The Complainant is L Rowland & Co (Retail) Ltd of Cheshire, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Hill Dickinson LLP, UK.
The Respondents are Domains by Proxy, Inc. of Scottsdale, Arizona, United States of America (“USA”) and Robert Pettifer of Warwickshire, UK. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) against Domains by Proxy, Inc. on August 20, 2010.
The Center transmitted its request for registrar verification to the Registrar on August 23, 2010. The Registrar responded on August 24, 2010, stating that it was in receipt of a copy of the Complaint, that the Domain Name was registered with it, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the registration, that the Domain Name would expire on August 11, 2011, and would remain locked during this proceeding, that the registration agreement was in English and that the Domain Name was registered through a privacy service. On the other hand, the Registrar stated that the Respondent as identified in the Complaint was not the registrant of the Domain Name. The Registrar identified the registrant as Robert Pettifer and provided the full contact details held in respect of the Domain Name on its WhoIs database.
The Center sent an email communication to the Complainant on August 25, 2010, 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 amended Complaint on August 27, 2010, adding Robert Pettifer as an additional respondent.
The Center verified that the amended Complaint satisfied the formal requirements of the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on August 30, 2010. In accordance with paragraph 5(a) of the Rules, the due date for Response was September 19, 2010. A Response was filed with the Center by the Second Respondent, Robert Pettifer, on September 19, 2010.
The Center appointed Jonathan Turner as the sole panelist in this matter on September 27, 2010. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel finds that the amended Complaint complied with applicable formal requirements, was duly notified to the Respondents and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules. 4. Factual Background
The Complainant has used the mark ROWLANDS PHARMACY since 1810 and now has over 500 pharmacies operating under this mark in the UK. The Complainant registered a device mark containing the words “rowlands PHARMACY” in the UK as of June 2000, which has been allowed to lapse, and a further device mark containing the same words (but all in lower case) in March 2010.
The Complainant became aware of the registration of the Domain Name in or about July 2010. At that date, the Domain Name was directed to a web page which promoted Lloyds pharmacy, a competitor of the Complainant. The Complainant’s advisers sent a cease and desist letter to the First Respondent which replied stating that it was a privacy service and asking the Complainant to provide details of its trademark and certification that the Domain Name was infringing it. The First Respondent said that if this was provided it would contact its customer and require it to reply to the Complainant; and if not, it would merely contact its customer.
Following this correspondence, the link to the web page promoting the competitor was removed and the Domain Name was directed to a holding page prepared by the Registrar advertising the sale of domain names. 5. Parties’ Contentions A. Complainant
The Complainant contends that it has rights in its registered mark for a device containing the words “rowlands pharmacy” and unregistered rights under the UK law of passing off in the mark ROWLANDS PHARMACY. The Complainant further contends that the Domain Name is confusingly similar to its registered mark and identical or confusingly similar to its unregistered mark.
The Complainant submits that the Respondents have no rights or legitimate interests in respect of the Domain Name. It points out that there is no relationship between the Complainant and the Respondents, that no permission has been granted to the Respondents to use the name “Rowlands Pharmacy”, that the Respondents have not been commonly known by the Domain Name, and that they have not used the Domain Name for a bona fide offering of goods and services. On the contrary, the Complainant complains that the Respondents have used the Domain Name to link to the website of a competitor, thus misappropriating the Domain Name in return for some form of remuneration.
The Complainant alleges that the Domain Name was registered and is being used in bad faith. The Complainant submits that the Second Respondent registered the Domain Name for the purpose of renting or otherwise commercially exploiting it and that one or both Respondents have intentionally attempted to attract, for commercial gain, Internet users to another on-line location (namely a competitor’s web page) by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of that location. The Complainant also alleges that the redirection of the Domain Name following its cease and desist letter to a web page offering it for sale by auction is further evidence of bad faith.
The Complainant requests a decision that the Domain Name be transferred to it. B. Respondent
The Second Respondent states that it has used the Domain Name mainly for email for approximately five years and that for the majority of this time there has not been a web page for this Domain Name apart from the default landing page of the Registrar. He says that he had no reason to visit the web page but at some point the Registrar started hosting advertisements on it, mainly for “slightly suspect” online pharmacies without consulting him; and this caused him to forward his web page to a different domain name as the default landing page was unsuitable. He states that over the years since then, the Domain Name has forwarded to various pharmacy-related blogs, websites etc., and that earlier this year it deep-linked to a pseudoscientific item on the Lloyds pharmacy website. He did not regard this as a major problem until he received a letter of complaint from the Complainant requesting its removal, which he states was actioned that day.
