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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Familymeds Inc . v. Mohammad Tariq
Case No. D2003-0056
1. The Parties
The Complainant in this administrative proceeding is Familymeds Inc. of Connecticut, United States of America.
The Respondent is Mohammad Tariq of Manitoba, Canada.
2. The Domain Name and Registrar
The Domain Name is <canadafamilymeds.com>.
The Registrar is Go Daddy Software, Inc., Scottsdale, AZ, United States of America.
3. Procedural History
The Complaint was received by WIPO Arbitration and Mediation Center (the "Center") by email on January 27, 2003, and in hardcopy form on January 30, 2003. On January 29, 2003, the Center transmitted by email to Go Daddy Software, Inc. a request for registrar verification in connection with the domain name at issue. On the same day, Go Daddy Software Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, 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, by email to the Domain Name and to the alternative email address for the administrative contact provided in the WHOIS for the Domain Name, by facsimile transmission to the fax number for the administrative contact listed in the WHOIS for the Domain Name, and by courier to the registrant address provided in the WHOIS for the Domain Name, and the proceedings commenced on January 30, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2003. On February 18, 2003, a law firm in Manitoba, Canada, contacted the Center by telephone and email identifying itself as the legal counsel for the Respondent. The email requested that any further communications be forwarded to the firm concerned. On February 20, 2003, the Center received a letter from the same firm dated February 14, 2003, in substantially the same terms. Neither the Respondent, nor those identifying themselves as his legal counsel, submitted a Response either before or after the expiration of the due date. The Center notified the Respondent's default on February 25, 2003.
The Center appointed Andrew D S Lothian as the sole Panelist in this matter on March 4, 2003. 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.
No further submissions were received by the Center, as a consequence of which the date scheduled for the issuance of the Panel's Decision was March 18, 2003.
4. Factual Background
The Respondent has failed to file a Response in this case and consequently the Panel accepts as true the statements of fact made by the Complainant. The following are the material facts in the Complaint.
The Complainant is a company incorporated in the State of Connecticut, USA, having is principal place of business at Farmington, CT, USA.
The Complainant operates a retail pharmacy business comprising 87 locations in 16 states in the USA. It opened its first pharmacy in 1969. It expanded its pharmacy operations on to the Internet in 1999, purchasing the domain name <familymeds.com> and publishing a website to be found at the URL "http://www.familymeds.com" (described hereafter as "the "familymeds.com" website"). The Complainant changed its corporate name from Arrow Corporation to its present name in 2000.
The Complainant has trademark rights in the marks FAMILYMEDS (claiming a first use date of June 30, 1999), FAMILYMEDS.COM (claiming a first use date of August 18, 1999) and FAMILYMEDS PHARMACY (claiming a first use date of December 31, 1999) both at common law and as the owner of the following service marks registered with the US Patent & Trademark Office, listed in order of registration date:
1. FAMILYMEDS, registered on June 12, 2001, in Class 042, covering the following services: "Providing an on-line service which enables users to fill and renew prescriptions, and purchase prescription and over-the-counter pharmaceuticals, vitamins and nutritional supplements."
2. FAMILYMEDS.COM, registered on August 28, 2001, in Class 042, covering the following services: "Providing an on-line service which enables users to fill and renew prescriptions, and purchase prescription and over-the-counter pharmaceuticals, vitamins and nutritional supplements, providing information on a global computer network regarding diseases and disease states and the treatment of same."
3. FAMILYMEDS, registered on August 6, 2002, in Class 035, covering the following services: "Online, mail order and retail store pharmacy services in the field of pharmaceutical products"; and
4. FAMILYMEDS PHARMACY, registered on November 12, 2002, in Class 035, covering the following services: "Online, mail order and retail store pharmacy services in the field of pharmaceutical products."
The Complainant has obtained and used these trademarks and service marks in connection with its business as a retailer of prescription medications, specialty pharmaceuticals and other health care products. It offers its goods and services to customers throughout the United States, through the network of retail stores, by mail order and via the medium of the "familymeds.com" website.
