WIPO Domain Name Decision: D2005-1190

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

RX America, L.L.C. v. Tony Rodolakis

Case No. D2005-1190

1. The Parties

The Complainant is RX America, L.L.C., Salt Lake City, Utah, United States of America, represented by Thelen Reid & Priest LLP, United States of America.

The Respondent is Tony Rodolakis, Montreal, Quebec, Canada.

2. The Domain Name and Registrar

The disputed domain name <rx-america.net> is registered with Go Daddy Software, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2005 by e-mail and on November 22, 2005, in hardcopy. On November 17, 2005, the Center transmitted by email to Go Daddy Software, Inc. a request for registrar verification in connection with the domain name at issue. On November 17, 2005, Go Daddy Software, Inc. transmitted by email to the Center its verification response confirming that the disputed domain name is registered with Go Daddy Software, Inc. and that Respondent is listed as the registrant and providing the contact details for the administrative, and technical contact. 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 November 25, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was December 15, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 19, 2005.

The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on December 29, 2005. 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

The trademark and tradename upon which the Complaint is based is RX AMERICA. Complainant is called RX America and, according to documentary evidence and contentions submitted by Complainant, it has used such name and related marks since 1990, and owns, directly or through affiliates, the <rxamerica.com> domain name as well as certain trademark rights to such name. Reference is made to Annex C to the Complaint (registration of stylized RX America and application of RX AMERICA).

According to the contentions submitted by Complainant, RX America, L.L.C. is in the business of offering a variety of mail order and online pharmacy related services. Complainant also asserts that it is a recognized leader in the online pharmacy industry. An independent survey on Complainant was conducted by the Panel by visiting the KnowledgeSource website, pursuant to which “RxAmerica provides fully-integrated pharmacy programs to more than 4.5 million members representing more than 14 million claims, totaling over $500 million in drug expenditures” (Report of February 7, 2005) (access on January 11, 2006).

According to documentary evidence and contentions submitted by Complainant, Respondent registered the disputed domain name on May 19, 2004, and its website purports to provide online medications and pharmacy services in direct competition with those of Complainant.

The Panel notes that Complainant has succeeded in securing the transfer of a similar disputed domain name (<rxamerica.org>) pursuant to the decision handed down in RX America, LLC. v. Matthew Smith, WIPO Case No. D2005-0540 and of the <rxamerica.com> domain name pursuant to the decision handed down in RX America, LLC. v. Stephen Sumsky, WIPO Case No. D2005-0539.

5. Parties’ Contentions

A. Complainant

Complainant argues that the disputed domain name is nearly identical to and incorporates the service marks in which Complainant has rights.

Complainant further contends that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that Respondent only uses such domain name to offer for sale goods and services that are in direct competition with those of Complainant. This conduct by the Respondent is argued by Complainant to be a clear example of “typosquatting”.

Complainant also contends that Respondent has made no effort to commence use of the disputed domain name in connection with the bona fide offering of goods and services, and that efforts to misleadingly divert customers with the intent of commercial gain is not evidence of bona fide use of the domain name but rather evidence of bad faith [Policy para. 4(c)(i) and 4(b)(iv)].

Complainant advises that on or about May 10, 2005, Complainant’s Counsel sent a letter to Respondent demanding that it immediately cease all infringing activity and transfer the disputed domain name to Complainant, that letter having never received a response (Declaration of E. Shalu Saluja).

Complainant contends that the Respondent is not commonly known by the domain name and is not making legitimate noncommercial or fair use of the domain name, and has been misleadingly diverting customers from Complainant [Policy para. 4(c)(ii) and 4(b)(iv)].

Finally, Complainant argues Respondent registered the disputed domain name for the purpose of attracting Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s marks and by taking advantage of those users who have inadvertently made a typographical error when typing to visit Complainant’s legitimate website [Policy para. 4(b)(iv)].

In accordance with paragraph 4(b)(i) of the Policy, the Complainant requests that the Panel orders that the disputed domain name be transferred to Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Effect of the Default

The consensus view in WIPO UDRP Panel decisions is that the respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the Policy (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

This Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a Response. As a result, the Panel infers that the Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084. Ross-Simons, Inc. v. Domain.Contac. WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and the Respondent will be subject to the inferences that flow naturally from the information provided by the Complainant. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. RX America, LLC v. Matthew Smith. WIPO Case No. D2005-0540.

The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.

A. Identical or Confusingly Similar

Complainant contends that, directly and through affiliates, it owns exclusive rights to the tradename and marks (RX AMERICA) incorporated in the disputed domain name (<rx-america.net>), that it has used such marks since at least 1990, and that it also owns the <rxamerica.com> domain name. It also contends that RX America, L.L.C. is commonly known as “RX America”.

