WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION McKesson Corp. v. Texas International Property Associates- NA NA Case No. D2009-0341 1. The Parties
The Complainant is McKesson Corp. of San Francisco, California. United States of America, represented by Fenwick & West, LLP, United States of America.
The Respondent is Texas International Property Associates – NA NA of Dallas, Texas, United States of America, represented by Rothstein Rosenfeldt Adler, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Compana LLC, (herein the “disputed domain name”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2009. On March 16, 2009, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the disputed domain name. On March 17, 2009, Compana LLC 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” or “UDRP”), 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 March 19, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2009. The Response was filed with the Center on April 8, 2009.
On April 21, 2009 the Complainant submitted supplemental filings in reply to Respondent's Response. Subsequently, on April 22, 2009, the Respondent submitted supplemental filings objecting to Complainant's reply.
The Center appointed J. Nelson Landry as the sole panelist in this matter on May 25, 2009. 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
Upon considering the evidence submitted by both the Complainant, Annexes A to H and the Respondent, Annexes A to F, the Panel has retained the following facts from the Complaint and the Response (the Panel, as explained below, disregarded the Reply sent by the Complainant) which have been proven with documentary evidence, not been challenged or contradicted by the other party to these proceedings.
The Complainant was founded in the United States of America as Olcott and McKesson by Charles Olcott and John McKesson in 1833 as importer and wholesaler of therapeutic drugs and chemicals. By 1855 its distribution of pharmaceutical products under the trade mark McKesson's was already in 17 states.
Since at least 1870, the Complainant carried the distribution of its imported products for medicinal purposes under the trademark MCKESSON'S which was registered in 1931 as MCKESSON'S and relied on a first use going back to January 1870. As shown by the evidence of more than 17 additional registrations, (Annexes C and E) the majority and more recent incorporate the surname “McKesson”, (without the possessive “ 's” in MCKESSON'S) alone or in association with other terms and its use was diversified in several classes of products and services added over the years as reflected by the 10 classes of wares and 4 classes of services with the respective date of first use mentioned in each registration ( herein the “Trademark” or “Trademark McKesson”) .
The Complainant owns and uses amongst its promotional tools its website which includes 32 sections totaling 60 pages (Annex D) which support the data of the Complainant's activities quantified and commented herein as well as a group of 24 additional registered domain names all incorporating the Trademark McKesson (Annex F).
The Respondent registered the domain name (herein the “disputed domain name”) on February 19, 2005.
The Complainant did not license, permit or authorize the Respondent to register and use its Trademark in the disputed domain name or otherwise.
The Complainant did not send a cease and desist letter to the Respondent including a request to transfer the disputed domain name prior to initiating the present proceedings by filing its Complaint.
The Respondent does not own any trademark MecKesson nor is known by such surname.
The Respondent has parked the disputed domain name on its website which offers links to third party websites that offer amongst other products and services, medical and healthcare products and services directly competing with the Complainant's products and services offered under its Trademark McKesson. There are 17 related areas of research within which 7 pertain to medical supplies, health care, pharmaceutical activities corresponding to the activities of the Complainant (Annex G including 38 pages).
According to the evidence (Annex H) the Respondent has been involved as a respondent in over 200 administrative proceedings analogous to the present one by reason of having registered domain names which the different panels found incorporating the 3 criteria under the Policy and ordered the transfer. The Respondent's counsel mentions in the Response that the Respondent was successful in having the complaints dismissed in 15 other instances and agreed within the 200 to transfer an undisclosed number of other domain names involved in said administrative proceedings. 5. Parties' Contentions A. Complainant
The Complainant submits that it has continuously and progressively used the Trademark McKesson in association with therapeutic drugs, chemicals, medical and healthcare products and services which it has promoted and sold predominantly in the United Sates of America for almost 200 years to become the largest pharmaceutical distributor in North America, in excess of 150,000 products offered and sold to more than 300,000 physicians and customers. It has promoted its Trademark on its website with the assistance of more than 24 registered domain names, each incorporating the Trademark McKesson. Further assistance and promotion resides in Complainant's program to help educate patients about healthcare and physicians rely on and consult Complainant's physician portal which is consulted more than 3.7 million times per month.
