 30, 2008. The Respondent filed its Supplemental Filing on May 1, 2008, which was considered by the Panel.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Disputed Domain Name <mydrugstore1.com> is confusingly similar to its United States figurative trademark registration, which included the word “drugstore.com”, and to both its domain names <drusgstore.com> and <mydrugstore.com>. The Complainant contends that it also has common law rights in the DRUGSTORE.COM trademark through its extensive use and promotion since 1999. The Complainant alleges that, even though the word “drugstore” is a common dictionary word, the widespread use of the DRUGSTORE.COM trademark, together with significant promotional and marketing expenditure, has permitted to the Complainant’s trademark to acquire a secondary meaning such that it is clear that the consumers associate the trade mark at issue with the Complainant’s goods and services.

The Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In particular, the Complainant asserts that the Respondent has used the Disputed Domain Name to redirect Internet users to its competitive website “www.myrxunited.com” and as such cannot be deemed a use in connection with a bona fide offering of goods or services, under paragraph 4(a)(i) of the Policy.

The Complainant further maintains that the Respondent has registered and used the Disputed Domain Name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s DRUGSTORE.COM trademark and domain names.

B. Respondent

The Respondent contends that the Complainant does not have enforceable trademark rights in the word “drugstore” as it is a common dictionary word referring to a pharmacy and is descriptive of the products and services provided by the Complainant. In relation to this issue, the Respondent notes that the United States Patent and Trademark Office (the “USPTO”) has refused several Complainant’s applications for the word “drugstore” on the grounds of descriptiveness and for this reason the Complainant only owns a figurative trade mark registration (mentioned by the Complainant and identified by the No. 2592013) with the disclaimer “No claim is made to the exclusive right to use “drugstore” apart from the mark as shown”.

In light of the generic and descriptive nature of the Complainant’s registered trademark, the Respondent maintains that the presence in the Disputed Domain Name of the word “my” and the number “1” is enough to distinguish the Disputed Domain Name and eliminate a finding of confusing similarity. The Respondent further contends that he registered the Disputed Domain Name only because it is including a purely descriptive term.

The Respondent also asserts that the Disputed Domain Name has been used for an online pharmacy business for about two years prior to the date on which the Complaint was filed and this must be deemed as use in connection with a bona fide offering of goods or services, under the paragraph 4(c)(ii) of the Policy. Further, in its supplemental filing the Respondent states that its website is not competing with Complainant’s business as it connects doctors and patients to facilitate the filling of prescriptions.

6. Discussion and Findings

If the Complainant is to succeed, it must prove each of the three elements referred to in Paragraph 4(a) of the Policy, namely that:

i. the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and

ii. the 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.

The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in Paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

The Complainant owns a United States figurative trademark registration of which the dominant element is “drugstore.com”. The Complainant also owns two domain name registrations for <drugstore.com> and <mydrugstore.com>. The Complainant’s DRUGSTORE.COM trade mark has been widely used and promoted since 1999. Based on the evidence provided by the Complainant, it has used and advertised its trademark extensively and it has developed substantial reputation and goodwill in relation to the DRUGSTORE.COM trademark. In light of the very substantial degree of advertising and use, the majority of the Panel is prepared to find that the Complainant has developed some degree of secondary meaning in “drugstore.com” sufficient to support this Complaint.

The majority of the Panel further finds that the Disputed Domain Name is confusingly similar to the Complainant’s DRUGSTORE.COM trademark. The presence of the word “my” and the number “1” in the Disputed Domain Name does not distinguish the Disputed Domain Name and is not sufficient to eliminate the finding of confusing similarity between the Complainant’s trade mark right and the Disputed Domain Name.

Therefore, the majority of the Panel is satisfied that the Complainant has fullfilled the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel is satisfied that the Respondent is not known as and has never operated a business under “mydrugstore1.com” or “drugstore.com”. The Panel accepts that the Respondent was never authorized by the Complainant to carry on any form of activity under the name “drugstore.com” or under the Disputed Domain Name.

Further, the majority of the Panel finds that the Respondent’s use of the Disputed Domain Name to redirect Internet users searching for Complainant to Respondent’s competing website is not a use in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use under paragraphs 4(c)(i) or 4 (c)(iii) of the Policy. Panels in various UDRP decisions have found that where the Respondent uses the Disputed Domain Name to redirect traffic to its competing website that use cannot be considered to be bona fide use. (See RX America, LLC. v. Stephen Sumsky, WIPO Case No. D2005-0539; Computerized Sec. Sys, Inc. v. Hu, NAF FA157321; Clear Channel Communications, Inc. v. Beaty Enders, NAF FA135008;

Avery Dennison Corp. v. Steele, NAF FA133626).