The Complainant's FAMILYMEDS marks are recognized throughout the US pharmacy industry as signifying the high quality of the Complainant's goods and services and the "familymeds.com" website has received certification as a Verified Internet Pharmacy Practice by a national body named the National Association of Boards of Pharmacy, following a rigorous review that indicates the highest standards of integrity and professionalism.
The "familymeds.com" website has received several awards including "Best Pharmacy Site" from Yahoo! Internet Life Magazine, Men’s Health Magazine, and NBC4.com, and "Best Pharmaceutical Site" and "Best Pharmaceutical Site with an International Vision" at the 2000 eHealthCare World Conference.
In addition to the domain name <familymeds.com>, the Complainant claims to have registered the following Internet domain names:
<familymed.com>, registered on December 16, 1999;
<familymeds.net>, registered on March 3, 1999;
<familymedspharmacy.com>, registered on May 5, 2000;
<familymedsdirect.com>, registered on June 19, 2001; and
<familymeds.us>, registered on May 2, 2002.
It should be noted that although the Complainant has submitted that it registered all of these domain names, <familymed.com>, <familymedsdirect.com> and <familymeds.us> are not held in the Complainant's present or former corporate name but in the name of individuals who appear to be connected with the Complainant. The Panel nevertheless accepts that these domain names were most probably registered for the Complainant and on its instructions.
The Respondent registered the Domain Name on February 17, 2002. At some point following this date the Respondent published a website to be found at the URL "http://www.canadafamilymeds.com" (hereafter described as "the "canadafamilymeds.com" website"). The "canadafamilymeds.com" website appears to offer similar services to those of the Complainant and states in part:-
"We provide our US and Global customers with cost-effective and high quality non-prescription and prescription medicines after review by our Canadian physicians."
"Our American and Global customers are saving up to 90% on their prescriptions and over the counter drugs when they order through our online pharmacy. American Seniors used to come to Canada to get cheap and discount prescription drugs but now they can enjoy the same saving and discounts on Canadian drugs without leaving their homes."
The "canadafamilymeds.com" website states that it is "owned and operated by Al-Shifa Pharmacy" and at the bottom of the first page it provides a pharmacy license number for "Alshifa Pharmacy". The page also states that the site's services are provided by "Canadian Licensed Pharmacy registered by the Manitoba Pharmaceutical Association".
5. Parties' Contentions
A. The Complainant
The Complainant's marks and domain names are arbitrary and fanciful and are entitled to the highest level of protection.
The Domain Name is identical or confusingly similar to the Complainant's trademarks. The Respondent’s addition of the generic, geographic term "Canada" to the Complainant’s registered trademark and registered domain does not differentiate its domain from the Complainant’s trademarks.
The Complainant has exclusive rights to the use of FAMILYMEDS in an Internet domain by virtue of the facts that FAMILYMEDS has been its corporate name for several years, it has been and is doing business under that name, and it has registered a number of trademarks and domain names incorporating the FAMILYMEDS mark.
The Respondent is neither an agent nor a licensee of the Complainant, and therefore has no right to the use of the FAMILYMEDS mark in its domain.
The Respondent is not known as "Canadafamilymeds." The Respondent normally does business under the name "Al-Shifa Pharmacy." Before and after registration of the Domain Name, the Respondent’s "brick and mortar" business was conducted under the "Al-Shifa" name, and not under the name "canadafamilymeds."
It is inconceivable that the Respondent was unaware of the Complainant and the nature of the Complainant’s business when the Respondent registered the Domain Name in February 2002. By that date the Complainant’s website had earned a stellar reputation in the online pharmacy field, and had been repeatedly recognized as the "Best" online pharmacy. As the Respondent is in the same business, the Panel may infer that he knew of the Complainant.
The arbitrary and fanciful qualities of the FAMILYMEDS marks, strongly suggest that the Respondent did not independently arrive at the conclusion that "Familymeds" would form a strong foundation for a domain for an online pharmacy business. "Canada Familymeds" is not an obvious choice of name for an online pharmacy, apart from its association with the Complainant’s well-established business.
Searches for "family meds" at the top two Internet search engines, Google and Yahoo!, each return the "familymeds.com" website as the first choice. The Respondent easily could have determined that "family meds" was already associated with the Complainant, even assuming that he did not know previously.