Complainant has submitted documentary evidence of enforceable trademark and tradename rights, and former UDRP decisions involving RX America, LLC have also established Complainant’s exclusive rights to RX America names and marks. RX America, LLC v. Stephen Sumsky, WIPO Case No. D2005-0539. RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.

Complainant contends that the <rx-america.net> domain name is nearly identical to and incorporates the service marks in which Complainant has rights. The conduct by the Respondent is argued by Complainant to be a clear example of “typosquatting”.

In the Panel’s view, this case may be considered a “typosquatting” case where the disputed domain name is a slight variation from a registered trademark. In fact, the <rx-america.net> domain name comprises the Complainant mark and name entirely with the following slight variation: instead of the juxtaposition of the word “rx” with the word “America”, as depicted in Complainant”s <rexamerica.com> domain name, Respondent added a hyphen between the two words.

As a result, this is an example of confusing similarity brought about through easily made typing errors made by an Internet user: rather than typing the words “rx” and “America” together to visit Complainant’s website, an Internet user could easily add the hyphen between the two words and be diverted to a different website.

The Panel takes into account previous WIPO UDRP decisions relating to the practice of “typosquatting” where such practice has consistently been regarded as creating domain names confusingly similar to the relevant mark. This is a point well-established in prior UDRP domain name cases. ACCOR v. Brigit Klostermann, WIPO Case No. D2005-0627. Sharman License Holdings, Limited v. IcedIt.com, WIPO Decision No. D2004-0713. Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994.

However, even if the subject case were not to be considered a “typosquatting” case, a comparison between the “RX America” name and trademark and the <rx-america.net> domain name shows a clear likelihood of confusion. In sum, the case passes the test of confusing similarity found by the consensus view in WIPO Panel decisions (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 1.2).

Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

The consensus view in WIPO Panel decisions has been that “[w]hile the overall burden of proof rests with the complainant, …. this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.1).

The Panel finds that the Complainant has established a prima facie case. In fact, the disputed domain name is not the name of Respondent, the principal elements of the disputed domain name consist of the Complainant’s name and marks, and it is evident that Complainant has not authorized the Respondent to use its mark and name in the domain name.

In addition, none of the three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the disputed domain name Policy [para 4(c)] shows a result in favor of the Respondent.

Complainant contends that Respondent has made no effort to commence use of the disputed domain name in connection with the bona fide offering of goods and services, and that efforts to misleadingly divert customers with the intent of commercial gain is not evidence of bona fide use of the domain name but rather evidence of bad faith [Policy para. 4(c)(i) and 4(b)(iv)]. By defaulting, the Respondent has failed to provide the Panel with any evidence of a bona fide offering of goods and services or of a legitimate noncommercial or fair use of the domain name, and Complainant’s evidence of diversion of customers is compelling. Complainant’s contention that Respondent is not commonly known by the domain name is to be accepted in light of the documentary evidence submitted.

In short, the Complainant has satisfied its burden of providing sufficient evidence to make a prima facie case showing that Respondent lacks rights to or legitimate interests in the disputed domain name, and the Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain name. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.

In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

Complainant argues Respondent registered the disputed domain name for the purpose of attracting Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s marks and by taking advantage of those users who have inadvertently made a typographical error when typing to visit Complainant’s legitimate website [Policy para. 4(b)(iv)].

The Panel has found before, for the purpose of determining the existence of confusing similarity, that an Internet user, rather than typing the words “rx” and “America” together to visit Complainant’s website, could easily add the hyphen between the two words and be diverted to a different website.

The question which arises is whether or not by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating the already found likelihood of confusion with Complainant’s mark and domain name as to the source, sponsorship, affiliation, or endorsement of location or service.

The act of “typosquatting” or registering a domain name that is a common misspelling of a mark in which a party has rights has often been recognized as evidence of bad faith registration and use. Paragon Gifts, Inc. v. Domain.Contact, WIPO Case No. D2004-0107, citing National Association of Professional Baseball Leagues, d/b/a Minor League Baseball v. Zuccarini, WIPO Case No. D2002-1011. The Panel concurs that this is the correct approach.

In addition, this Panel takes the view that the content of a website (whether it is similar or different to the business of a trademark owner) is relevant in the finding of bad faith registration and use. This is so because where a potential visitor, after typing in a confusingly similar domain name, reaches the Respondent’s website offering for sale goods and services that are in direct competition with those of the Complainant, there is an implied act of fraud (unfair competition). And fraud is evidence of bad faith.

Therefore, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.

7. Decision

The Panel concludes that (a) the <rx-america.net> domain name is confusingly similar to Complainant’s marks and names, (b) the Respondent has no rights or legitimate interests in the disputed domain name, and (c) the Respondent has registered and used the disputed domain name in bad faith.

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 <rx-america.net> be transferred to the Complainant.

Manoel J. Pereira dos Santos
Sole Panelist

Date: January 11, 2006