The Second Respondent asserts that he registered the Domain Name about five years ago mainly as a combination of his profession as a pharmacist and a name used in his family. He claims that he has had no problems with people mistaking the Domain Name as having anything to do with “Rowlands Pharmacy” and that he seldom gets any misidentified email as this will bounce back to the sender. He adds that the Domain Name normally forwards onto a website which obviously does not relate to pharmacy and hence there seems to be no possibility of confusion. He considers that he has become known by the Domain Name as an email address and that he has made legitimate noncommercial use of it without any intent for commercial or noncommercial gain or misleadingly to divert consumers or to tarnish any trademark. He also comments that he does not have a pattern of registering and selling domain names or registering gTLD domain names corresponding to other parties’ trademarks.
The Second Respondent insists that he has at no point offered to sell, rent or transfer the Domain Name to the Complainant or a competitor of the Complainant for valuable consideration in excess of his out-or-pocket costs. He maintains that the Domain Name has always been for his sole, personal use, that it was not registered to prevent the Complainant from reflecting its mark in a corresponding Domain Name, that he has not engaged in any pattern of such conduct, that he is not a competitor of the Complainant, and that the Domain Name was not registered to disrupt the Complainant’s business or to attract Internet users to an online location for commercial gain by creating a likelihood of confusion with the Complainant’s mark.
The Second Respondent respectfully requests the Administrative Panel to deny the remedy requested by the Complainant. 6. Discussion and Findings A. Preliminary observations
The Panel regards the Second Respondent as the “real” Respondent and will refer to him as the Respondent in the following discussion.
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is clear that these are cumulative requirements and it is therefore appropriate to consider each of them in turn.
The Respondent has not annexed to the Response any documentary evidence on which he relies as required by paragraph 5(b)(ix) of the Rules. The Panel will take this deficiency into account when evaluating the totality of the evidence. B. Identical or Confusingly Similar
The Panel finds on the evidence that the Complainant has unregistered rights in the mark ROWLANDS PHARMACY protected under the UK law of passing off as well as registered rights in a device mark comprising the words “rowlands pharmacy”.
The Panel further finds that the Domain Name is effectively identical to the word mark ROWLANDS PHARMACY and confusingly similar to the Complainant’s device mark. It is well established that the generic top level domain suffix may be discounted when making the comparison required by the first element of the UDRP. The Panel considers that many consumers in the UK would assume that the Domain Name belongs to the Complainant.
The first requirement of the UDRP is satisfied. C. Rights or Legitimate Interests
The only active use of the Domain Name by the Respondent, prior to the Complainant’s giving it notice of a dispute which has been substantiated in the evidence, was to direct it to a website promoting a competitor of the Complainant. The Panel does not regard this as a bona fide offering of goods or services. On the contrary, it was a use in bad faith, diverting consumers seeking information about the Complainant in the expectation that the Domain Name would direct them to a website of the Complainant to a competitor’s website.
It appears that the Respondent is not commonly known by the Domain Name. Nor does the Respondent appear to have made any legitimate noncommercial or fair use of the Domain Name. The Panel rejects the Respondent’s claim to have registered the Domain Name as a combination of his profession as a pharmacist and a name used in the family, given that (a) the Respondent’s name does not resemble the Domain Name; (b) there is no documentary evidence of the use of any similar name in the Respondent’s family; (c) there is no documentary evidence that the Respondent is a pharmacist; and (d) the Domain Name is obviously identical to a widely-known chain of pharmacies. The Panel finds on the evidence as a whole that the Respondent registered the Domain Name on account of its effective identity with the Complainant’s mark. In these circumstances, the Panel considers that the alleged use of the Domain Name by the Respondent for email was not legitimate noncommercial or fair use and not such as to confer a right or legitimate interest on the Respondent in respect of the Domain Name.
On the evidence, there does not appear to be any other basis on which the Respondent could have acquired any right or legitimate interest in respect of the Domain Name. The Panel finds that the second requirement of the UDRP is satisfied. D. Registered and Used in Bad Faith
As stated above, the Panel finds on the totality of the evidence that the Respondent registered the Domain Name on account of its identity with the mark used as the name of the Complainant’s extensive chain of pharmacies. The Panel further finds on the evidence as a whole that the Domain Name has been used intentionally to attract Internet users to a website promoting a competitor of the Complainant for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source of that website by means of the virtual identity of the Domain Name and the Complainant’s mark.
This use was continuing when the Complainant sent its cease and desist letter. The Respondent’s cessation of this particular use following that letter does not prevent it being sufficiently contemporary to qualify as current use for the purpose of this requirement of the UDRP. If respondents could forestall valid complaints by ceasing objectionable use on receipt of correspondence from the owner of a corresponding trademark, the UDRP would be rendered largely ineffective, or at any rate it would be impractical to seek to resolve a dispute except by submitting a complaint without prior warning to the respondent. The Policy cannot have been intended to have this effect and in the Panel’s view “is being used” in its paragraph 4(a)(iii) should be interpreted as including use at the time when the respondent receives notice of the potential dispute.
In the light of these findings the Panel concludes that the Domain Name was registered and is being used in bad faith. The third requirement of the UDRP is satisfied. 7. Decision
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, be transferred to the Complainant.
Jonathan Turner
Sole Panelist
Dated: October 4, 2010
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