The Complainant represents to be ranking 18 on the Fortune 500 in 2008 with annual revenues in excess of USD 100 billions, and to be the largest pharmaceutical distributor in North America.
The Complainant further submits that is Trademark is distinctive and it has well established rights in it.
According to the Complainant, the disputed domain name differs only by the addition of the letter “e” and of the “.com” a Top Level Domain which additions according to earlier UDRP decisions do not diminish the fact that the domain name in dispute is confusingly similar to its Trademark. See Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; Valpak Direct Marketing Systems, Inc. v. Manila Industries Inc., WIPO Case No. D2006-0714; United Feature Syndicate, Inc. v. Mr. John Zuccarini, WIPO Case No. D2000-1449 and Wal-mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico,WIPO Case No. D2000-0477.
The Complainant represents that on the basis of the absence of any license, permission or authorization given by it and the fact that the Respondent is not commonly known by “MecKesson” or the disputed domain name and the absence of any other connection to any “Meckesson” designation, the Respondent has no rights or legitimate interests in the disputed domain name. See Tercent Inc. v. Lee Yi, NAF Claim No. FA139720. The Complainant further represents that the Respondent in parking the disputed domain name and offering links to third party websites that offer competing products and services with those of the Complainant, the said Respondent has not engaged in any bona fide offering of goods and services or any fair use of the disputed domain name.
The Complainant contends that in view of the facts herein, such as diverting Internet users to a competing website for commercial gain the disputed domain name was registered and used in bad faith. See National Association for Stock Car Auto Racing, Inc. v. RMG Inc. – BUY OR LEASE by E-MAIL,WIPO Case No. D2001-1387; REO Speedwagon, Inc. v. Domain Administrator, NAF Claim No. FA910799; State Farm Mutual Automobile Insurance Company v. David Haan, NAF Claim No. FA 948470 and Google Inc. v. Forum LLC, NAF Claim No. FA 1053323.
The Complainant further contends that in misspelling the Trademark by the addition of a letter “e” and gTLD “.com” the Respondent creates confusion with the Trademark and diverts Internet visitors to the its website with links to those of other parties that offer competing products and services to those of the Complainant and thus confirms a registration and use of the disputed domain name in bad faith. See Philip Morris Inc. v. , WIPO Case No. D2003-0004; Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556; Sharman License Holdings, Limited v. IcedIt.com, WIPO Case No. D2004-0713; AltaVista Company v. Saeid Yomtobian,WIPO Case No. D2000-0937. B. Respondent
The Respondent requests that the Panel deny the relief requested by the Complainant.
The Respondent contends that the Complainant does not have any rights in the Trademark necessary to bring the present action for the reason that the rights based on its registration in the United States Trademark and Patent Office do not automatically provide a right of action under the Policy. In this respect, it relies on two panel decisions denying the transfer of the domain names and . See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047 and Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd., NAF Claim No. FA406512.
The Respondent further contends, on the basis of Exhibit A, a telephone white pages survey, that McKesson is a very common surname in the United States and that the Complainant did not properly cite the Reuters Limited, supra, decision which missing part was mentioning “where the trademark is highly distinctive” and states that on the bases of Google searches in comparing Reuters and McKesson the Complainant cannot claim the same level of distinctiveness in applying the test laid down by the panel in Reuters Limited, supra. It also criticized the Valpak Direct Marketing Systems Inc., supra, decision wherein the panel noted that the disputed name therein did not appear to be or called to mind a common word and there was no need to compare it as it would have to if it was an identifiable word.
The Respondent represents that the disputed domain name was registered as part of a plan to gather domains similar to surnames such as “McKesson”, “MacKesson” and “Kesson” for future use (Exhibits A, D and E).
The Respondent distinguishes the United Feature Syndicate, Inc., supra, relied upon by the Complainant on the ground that Dillbert has 5 millions results on a Google search compared to 1.4 million for “McKesson” and concluded that the Complainant's Trademark lacks this distinctiveness.