The Respondent registered the Domain Name with actual and/or constructive knowledge that it was identical to the Complainant’s registered trademarks and domain names. The Respondent's residence in Canada is irrelevant to such knowledge, actual or constructive. Even if the Respondent did not have actual knowledge, bad faith registration may be inferred from his representation to his registrar, Go Daddy Software, at the point of registration that he had "no knowledge of [the Domain Name] infringing upon or conflicting with the legal rights of a third party or a third party’s registration, trademark, or trade name." especially as the Complainant’s trademarks are available online at "http://www.uspto.gov."
The Respondent’s use of the Domain Name is a blatant and intentional attempt to attract, for commercial gain, Internet users to the "canadafamilymeds.com" website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Domain Name strongly suggests that the Respondent is the Complainant’s Canadian affiliate, and as do the Google and Yahoo! searches for the term "family meds" (returning the "familymeds.com" website and the "canadafamilymeds.com" website as the first and second results respectively). All other sites returned in a search for "family meds" (bar one linking to the "canadafamilymeds.com" website) are sites that discuss, link to, or are otherwise affiliated with the "familymeds.com" website.
The Respondent's logo on the "canadafamilymeds.com" website presents the Respondent’s website name in two distinct parts: "Canada" and "FAMILY MEDS. com," thereby emphasizing in the minds of visitors to the Respondent’s website that there is some association between the "canadafamilymeds.com" website and the "familymeds.com" website.
The Respondent deliberately targets the American pharmaceutical market in which the Complainant operates. The Respondent’s deliberate choice of the Complainant’s trademark as its Internet domain and the name of its website has and is causing actual confusion with the Complainant’s site. The Complainant learned of the Respondent’s website only after a pharmaceutical industry trade group contacted it twice to inquire as to the link between the Complainant and the Respondent’s website in light of that controversy. If such confusion exists within an industry group, there can be no doubt that ordinary consumers are at least equally confused.
Real competitive damage is being caused to the Complainant by the Respondent. Recent publicity over Canadian pharmaceutical sales into the United States risks increasing this. Americans looking to buy from Canadian pharmacies, including potentially the Complainant's own customers, would be drawn to a Canadian pharmacy that appears to be associated with the trusted FAMILYMEDS marks.
The Respondent uses some 30 other companies’ trademarks in the meta-tags of its website.
The Respondent has not responded.
6. Discussion and Findings
In terms of paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Paragraph 14(b) of the Rules provides that if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. Accordingly, the Panel is entitled to draw whatever inferences it considers appropriate where the Respondent has been properly notified of the Complaint but fails to respond.
Identical or Confusingly Similar
The Complainant submits that the Domain Name, ignoring the generic top level domain extension '.com', is identical or confusingly similar to the Complainant's FAMILYMEDS trademark as it is a direct representation of that trademark together with the generic country name 'Canada'. The Complainant also submits that its trademarks are fanciful and arbitrary. The Respondent does not make a response in which a contradictory assertion might have been expressed. The Panel agrees with the Complainant's contentions insofar as confusing similarity is concerned. Adding a geographic identifier to a fanciful or arbitrary trademark within an Internet domain name does nothing to dispel the potential confusion of online consumers familiar with that trademark. It is common for trademark holders to employ a geographic identifier to specify for consumers a location where relative goods and services are available.
In previous cases under the UDRP relating to trademarks combined with geographic identifiers, panels have found their decision on confusing similarity to be fortified by the fact that the Complainant concerned has already combined such trademarks with geographic identifiers in connection with its international activities (see for example America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713 and Cable News Network LP, LLP v. Elie Khouri d/b/a Channel News Network et al. NAF Case No. 117876). In the present case, there is no indication by the Complainant that it has any international operations or that it has a practice of combining its trademark with geographic identifiers. However, the Complainant does submit that a pharmaceutical trade group (the Complainant does not specify whether this body is a US national or an international body) itself was unsure of the affiliation between the Complainant and the Respondent. The conclusion that the Complainant makes, namely that if even an industry body is unsure, substantial numbers of consumers are likely to be confused is a reasonable and logical one. In the Panel's view this fortifies the decision in the present case and the Panel therefore finds that the Respondent has registered a domain name which is confusingly similar to the Complainant's trademark.
