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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eckerd Corporation v. John Barry doing business as Azra Ari Khan, Teki Inc., Center For Ban on Drugs, Duke, Duke Inc., and Tech Domains
Case No. D2003-0329
1. The Parties
The Complainant is Eckerd Corporation of Dallas, Texas, United States of America, represented by Jerome K. Lipsich, JC Penney Legal Department, Dallas, Texas, United States of America.
The Respondent is John Barry, also known as and/or doing business as Azra Ari Khan; Teki Inc.; Center For Ban on Drugs; Duke; Duke, Inc.; and Tech Domains, of the Bronx, New York, United States of America.
2. The Domain Names and Registrars
The disputed domain name <ekcerd.com> is registered with Key-Systems GmbH dba domaindiscount24.com. The disputed domain name <ekcerds.com> is registered with eNom, Inc. The disputed domain names <ekerd.com>, <ekerddrugs.com> and <ekerds.com> are registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
This is a long and winding road. A brief summary will suffice.
The original Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 29, 2003. This consisted of a complaint on a single disputed domain name <eckcerd.com> against a single respondent, Ken Burns. The appropriate request for registrar verification on this domain name was transmitted by email to eNom, Inc., on August 30, 2003. On May 1, 2003, eNom, Inc., transmitted by email to the Center its response stating that the domain name had been deleted for false contact data. After which the Complainant requested a 30-day suspension of the proceedings to attempt to purchase the domain name if it became available for third party registration. On June 9, 2003, the Complainant notified the Center that the negotiations had not succeeded, and therefore, requested a resumption of the proceeding.
Accordingly, on July 2, 2003, the Center transmitted a request for registrar verification to Key-Systems GmbH d/b/a domaindiscount24.com in connection with the domain name at issue, <ekcerd.com>. On July 4, 2003, Key-Systems GmbH d/b/a domaindiscount24.com transmitted by email to the Center its verification response confirming that the domain name was registered with Key-Systems GmbH, but that the Respondent, Ken Burns was not listed as the registrant. The Registrar confirmed that the current registrant was Azra Ari Khan and provided the contact details for the administrative, billing, and technical contact.
On July 11, 2003, the Center requested an amendment to the Complaint. On July 16, 2003, the amendment was filed with the Center listing the same larger set of disputed domain names and respondent d/b/a’s ("doing business as" aliases) that appear in this third Amended Complaint, which is the final version.
After a response from the Center citing deficiencies in the format of the Amended Complaint, the Complainant submitted a second Amended Complaint on August 15, 2003.
The Center responded by informing the Complainant that the second Amended Complaint did not contain the proper elements for mutual jurisdiction with the U.S. courts under the circumstances of this particular case. The Complainant then amended the Complaint accordingly once again and submitted its third Amended Complaint on August 27, 2003.
The Center verified that this third Amended 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 September 4, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was September 24, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2003.
The Center appointed Paul E. Mason as the sole panelist in this matter on October 6, 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.
4. Factual Background
The Complainant markets drug, medical, photographic, and convenience food products and services throughout the northeastern, southeastern, and sunbelt regions of the U.S.
In the appendices to its Complaint, the Complainant has submitted a very large number of trade and service mark registrations with the U.S. Patent & Trademark Office which cover a variety of drug and medical related products and services provided by Eckerd Corporation.
In addition, and more importantly under U.S. trademark law, the Complainant has been making consistent use of these marks in commerce over the years. Under U.S. trademark law, registration of the marks is optional and provides a secondary set of rights, provided that actual usage of the marks in commerce has been demonstrated.
5. Parties’ Contentions
The Complainant’s basic allegation is the classic "typosquatting" case argument: -
a) that the domain names at issue are confusingly similar to its company name and trade & service marks, distinguished only by slight typographical variations; and
b) that the Respondent has no proprietary interest in these domain names; and
c) that the Respondent has registered and used the domain names in bad faith by automatically directing internet traffic arriving at websites resolved to by the domain names, to other websites advertising competing medical products and services.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds all the domain names at issue to be confusingly similar to the Complainant’s company name and trade & service marks in the word "Eckerd". This is all the more so because the Complainant’s name "Eckerd" is not intuitively easy to type out and spell correctly, lending itself to frequent misspellings and typographical errors.
B. Rights or Legitimate Interests
The Complainant’s annexes adequately prove its intellectual property rights in the "ECKERD" name and marks. The Complainant also established a prima facie case that the Respondent has no rights or legitimate interests in the domain names. The Respondent by default has not shown any such rights or interests.
C. Registered and Used in Bad Faith
The annexes to the Complaint show printouts of visits in July 2003, to websites to which the domain names resolve, automatically directing the visitors to other sites offering products and services for sale competing with those of the Complainant. On October 10, 2003, this Panelist inputted the domain names on a search engine preceded by "www.", but none of the domain names resolved to any website. However, as the Complainant has shown ample evidence in its annex and the Respondent has not denied the allegation, this Panel accepts the Complainant’s claim that automatic re-direction of visitors was taking place, at least as of July 2003.
While the Respondent is of course free to offer its own competing products and services, it is not free to do so on the back of the reputation of the Complainant’s name and marks. This bears all the marks of classic "typosquatting" cases, a myriad of which have been decided in favor of UDRP complainants under these circumstances and amount to registration and use in bad faith under paragraph 4(b)(iv) of the Policy.
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 names <ekcerd.com>, <ekcerds.com>, <ekerd.com>, <ekerds.com>, and <ekerddrugs.com> be transferred to the Complainant.
Paul E. Mason
Dated: October 11, 2003