Having stated that “McKesson” is a surname, the Respondent represents that “Meckesson” is a surname distinct from that of the Complainant's Trademark and relies on a United States Court decision which takes into consideration the context-specific-concept in assessing similarity, see Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002).
The Respondent provided further examples of absence of confusion similarity between the “BROADCOM” trademark and domain name; see Broadcom Corporation v. Smoking Domains, NAF Claim No. FA137037 or between and “ABERCROMBIE” because the former created a new word and therefore in the present case, one should take into consideration an entirely new meaning and entirely different surnames upon considering what the Respondent calls the “alleged mark” and the domain name, see A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., and Abercrombie & Fitch Trading Co., Inc. v. Chad Nestor,WIPO Case No. D2003-0260.
The Respondent concluded its representation that the protection of a surname under the Policy is extremely limited in relying on UDRP proceedings wherein the domain names were , and to reiterate that in holding such a weak trademark, it would be difficult if not possible to claim that another surname was confusingly similar. See Etam, plc v. Alberta Hot Rods,WIPO Case No. D2000-1654; Rusconi Editore S.p.A. v. FreeView Publishing Inc.,WIPO Case No. D2001-0875 and Deanna S.p.A. v. Worldwide Media Inc.,WIPO Case No. D2003-0964.
In respect of the second criterion of rights and legitimate interests in the disputed domain name, the Respondent relies on a WIPO decision which held that “the provision of such click-through services do constitute a bona fide offering of the service unless bona fides of the offering is tainted by evidence of bad faith”. See Super Supplements, Inc. v. Vertical Axis, Inc.,WIPO Case No. D2008-0244.
In respect of its contract with Hitfarm which connect the latter's website to the disputed domain name, the Respondent stated that “there is no intent to target Complainant and Complainant [in the Panel's view likely referring to the Respondent] has asked that the domain name be disabled temporarily and that the links on the site are not related to the Complainant's goods and services.” The Respondent relies on the facts that a domain name holder is not responsible for the potentially offending content when there are contracts with third party that controls the content, such as with Google or Yahoo; See Admiral Insurance Services v. Mr. Adam Dicker Limited,WIPO Case No. D2005-0241 and Experimental Aircraft Association (EAA) v. EAA.COM, NAF Claim No. FA206309.
The Respondent alleges that it may use descriptive terms for commercial domain names or typos of such terms such as “”; see Eastbay Corporation v. VerandaG, Inc., NAF Claim FA105983 and Energy Source Inc. v. Your Energy Source, NAF Claim FA96364 or common words and generic terms which are legitimately subject to registration as domain names; names on a “first-served basis”. See Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich,WIPO Case No. D2000-0161; Miller Brewing Company v. Yunju Hong, NAF Claim No. FA192732; Successful Money Management Seminars, Inc. v. Direct Mail Express, NAF Claim No. FA96457 and Churrascaria Porcão v. Prime Products International Inc.,WIPO Case No. D2001-0535 or using a generic phrase to connect generic concept with search keyword in order to provide advertisers with targeted customers traffic is a legitimate business. See GLB Serviços Interativos S.A. v. Ultimate Search Inc (aka Ult. Search Inc),WIPO Case No. D2002-0189 and similarly for “High Life” as a legitimate use in a search engine portal in Miller Brewing Company, supra, and Eastbay Corporation, supra.
The Respondent represents that it has registered and used the disputed domain name for similar purposes over a period of four years before receiving notice of the present Complaint.
The Respondent concluded that a common term, a generic term or the use of an acronym combined with a descriptive phrase does establish the owner's rights and legitimate interests in such domain names. See Shirmax Retail Ltd. V. CES Marketing, Inc., Case No. AF-0104 (); General Machine Products Company Inc. v. Prime Domains (a/k/a Telepathy, Inc.), NAF Claim No. 92531 (); Car Toys, Inc. v. Informa Unlimited, Inc., NAF Claim FA93682 (); CRS Technology Corp. v. Condenet, Inc., NAF Claim No. FA93547 (); Nicholas V. Perricone, M.D. v. Martin Hirst, NAF Claim No. FA0095104 (); Zero International Holding GmbH & Co. Kommanditgesellschaft, supra (); PRIMEDIA Special Interest Publications, Inc. v. John L. Treadway,WIPO Case No. D2000-0752 (); First American Funds, Inc. v. Ult.Search, Inc.,WIPO Case No. D2000-1840 (); Council of Better Business Bureaus, Inc. v. Server 100,WIPO Case No. D2006-0443 ().