Respondent's Rights or Legitimate Interests
Policy paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights or legitimate interests in the Domain Name. Previous panels have found that the burden on a complainant in respect of this requirement should be relatively light, because it is difficult for a complainant to prove that a respondent has no rights or legitimate interests in a domain name, where, in contrast, such information is known to and within the control of the respondent.
The Respondent appears to be operating a business on the Internet, backed by a 'brick and mortar' entity which appears to be suitably licensed to operate a pharmacy under Canadian regulations. Ordinarily this might lead to an inference that the Respondent has a legitimate interest in the Domain Name but the Complaint shows additional factors in this case, noted below, which lead to a contrary inference.
Having said this, the Panel does not subscribe to the general assertion put forward by the Complainant that a complainant can have 'exclusive rights' to the use of a trademark within an Internet domain name purely because this has been its corporate name for several years, it has been doing business under that name and has registered a number of relative trademarks. For example, where a respondent can demonstrate that it commenced the use of its name earlier than the Complainant's use of its trademark, that it had independently arrived at the same name as the Complainant and perhaps that it had registered a trademark for the name in its own territory this will go quite some way towards a showing of legitimate interest. However, the Respondent makes no showing in the present case. Notwithstanding this, it is of assistance to consider the manner in which a respondent can show a legitimate interest under the terms of the Policy, according to the factors listed in paragraphs 4(c)(i) to (iii).
Paragraph 4(c)(i) of the Policy allows use or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods and services, where this is demonstrated by the respondent, to constitute rights or a legitimate interest. The Complainant contends that the Respondent's offering of goods and services cannot possibly be a bona fide offering because "[t]he offering of goods and services in association with an infringing trademark use does not constitute a ‘bona fide’ offering of goods and services within the meaning of Policy paragraph 4(c)(i)." Cable News Network LP, LLLP v. Ahmed Latif, NAF Case No. 117876 (quoting Two Systems Enterprises Co., Ltd. v. Sonies’ Creations, eResolution Case No. AF0911). The Panel accepts the broad principle but considers that in the present case the Complainant cannot rely on that principle alone. The cases cited relate to an international business holding a trademark in the country of the respondent and a dispute where both parties were in situated in the same territory (and hence under the jurisdiction in which the Complainant's trademark was registered) respectively. The Complainant in the present case does not claim to own a trademark in the territory of the Respondent, nor is its business situated in that territory.
Paragraph 4(c)(ii) requires that the Respondent be commonly known by the Domain Name, even if he has acquired no trademark or service mark rights. Clearly neither the Respondent, nor the business being carried on by Al-Shifa Pharmacy, qualifies under this provision. In fact, the Complainant has produced extensive evidence showing that no business named Canadafamilymeds is operating but rather, at best, that this is a trading name recently adopted by the Al-Shifa Pharmacy for the purpose of operating the "canadafamilymeds.com" website.
Paragraph 4(c)(iii) requires that the Respondent be making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Clearly the Respondent's use is commercial. Furthermore, the Complainant's evidence gives rise to a strong inference that the Domain Name was registered for exactly the purpose of misleadingly diverting consumers.
The factors in paragraph 4(c)(i) to (iii) are non-exhaustive. Are there other factors which might indicate a legitimate interest in this case? The Panel considers that there are not. Instead, the Panel finds that there are a series of factors which are highly indicative of a lack of legitimate interest, namely that the Domain Name (1) is confusingly similar to the Complainant's service marks, (2) post-dates the registration of the service marks, (3) is being used to further a business operation in direct competition with the Complainant that is openly targeted at customers living in the territory where the Complainant's service marks are registered, (4) in all probability constitutes an infringement of the Complainant's service marks under US law (insofar as goods and services are being offered to customers within the USA), and (5) is being used in a manner which would tend to misrepresent an association with the Complainant and its goodwill.