The Complainant has met the burden of demonstrating on a prima facie basis that the Respondent has no legitimate interests in the Disputed Domain Name. The Respondent asserts by way of reply, that it is using a purely descriptive term and is entitled to do so. However, it appears to the majority of the Panel that by the date of registration of the Disputed Domain Name the Complainant had advertised its mark and domain name so widely that it is simply not credible for the Respondent to assert that it was not aware of the Complainant mark and that he merely sought to register a descriptive term. It seems to the majority that in all likelihood the Respondent was well aware of the Complainant’s mark and domain name and actively sought to register the Disputed Domain Name in an effort to re-direct web traffic to a competing website.

The Panel, therefore, finds that the Complainant has, therefore, satisfied Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

As noted above the majority is prepared to infer that the Respondent must have been aware of the Complainant’s trademark and business and intentionally selected the Disputed Domain Name in order to sail on the Complainant’s coat tails. In the circumstances it is simply not realistic to think that the Respondent was not well aware of the Complainants mark and presence in the on-line drugstore market by August 8, 2007, being the date of registration of the Disputed Domain Name. Based on the very substantial evidence of advertising of the Complainant’s website and business, the majority of the Panel consider that the Respondent must have chosen the Disputed Domain Name purposefully and in order to re-direct web traffic to its competing website. Therefore, the majority of the Panel considers that the requirements of Paragraph 4(b)(iv) of the Policy are fulfilled.

The majority is aware that a different conclusion was reached by a differing majority in the companion decision of Drugstore.com, Inc. v. Nurhul Chee / Robert Murry, WIPO Case No. D2008-0230 (as discussed further below in the dissenting opinion). This may in part simply reflect a differing assessment of facts and likely motive given the examined record in each case, rather than any underlying divergence of opinion as to applicable principles under the Policy.

D. Reverse domain name hijacking

A finding of Reverse Domain Name Hijacking may be made if “the Complainant knew or should have known at the time that it filed the Complaint that it could not prove that the domain name was registered in bad faith” (see Futureworld consultancy Opty Ltd. v. Online Advice, WIPO Case No. D2003-0297).

Reverse domain name hijacking is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name”. The onus of proving bad faith is on the Respondent, and mere lack of success of the Complaint is not of itself sufficient to constitute reverse domain name hijacking (see Deutsche Post AG v. NJDomains, WIPO Case No. D2006-0001).

It follows from the findings above, that the Panel finds that the Complaint is justified and consequently there is no basis for finding as Reverse Domain Name Hijacking.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <mydrugstore1.com> be transferred to the Complainant.

Dated: May 9, 2008

DISSENTING OPINION

I respectfully dissent, for largely the same reasons that I joined in the decision of the majority in Drugstore.com, Inc. v. Nurhul Chee / Robert Murry, WIPO Case No. D2008-0230, a case involving virtually identical facts and effectively the same parties as the present case. I do not believe that the two cases are distinguishable from one another in any relevant way.

I agree with the majority’s finding that Disputed Domain Name is confusingly similar to a mark in which Complainant has rights, although I would base that finding solely upon Complainant’s registered design-plus-words mark. However, I believe the Complaint fails at least as to the third element, bad faith registration and use.

In my view it appears more likely than not that Respondent selected the domain name because it contains the word “drugstore” and the generic top-level domain suffix “.com”, and not because of any similarity to Complainant’s name or mark. As a result I would find that Complainant has failed to satisfy its burden of proving bad faith registration.

Whether Respondent has rights or legitimate interests in respect of the disputed domain name is a more difficult question. It is not entirely clear to me that Respondent’s current activities are infringing. Complainant apparently has been unable to persuade the United States Patent & Trademark Office that its claimed mark comprising DRUGSTORE.COM apart from any design has acquired sufficient secondary meaning to merit registration. On the other hand, I have substantial doubts regarding the legitimacy of Respondent’s online pharmacy business. If the Complaint fails on bad faith, however, it is unnecessary to decide the question of rights or legitimate interests.

I would dismiss the Complaint based upon Complainant’s failure to prove that the Disputed Domain Name was registered in bad faith.

David E. Sorkin
Panelist (Dissenting)

Dated: May 9, 2008