In respect of the third criterion, registration and use both in bad faith, the Respondent states that “there is no evidence in the Complaint that the Respondent was aware of Complainant at the time the disputed domain name was registered and, to be clear, Respondent was not aware of Complainant at that time” and represents that in such unawareness how could it have bad faith intentions. See The Way International, Inc. v. Diamond Peters,WIPO Case No. D2003-0264.
Having represented that it owns thousand of registered domain names consisting of generic words of which it specifically mentioned 37 of them such as , , , as well as proper names with four specifically mentioned: , , and , selected by the Panel as illustrative.
The Respondent relies on the three-member UDRP panel decision involving the domain name to represent that “pay-per-click websites are not in and of themselves unlawful or illegitimate” and that the Complainant has provided little evidence that the disputed domain name was selected for a free ride upon Complainant's Trademark and that there has been no showing of confusion by the consumers and Internet users. See Mc Mullen Argus Publishing Inc. v. Moniker Privacy Services/Jay Bean, MDNH, Inc.,WIPO Case No. D2007-0676 and Terana, S.A. v. RareNames, WebReg,WIPO Case No. D2007-0489. In this later decision, as cited by the Respondent, the panel stated that “An inference of targeting may be drawn from the inherent distinctiveness of the mark in question or from the circumstances that the mark is famous or well-known” which distinctiveness the Respondent challenges.
In Drew Bernstein and Kill City d/b/a Lip Service v. Action Advertising, Inc.,WIPO Case No. D2000-0706, the Respondent seeks support in the panel explaining that the term “lipservice” in the domain name under consideration is not an arbitrary or coined term nor a distinctive mark but a common English phrase, similarly to “Grocery Outlet”. The Respondent reiterates that in the absence of actual knowledge of Complainant's business mere registration without actual knowledge does not impute a finding of bad faith. See New Jersey Divorce Center, Inc. v. iGenesis Limited, NAF Claim No. FA584783.
The Respondent acknowledges its involvement in a number of UDRP decisions. However it represents that it “consented to transfer in a number of those proceedings” in which for a vast majority no analysis was done. The Respondent further represents that it prevailed in 15 decisions and finally has prevailed in a jury trial after a previous UDRP panel ordered the transfer, The Southern Company v. Texas International Property Associates,WIPO Case No. D2007-0773 and has reached a settlement of a number of lawsuits brought in respect of challenging UDRP decisions such as in Fifth Third Bancorp v. Texas International Property Associates,WIPO Case No. D2007-0537. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights, and
(ii) The respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith. Preliminary comments
Prior to engaging into the discussion, the Panel considers appropriate to comment firstly on the Reply submitted by the Complainant to which the Respondent objected and secondly on the quality and limited or borderline sufficiency of the evidence of the Respondent in this case.
It is not contemplated under the Policy that a party may provide additional submission such as the Reply of the Complainant pursuant to the Response filed by the Respondent, even if it was within the delay before Panel was appointed. As mentioned in earlier cases, CRS Technology Corporation v. Condenet, Inc., supra, the Rules are clear and are designed to create a system of adjudication that resolves these disputes as rapidly as possible with the least amount of cost to both parties. These are the rules of this forum selected by the Complainant and they must be applied herein. For these reasons, the Panel has not taken into consideration the Reply submitted by the Complainant and considers that this is not causing any hardship to the Complainant.