The Panel also notes that the Respondent has not contested the Complainant's many and detailed assertions or contentions in this regard, and the Panel concludes that an inference adverse to the Respondent is appropriate. The Respondent's registration and use of the Domain Name, which the Panel also finds to be in bad faith (as discussed below), is not sufficient to establish any rights or interests in the Domain Name in the sense contemplated by Policy paragraph 4(a)(ii).
For a bad faith claim under the Policy to succeed, the Respondent must, ordinarily, at the very least, have had the Complainant or the Complainant’s trade/service mark in mind. All the examples of what may constitute bad faith, which are set out in paragraph 4(b) of the Policy, involve the Respondent targeting the Complainant or the Complainant’s goodwill in some way.
The Complainant's allegations of bad faith on the part of the Respondent focus principally on paragraph 4(b)(iv) of the Policy, namely that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on his website or location.
The Complainant states that it is inconceivable that the Respondent was unaware of the Complainant and the nature of the Complainant’s business when the Respondent registered the Domain Name in February 2002, as the "familymeds.com" website had earned a stellar reputation in the online pharmacy field and the Respondent is in the same business. Accordingly, the Complainant states that the Panel may infer that the Respondent knew of the Complainant. The Panel is prepared to accept this, with some reluctance, on the basis that Canada and the USA are countries in close proximity, with a mutual border and conducting trade across that border. In addition, it may be inferred from the Complainant's submissions that both Canadian and US pharmacies take an interest in what is happening on the opposite side of their respective border.
Although the Complainant and the Respondent are in the same business, the Complainant could have said more about the extent to which it is known in Canada and, for example, whether its awards or other activities have featured in the trade press there. It is possible, for example, that the Complainant's award for having an 'International Vision', made at a 'World Conference' might well mean that it will be known within the trade in Canada, the Complainant's closest international country. Once again, the Respondent's failure to provide a Response with contradictory assertions is a significant factor in the Panel's decision on this point.
It is certainly clear from the "canadafamilymeds.com" website that the Respondent registered and is using the Domain Name to target customers from the USA. It follows that the Respondent either knew or ought to have known of the Complainant's existence, the existence of the award-winning "familymeds.com" website and of the Complainant's various trademarks. Furthermore, the fact that the Respondent was obliged by his registration agreement to give an undertaking to his registrar regarding non-infringement of third party rights satisfies the Panel that the Respondent was doubly 'on notice' to conduct reasonable investigations for the existence of such rights. As the Complainant points out, even if the Respondent was unaware of the existence of the Complainant a simple web search would either have located the "familymeds.com" website or the Complainant's trademarks at the USPTO.
Although the Complainant does not expressly make the submission, in the Panel's view it is highly likely that the Respondent would also have investigated the availability and/or ownership of the domain name <familymeds.com> before registering the Domain Name. The Panel accepts the Complainant's submission that the arbitrary and fanciful qualities of the FAMILYMEDS marks strongly suggest that the Respondent did not independently arrive at the conclusion that "Familymeds" would form a strong foundation for a domain for an online pharmacy business.
The Panel also agrees that the use of the Domain Name strongly suggests that the Respondent is the Complainant’s Canadian affiliate and that the Respondent's logo, which presents the Respondent’s website name in two distinct parts: "Canada" and "FAMILY MEDS.com," furthers the notion that there is some association between the "canadafamilymeds.com" website and the Complainant.
The Panel does not agree that the Respondent's use of some 30 or so registered trademarks on the "canadafamilymeds.com" website is supportive of bad faith registration and use. The trademarks concerned appear to be pharmaceutical products and are used in a descriptive sense, that is, to refer to the products of the trademark owners which presumably the Respondent sells. Nevertheless, the Panel is in no doubt in light of the above analysis and the overwhelming number of factors pointing towards bad faith that the Respondent registered the domain name and is using it in bad faith within the meaning of paragraph 4(b)(iv).
In light of the Panel's findings, namely that the Domain Name is confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith, the Panel directs that the Domain Name, <canadafamilymeds.com> be transferred to the Complainant.
Andrew D S Lothian
Dated: March 17, 2003