The Complainant is London Drugs Limited of Richmond, British Columbia, Canada, represented by Bull, Housser & Tupper LLP of Vancouver, British Columbia, Canada.
The Respondent is Not Available, Mihail Medved of St. Petersburg, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with B, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2010. On November 11, 2010, the Center transmitted by email to B, Inc. a request for registrar verification in connection with the disputed domain name. On November 12, 2010, B, Inc. 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 November 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 9, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 10, 2010.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on December 16, 2010. 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. Language of the proceedings
The Panel notes that paragraph 11(a) of the Rules provides:
"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
The Complainant did not have access to the relevant registration agreement at the time of filing the Complaint, and submitted arguments as to why the language of the proceedings should be in English. On November 12, 2010, the Registrar confirmed that the language of the registration agreement is English.
In the circumstances, the Panel determines under paragraph 11(a) of the Rules that the language of these proceedings be English. 4. Factual Background
The Complainant is a Canadian company that has been operating in the pharmaceutical industry for over 64 years, operating 73 drug stores in Canada as well as an online store which sells non-prescription products and other health supplies. The Complainant markets its drugstores using the LONDON DRUGS trade mark and the Complainant owns many trade mark registrations for, or incorporating, LONDON DRUGS in a number of jurisdictions throughout the world.
The Respondent appears to be an individual resident of Russia. The Respondent registered the Disputed Domain Name on October 17, 2010. As at the date of filing the Complaint, the Disputed Domain Name resolved to an online store selling pharmaceutical products (the "Website"). The Complainant's domain name was prominently displayed on the Website in the form of a banner and copyright notice which acknowledged that the copyright in the Website belonged to "". Since the date of filing the Complaint, the Website was removed and as at the date of this decision, the Disputed Domain Name did not resolve to an active web page. A cached copy of the Website may still be accessed via an Internet search, and the Complainant annexed copies of screen shots of the Website captured on November 7, 2010 to the Complaint. 5. Parties’ Contentions A. Complainant
The Complainant's contentions can be summarised as follows:
(a) The Disputed Domain Name is confusingly similar to the Complainant's LONDON DRUGS mark. The distinctive element of the Disputed Domain Name is the Complainant's LONDON DRUGS mark and the remaining element (i.e. "-ca") is a non-distinctive expression intended to refer to the fact that the Complainant's business is associated with or based in Canada;
(b) The Disputed Domain Name is confusingly similar to the domain names and registered by the Complainant;
(c) The Respondent does not have rights or legitimate interests in the Disputed Domain Name. The Respondent registered the Disputed Domain Name more than 60 years after the Complainant began using the LONDON DRUGS trade mark, for the purpose of obtaining commercial gain by knowingly misleading consumers to believe that the Respondent is associated with the Complainant's LONDON DRUGS brand;
(a) The Respondent is not and has never been known by the Disputed Domain Name;
(b) The Complainant has not authorised the Respondent's use of the LONDON DRUGS trade mark;
(c) Given the extensive fame of the Complainant's LONDON DRUGS trade mark, the Respondent must have known of this trade mark at the time of registering the Disputed Domain Name. This is evidenced by the Respondent's display of the Complainant's domain name on the website to which the Disputed Domain Name resolves. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true. See Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403; Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(i) the Disputed Domain Name 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 interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in respect of the LONDON DRUGS trade mark on the basis of the many trade mark applications/registrations owned by the Complainant for, or incorporating, LONDON DRUGS in numerous jurisdictions, including Canada, the United States of America, Republic of Korea, the European Union and Hong Kong SAR of China, as well as on the basis of its use of this trade mark in Canada in relation to drug stores and general merchandising retail store services since 1946.
It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the suffix, in this case “.com” should be disregarded (Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd,WIPO Case No. D2006-0762).
The Disputed Domain Name incorporates the Complainant's LONDON DRUGS mark in its entirety. The only difference between the Disputed Domain Name and the Complainant's LONDON DRUGS mark is the inclusion of "-ca" as a description. It is well-established that in cases where the distinctive and prominent element of a disputed domain name is the complainant's mark and the only addition is a generic term that adds no distinctive element, such an addition does not negate the confusing similarity between the disputed domain name and the mark. See Oakley, Inc. v. Joel Wong/BlueH- INC,WIPO Case No. D2010-0100; Diageo Ireland v. Guinnessclaim,WIPO Case No. D2009-0679; and The Coca-Cola Company v. Whois Privacy Service,WIPO Case No. D2010-0088.
The Panel finds that "londondrugs" is the distinctive and prominent component of the Disputed Domain Name and the addition of "ca" does nothing to distinguish the Disputed Domain Name from the Complainant's trade mark. Given that the Complainant conducts business in Canada, the "-ca" component of the Disputed Domain Name if anything serves to increase the likelihood that consumers will be misled into thinking that the Disputed Domain Name is somehow associated with the Complainant.
The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the LONDON DRUGS marks in which the Complainant has rights, and that element 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that there is insufficient evidence to show that the Respondent has any rights in any trade marks or service marks which are identical, similar or related to the Disputed Domain Name. Therefore, the Panel will assess the Respondent's rights in the Disputed Domain Name (or lack thereof) based on the Respondent's use of the Disputed Domain Name in accordance with the available record.
The Panel accepts that the Complainant has not authorised the Respondent to use the LONDON DRUGS trade mark. The Panel further accepts that the Respondent has not become commonly known by the Disputed Domain Name.
Accordingly the only way for the Respondent to acquire rights or legitimate rights in the Disputed Domain Name for the purposes of 4(a)(ii) of the Policy would be through use of the Disputed Domain Name for legitimate noncommercial purposes or in connection with a bona fide offering of goods or services.
Before the Website was taken down (and at the time of filing the Complaint), it contained a copyright notice stating that copyright in the Website belonged to "www.", a domain name which has been registered and used by the Complainant for many years, as well as a further reference to the Complainant's domain name which was placed prominently at the top of the Website. The reference to the Complainant's domain name on the Website suggests that the Respondent was aware of the Complainant's LONDON DRUGS trade mark and domain name, and that the Disputed Domain Name (and the Website to which it resolved) was being used in order to create an impression of association or affiliation with the Complainant, its marks and the goodwill attached to them. Using a domain name to intentionally trade on the fame or reputation of another constitutes unfair use, and cannot amount to a bona fide offering of goods or services: Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”, WIPO Case No. D2000 0847.
The Panel accordingly finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy in respect of the disputed Domain Name. C. Registered and Used in Bad Faith
Evidence of bad faith includes actual or constructive notice of a well-known trade mark at the time of registration of a domain name by a respondent. See Samsonite Corporation. v. Colony Holding, NAF Claim No. FA 94313. The Panel accepts that the Respondent was aware of the Complainant's LONDON DRUGS trade mark at the time of registering the Disputed Domain Name. This is due to the amount of goodwill of the Complainant's LONDON DRUGS mark, as well as the fact that the Website contained references to the Complainant's domain name (including a copyright notice which stated that the copyright in the Website belonged to "www."), before it was taken down. The fact that the Respondent removed the Website after the Complaint was filed may also suggest that the Respondent was acting in bad faith when registering and using the Disputed Domain Name.
The Panel also finds that the Respondent is attempting to attract Internet users to the Website by creating a likelihood of confusion with the Complainant's LONDON DRUGS trade mark as to the source, sponsorship and affiliation of the Website and with a view to attracting business from the Complainant's potential customers due to a perceived connection with the Complainant.
In the circumstances, the Panel finds that the Respondent has registered and is using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been 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.
Gabriela Kennedy
Sole Panelist
Dated: December 29, 2010
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