While both parties have adduced as evidence about the same number of Annexes or Exhibits, those by the Complainant were elaborate with a considerable amount of facts proven and the Respondent has presented in many instances only one page exhibits and failed to explain its decisions in selecting the disputed domain name and the alleged contractual relationship with Hitfarm, the involvement of Google and Yahoo of which this Panel could not take judicial notice in lieu of documentary evidence. This very limited evidence is surprising to the Panel when one considers that the Respondent acknowledges having registered thousands of domain names and been involved in over 200 UDRP proceedings in which the transfer was ordered. A. Identical or Confusingly Similar
According to the evidence on its website, (Annex D, over 50 pages) McKesson is the surname of one of the two founders Olcroft and McKesson, two very distinct and dissimilar surnames, of the predecessor of the Complainant which carries out business of importing and selling wholesales of therapeutic drugs and chemical started in 1833. A first trademark registration for MCKESSON'S was registered in 1931 claiming first use since 1870. Subsequently, 16 other registrations were obtained in the United States, three of which incorporating the surname “McKesson's” while the other were “McKesson” with “Robbins” in one instance and “McKesson” alone or with other terms such as “Advantages”, or “Info link”.
The company grew to become the largest pharmaceutical distributor in North America, selling to more than 8.5 billion pharmacy transactions annually covering more than 150,000 medical chirurgical products to more 300,000 physicians' offices and other customers which business according to Fortune 500 ranked Complainant 18th in 2007, with USD101 billions in annual revenue. The Complainant developed a physician portal which is used 3.7 million times per month by physicians to gain secure access to their patients records. According to the uncontradicted evidence of the Complainant further mentioned on its website, Annex D, it did rank in number 18 to 44 for the years 2005 to 2008 on Fortune 500 or Fortune Global 500. Within the great resources used by the Complainant to promote and advertise its McKesson products and services, the Complainant has registered and used 24 domain names each incorporating MCKESSON in ten instances with GTL plus 14 others with another term added to MCKESSON.
While “McKesson” is a surname, it can be registered and used as a trademark in the United States as demonstrated by the 17 registrations within the evidence adduced by the Complainant (Annexes C and E).
The Respondent challenges the rights of the Complainant in the Trademark McKesson in representing that “McKesson” is a very common surname, over 300, in the United States and it associates the surname with other generic terms in domain name such as in Eauto, L.L.C., supra; in Starwood Hotels & Resorts Worldwide, Inc., supra; in 9 Squared, Inc.v. Mass Management Limited, NAF Claim No. FA811932; in Broadcom Corporation, supra, and a group of UDRP decisions where the trademark and domain name contain a common female name such as “Tammy”, “Donna” and “Deanna”. Upon reviewing these decisions which by the nature of the trademarks and domain names are distinguishable from the present situation in that none of these incorporate a surname, the panel declined to find confusion on the basis of different grounds such as no common law rights in 9 Squared, Inc., supra, a combination with other terms in Broadcom Corporation, supra the absence of rights in the various trademarks comprised of a common female name in that they were weak marks that had been used for a short period and had not achieved secondary meaning. To this Panel “McKesson” as a surname is much closer to a coined or fanciful term, not descriptive or generic word as “White”, “Grey” or “Maplewood” is.
The Panel finds that the Complainant has rights in this Trademark which has achieved secondary meaning, is most distinctive of the Complainant for long time use in association with its line of medical products and associated services as exemplified in the said registrations. This Panel finds that the Complainant enjoys rights in a very distinctive Trademark with which considerable goodwill if not fame is associated. The disputed domain name differs from the Trademark McKesson by the simple addition of the letter “e” in “MecKesson” and these two terms are phonetically identical. The further addition of the term “.com”, top level domain, does not in any way diminish the likelihood of confusion. Contrary to the Respondent stating that the two are “entirely distinct and dissimilar”, the Panel is of the view that “MecKesson” is as close as a word can be with MCKESSON without being identical and there is no need to adduce further evidence of confusion. “Olcott” and “McKesson” would be two distinct and dissimilar surnames.
The Panel finds that the disputed domain name is confusingly similar with the Trademark McKesson of the Complainant.
The first criterion has been met. B. Rights or Legitimate Interests
The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interest in the disputed domain name by stating that the Respondent has never been known by the name “MecKesson” or the domain name in dispute is not engaged in a legitimate noncommercial or fair use of the disputed domain name. Furthermore, the Complainant has stated that the Respondent has no legitimate relationship to the Complainant giving rise to any licence, permission or authorisation for use of the disputed domain name and further stated that the Respondent is not commonly known by “MecKesson” or the disputed domain name and owns no relevant trademark application or registration for any of them. The Respondent has filed a Response in these proceedings. The Respondent has not contradicted this absence of relationship with the Complainant and has not provided any evidence as being commonly known by the disputed domain name or “MecKesson”.
