The Complainant is RxMedz Pte. Ltd., Singapore, represented by hslegal LLP, Singapore.
The Respondent is John Smith, United Kingdom.
The disputed domain name <rxmeds.io> (the “Disputed Domain Name”) is registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2020. On November 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 14, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 16, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 17, 2020.
The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 10, 2020.
The Center appointed John Swinson as the sole panelist in this matter on December 15, 2020. 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.
The Complainant is RxMedz Pte. Ltd., a company incorporated in Singapore. According to the Complaint, the Complainant is in the process of setting up an online platform for the supply of medicines and other pharmaceutical products, including by applying for regulatory approvals from the Health Sciences Authority of Singapore.
The Complainant is the owner of a number of registered trade marks for RXMEDZ in Singapore and the Philippines, including Singapore registered trade mark no. 40201817055Y, registered on August 24, 2018 (the “Trade Mark”). The Complainant has also applied to register RXMEDZ as a trade mark in Malaysia, Thailand, Indonesia, and Vietnam, and is the owner of a domain name incorporating the Trade Mark, being <rxmedz.com>.
The Respondent is John Smith, an individual of the United Kingdom (“UK”). The Respondent did not reply to the Complaint, so little is known about the Respondent. The Respondent registered the Disputed Domain Name on March 15, 2019. The Disputed Domain Name resolves to a website of an online pharmacy in Singapore.
The Complainant makes the following contentions.
The Disputed Domain Name is identical or closely similar to the Trade Mark. The words are visually identical except for the last letters “s” and “z” which are themselves closely similar.
The Respondent has no rights or legitimate interests in the Disputed Domain Name and is not using it in connection with a bona fide offering of goods or services. It is clear that the Respondent is using the Disputed Domain Name to operate a fake online pharmacy and/or to sell counterfeit pharmaceutical products. This can be inferred from the following factors:
- The website at the Disputed Domain Name (the “Respondent’s Website”) purports to sell prescription-only medicines without a prescription, which is illegal.
- The Respondent’s Website uses broad and misleading statements and the only listed contact is through the website.
- The Respondent sells products well below market price (e.g., Viagra is sold for USD 60 instead of the usual retail price of USD 100).
- The Respondent does not accept refunds.
- The Respondent is not a licensed e-pharmacy. In Singapore, e-pharmacies must be licensed and the Complainant has checked the Health Science Authority’s website and the Respondent is not licensed.
The fact that the Respondent is using the Disputed Domain Name to carry out illegal or unlicensed activity is evidence of bad faith registration and use. The Respondent is also creating the false impression that those who purchase products from the Respondent’s website are buying safe, genuine, and effective products and that customers do not need a prescription to purchase these. Alternatively, the Respondent’s Website may be a scam to take payment without any intention of selling products.
The Respondent did not reply to the Complainant’s contentions.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark 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 or is being used in bad faith.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a response.
The Panel notes that while this Complaint has been filed under the .IO Policy, given the similarities between the .IO Policy and Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel will refer to UDRP precedents when relevant.
Failure to file a response
The Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default.
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
Generally, the test for identity or confusing similarity involves a side-by-side comparison of the domain name and the trade mark to assess whether the trade mark is recognizable within the domain name (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7). In this case, the only difference between the Disputed Domain Name and the registered Trade Mark is the letter “z” is used in the Trade Mark and the letter “s” is used in the Disputed Domain Name. The Panel finds that the Disputed Domain Name is confusingly similar to the Trade Mark.
The Complainant is successful on the first element of the Policy.
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based on the following:
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name or the Trade Mark, or has registered or has common law rights in relation to the Trade Mark.
- There is no evidence that the Respondent has been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The Respondent’s Website is clearly intended for commercial gain, and offers products for sale.
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services, for the reasons set out below.
The Disputed Domain Name resolves to a website that purports to be an online pharmacy. Panels have held that the use of a domain name for the sale of counterfeit goods or illegal pharmaceuticals can never confer rights or legitimate interests on a respondent (see section 2.13.1 of WIPO Overview 3.0). In this case, the Complainant has provided circumstantial evidence that the Respondent’s Website is being used to sell illegal pharmaceuticals, or alternatively is a scam. Panels are generally not prepared to accept merely conclusory or wholly unsupported allegations of illegal activity, even when the respondent is in default (as in this case). However, panels have found that circumstantial evidence can support a complainant’s otherwise credible claim of illegal respondent activity. In this case, the Complainant has provided unrefuted evidence that:
- the products on the Respondent’s Website are offered significantly below market value; and
- e-pharmacies in Singapore are required to be licensed, and the Respondent is not licensed.
The Panel considers that the Complainant has made out a prima facie case that the Disputed Domain Name is being used to sell illegal pharmaceuticals. The Respondent had the opportunity to demonstrate their rights or legitimate interests, but did not do so. In the absence of a response from the Respondent, the prima facie case established by the Complainant has not been rebutted.
In light of the above, the Complainant is successful on the second element of the Policy.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered or subsequently used the Disputed Domain Name in bad faith. The Panel notes that unlike in a complaint under the UDRP, it is enough here for the Complainant to prove that either registration or use of the Disputed Domain Name is in bad faith.
The Complainant was registered as a company on July 25, 2018, and acquired registered trade mark rights shortly thereafter, on August 24, 2018. The Disputed Domain Name was registered on March 15, 2019.
The Complainant relies on the use of the Disputed Domain Name for a fake or unlicensed pharmaceutical website as evidence of use and registration in bad faith. The Complainant does not provide any submissions as to how the Respondent would have been aware of the Complainant, considering that the Complainant has not yet started offering e-pharmacy services under the Trade Mark. The Panel also understands that “rxmed” is a commonly used term in the medical industry. In particular, the term “med” is often used as a short form reference to “medical” and the term “rx” is commonly applied in the medical or pharmaceutical industry as a reference to medical prescriptions (see F. Hoffmann-La Roche AG v. Vladimir Zaicev, Dmitry Bogdanov, WIPO Case No. D2011-2144).
Notwithstanding this, the Complainant has provided unrefuted evidence that suggests that the Respondent is illegally operating an e-pharmacy. As noted in section 2.13.1 of the WIPO Overview 3.0, given that the use of a domain name for per se illegitimate activity can never confer rights or legitimate interests on a respondent, such behaviour is manifestly considered evidence of bad faith.
Moreover, the address on the Respondent’s website is in Singapore, the location of the Complainant. The Respondent in the WhoIs record is “John Smith” (which is often regarded as the most common name in United Kingdom and in other English speaking countries) from the United Kingdom. There is no rationale why John Smith in the United Kingdom would have (and use) a website in Singapore – an illegal pharmaceutical one at that, other than to target the Complainant.
The Complainant sent the Respondent a “cease and desist” letter, but received no response.
On the basis of the above, the Panel finds bad faith use under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <rxmeds.io> be transferred to the Complainant.
John Swinson
Sole Panelist
Date: December 28, 2020