The Respondent attempts to show that it has rights and legitimate interest in the domain name in relying in the Super Supplements, Inc. panel decision, supra, and it quotes the panel as follows: “Many panels have found that the provision of such click-through services do constitute a bona fide offering of the services unless the bona fides of the offering is tainted by evidence of bad faith”. Then the Respondent relies on numerous decisions where the domain names or trademarks are characterized as descriptive or generic terms, descriptive words or phrases, common words or generic terms and other expression of the same nature. A review of the UDRP panel decisions cited by the Respondent reveal that the terms or words used as domain names were such as “final score”, “high life”, “thyme”, “craftwork”, “cartoys”, “concierge”, “wrinklecure”, “zero”, “shutterbug” and “first American and better business online”, all corresponding to common or generic terms or combination of terms characterized by the Respondent. None of these cases refer to a surname and even less to a surname that has been used as a trademark for many decades and generated billions in general annual revenues.
The Respondent submits that there is no bad faith on its part in registering and using the domain name and states that it was unaware of the trademark of the Complainant when it registered the disputed domain name. In light of the circumstances this statement under the signature of the attorney for the Respondent is to say the least surprising and difficult to accept by this Panel.
The statement of the panel in Terana, S.A., supra, cited by the Respondent is eloquent and of relevant application in the present proceedings: “An inference of targeting may be drawn from the inherent distinctiveness of the mark in question or from the circumstance that the mark is famous or well-known”. The Panel has already found herein that the Trademark McKesson is most distinctive, well-known on the basis of the evidence adduced and that the disputed domain is as confusingly similar as it can be. The inference is present for the Panel.
The uncontradicted evidence is that the Respondent who declares that it has registered thousands of domain names, has also been involved in about 200 UDRP proceedings in which an administrative panel found that the Respondent had registered a domain name confusingly similar to another party's trademark where it had no right to such domain name and where the Respondent has registered and used the domain name in bad faith.
The Respondent, located in the United States, certainly had constructive notice of all these registered Trademarks of the Complainant before the United States Patent and Trademark Office and many of which by the length of there being of the register had become incontestable.
It is most surprising to this Panel that the Respondent having already been involved in over of at least hundreds UDRP proceedings, would not have verified whether there is a trademark registration for MCKESSON, MACKESSON and KESSON, the family of similar domain names that the Respondent represents it has registered and yet provided no evidence for those two other than the disputed domain name. If the Respondent did not verify the United States Federal Trademark Register, it is most likely by voluntary blindness for fear of finding that there was a surname very close to or confusingly similar to the disputed domain name it had selected to register. As held by the panel in Super Supplement, Inc. decision, supra, cited by the Respondent, click-through is common business when there is no evidence of bad faith and the registrant could not be reasonably expected to know that it was identical or similar to a registered trademark (underlining by the Panel). The Panel within minutes was able to find on the United States Trademark Register surnames starting with “Mc…” such as “McNicoll” and “McSween” which did not correspond to a registered trademark. Why did the Respondent not choose any of these? Why did it not explain its choice of MecKesson? This may have assisted in attempting to rebut the presumption raised by the Complainant.
In addition to the constructive notice arising out to the Federal Registrations, this Panel finds that upon the evidence adduced by the Complainant which demonstrates the long use, promotion and business success under the Trademark across the United States and its acknowledgement in the Fortune 500, the Respondent, located in the United States could be considered as reasonably expected to know about this Trademark and its long standing widespread use in association with medical products and related services in the United States. In this Panel's view this is another flaw in attempting to rebut the presumption raised by the Complainant.
Considering this evidence, the Panel is of the view that the services offered by the Respondent are tainted of bad faith. The Respondent refers to the contractual relationship with “Hitfarm which connects its own website to the disputed domain name to offer a legitimate business of targeted advertising searches … and are actually undertaken in connection with industry leaders Google and Yahoo”. A review of the evidence adduced by the Complainant, in particular Annex G, which pertains to the disputed domain name, reveals on the welcome page of the “meckesson” website listings of several related searches within which there are three main headings related to health such as health care, medical manager and medical, while in the second group of 12 items there are six pertaining to medical activities such as long term care, pharmacy, technician job, drug companies, homecare, pharmaceutical and five other relating to MCKESSON, the Trademark of the Complainant, such as “McKesson Medical Supplies”, “McKesson News”, “McKesson Maryland”, “McKesson Products” and “McKesson automation”. However, upon considering the page on “McKesson Medical Supplies”, we find five subentries in which none refer to a website of the Complainant, such as “McKesson Medical Supplies” refer to “www.ActiveF” and “McKesson Medical Supply” refers to “” and other different links for the three others. When we observe the page about shopzilla for McKesson Medical Supply, there is reference and links to five other websites not related to MCKESSON or the Complainant.
It is most difficult for this Panel to accept that this is coincidence and solely the result of the work of Google, Yahoo and Hitfarm in the absence of any evidence to support this alleged contractual relationship and such representation. There are certainly here activities by the Respondent that can be characterized as inducing and procuring by the very selection of the disputed domain name. The Panel finds that the Respondent has not adduced sufficient and adequate evidence to support its representations and rebut the presumption created by the Complainant and that the click-through system used by the Respondent is tainted with bad faith evidence.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name that is as close and similar as it can be to the surname in the Trademark of the Complainant and that the disputed domain name is certainly not entirely distinct from and dissimilar to the Complainant's Trademark.
The second criterion has been met. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
The Complainant contends that the domain name was registered and used in bad faith.
The Respondent represents that it did not register the domain name in bad faith nor use it in bad faith having stated that “there is no evidence in the Complaint that the Respondent was aware of the Complainant at the time the disputed domain name was registered and, to be clear, the Respondent was not aware of the Complainant at that time”.
Many of the facts and circumstances observed under the second criterion do apply under the third in respect of the presence of bad faith upon registration and alson use of the disputed domain name. This may explain some repetition herein.
The Respondent acknowledges that McKesson is a surname and states that ‘“Meckesson” is a surname distinct to that used by the Complainant for its mark' (paragraph 10) and reiterates at the end of its argument that “it has registered a surname which is entirely distinct from and dissimilar to the Complainant's mark.” The Respondent further adds “while Hitfarm have place links related to Complainant's products, the agreement between Respondent and TIPA as to that webpage has been terminated” (paragraph 23).
The Respondent states that “the disputed domain name was registered as part of a plan to gather domains similar to surnames such “McKesson”, “MacKesson” and “Kesson” for future use” and provides three one-page exhibits in evidence in this respect which are searches on the white pages showing the number of appearances of these three names in the white pages namely over 300 results matching McKesson (exhibit A), 9 for Mackesson (exhibit D) and 138 for Kesson (exhibit E).
The Respondent does not adduce any documentary evidence to show that it has, in fact, registered domain names identical to or similar to “MacKesson” and “Kesson”. While according to the Respondent there was allegedly a plan to register domain names around or incorporating these three surnames, it does not explain why these three were chosen as opposed to many other surnames such as “McNicoll”, “McSween”, “McPherson”, ‘McInnis” and “McCutcheon” to name only a few surnames starting by “Mc” which may be modified by the addition of the letter “e”. The Panel has verified and observed that there are no United States trademark registrations for the first two.
The Respondent states simply that it has registered thousand of domain names. Then it attempts to diminish the impact of the statement and evidence of the Complainant that the Respondent has been engaged in over 200 UDRP proceedings, in fact 203 according to Annex H of the Complainant, in which Annex H these cases are all tabulated, 88 under WIPO proceedings and the balance under National Arbitration Forum (NAF) with the case number, domain names, identity of the complainant, the respondent and the decision to transfer these domain names.
The Respondent states that “a number” have been transferred by consent, a number not particularized in quantity nor with reference to entries in exhibit H. It states that it prevailed in 15 instances again without any detail or reference to Annex H. The Panel considers that if the number of transfer by consent was same or higher than 15, it would have been natural to mention the precise number to the Panel and furthermore to identify these within the Annex H. Why again did the Respondent remain so general or vague in its mere statement when the list exhibit H was available?
It is also interesting to note in the Response, at paragraph 18, the example of the 37 domain names listed therein as registered by the Respondent, which all comprise a generic or descriptive term, geographical part such as “Porto Rico”, “San Francisco” as well as four additional domain names constituted of proper names namely, “, , and ”; there is not a single surname in the examples mentioned by the Respondent in said paragraph 18 or elsewhere as part of its list of registered domain names by the Respondent. Interestingly, within exhibit H, under in Schering-Plough Corporation v. Texas International Property Associates,WIPO Case No. D2008-1557; we find in F. Hoffmann-La Roche AG v. Texas International Property Associates – NA NA, WIPO Case No. D2008-0752; in Eli Lilly and Company v. Texas International Property Associates-NA NA,WIPO Case No. D2008-0584, where the complainant is Eli Lilly and Company; in Vitalife, Inc. dba Tabak's Health Products v. Texas International Property Associates,WIPO Case No. D2007-0507, where the complainant is Vitalife, Inc. dba Tabak's Health Products and in Abbot Laboratories v. Texas International Property Associates- NA NA, NAF Claim No. FA1227146, where the complainant is Abbott Laboratories. All of these do comprise a surname and are companies involved in medication, health products for a transfer were ordered.
All of these activities have been caused and induced by the Respondent who did choose the surname “MecKesson” very close to the Trademark. Not only the Panel disagrees with the Respondent in its statement that it has registered a surname which is entirely distinct from and dissimilar to the Trademark, the Panel finds that “MecKesson” with the sole and small difference of the “e” added is as close to MCKESSON can be without being identical. The Trademark, while it is a surname, is not descriptive or generic as “Green”, “White” or “Maplewood” but is rather very analogous to a coined or fanciful word.
In view of the elaborate evidence adduced by the Complainant which this Panel finds more conclusive as to its distinctiveness than a simple number of appearances under Google, namely 1,410, 000 for “McKesson” (exhibit C) compared to “Reuters”, 989,000,00 (exhibit B) and “Dillbert”, 5,210,000 (exhibit F). To this Panel, 1, 410,000 hits for “McKesson” on Google do not at all corroborate that it is a generic descriptive common surname or a weak trademark or one that lacks distinctiveness. The only page of exhibit C of the Respondent, Google search pertaining to “McKesson” shows that McKesson has distributed its products and services since 1833. The length of use of the Trademark over hundred years, its promotion, its acknowledgement by Fortune 500, the volume of business generated annually are to this Panel much more significant evidence of the distinctiveness of the Trademark and the goodwill associated therewith.
In the light of the above, it is highly unlikely to this Panel that the Respondent was not aware of the Complainant or of its activities under the Trademark and was acting in good faith in registering the disputed domain name.
The Panel finds that the disputed domain name was registered in bad faith.
The Panel has already found that the disputed domain name is confusingly similar with the Trademark and the Respondent has acknowledged receiving revenues from the click-through services. The Panel finds that the activities of the Respondent fall within paragraph 4(b)(iii) of the Policy and in particular example paragraph 4(b)(iv) in that in registering and using the disputed domain name the Respondent has intentionally attempted to attract for commercial gain, Internet users, to its website by creating a likelihood of confusion with the Complainant's Trademark as to source, sponsorship, affiliation or endorsement of the website or of the products or services on the website.
The Panel finds that the Respondent has registered the disputed domain name in bad faith and also used the same in bad faith.
The third criterion has been met. 7. Decision
The Panel concludes that:
(a) the domain name is confusingly similar to the Complainant's Trademark;
(b) the Respondent has no rights or legitimate interests in the disputed domain name;
(c) the disputed domain name has been registered and is being used in bad faith.
Therefore, in accordance with Paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
J. Nelson Landry
Sole Panelist
Dated: June 8, 2009
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