Savondrugstore.com

The timeline behind savondrugstore.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION Albertson's Inc. v. Colima Medical Center Claim Number: FA0106000097699 PARTIES Complainant is Albertson's, Inc., Boise, ID, USA ("Complainant") represented by David J. Steele, of Christie, Parker & Hale LLP. Respondent is Colima Medical Center, Glendale, CA, USA ("Respondent"). REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <savondrugstore.com> registered with Network Solutions. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding. Judge Ralph Yachnin, as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 20, 2001; the Forum received a hard copy of the Complaint on June 22, 2001. On June 22, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <savondrugstore.com> is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 4.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy"). On June 22, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 12, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@savondrugstore.com by e-mail. Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default. On July 19, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant The <savondrugstore.com> domain name is confusingly similar to Complainant’s SAV-ON DRUG trademark and service mark. Respondent has no rights or legitimate interests in the <savondrugstore.com> domain name. Respondent registered and used the <savondrugstore.com> domain name in bad faith. B. Respondent No Response was received. FINDINGS Since 1945, Complainant has used its SAV-ON DRUG trademark and service mark in connection with its operation of a chain of drug stores and pharmacy departments throughout the United States. Furthermore, Complainant operates a Website located at <sav-ondrugs.com> which millions of Complainant’s customers have accessed to obtain pharmaceutical information and information regarding Complainant. Respondent registered the <savondrugstore.com> domain name on May 10, 1999, Respondent initially redirected Internet users from the disputed domain name to a competitor of Complainant. Complainant and Respondent, prior to initiation of this proceeding, entered into agreeement whereby Respondent was to be compensated $75, and would in-turn transfer the disputed domain name to Respondent. Even though Respondent cashed Complainant’s check, Respondent never went forward with the transfer of the <savondrugstore.com> domain name to Complainant. Respondent later developed a rudimentary website titled "Savond Rugs Store," apparently offering to sell rugs. On this website, Respondent provided a false telephone number of (818) 555-5555, for would-be rug customers to place an order. Respondent has also registered a number of domain names infringing on the marks of other pharmaceutical retailers. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules. Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar Because of Complainant’s extensive and continuous of its SAV-ON DRUG mark in commerce, for over fifty years, Complainant has established common law rights in the SAV-ON DRUG mark. See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require "that a trademark be registered by a governmental authority for such rights to exist"). The ICANN dispute resolution policy is "broad in scope" in that "the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice" to support a domain name complaint under the policy. McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000). The <savondrugstore.com> domain name incorporates Complainant’s mark, combined with the generic word "store." The fact that the disputed domain name does not include the hyphen, as is contained in Complainant’s mark, is not sufficent to preclude a finding of confusing similarity. See National Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to Complainant's mark); see also Ritz-Carlton Hotel Co. v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark). Furthermore, the addition of the generic word "store" to the end of Complainant’s mark makes the disputed domain name confusingly similar to Complainant’s mark, as it describes the location of where Complainant’s goods are sold. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Respondent has failed to come forward to demonstrate it has rights or legitimate interests in the <savondrugstore.com> domain name. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint"). Furthermore, there is a presumption that Respondent has no rights or legitimate interests with respect to a disputed domain name where Respondent fails to submit a response. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Respondent’s agreement to transfer the disputed domain name, in exchange for monetary compensation by Complainant, combined with Respondent’s refusal to transfer the domain name after cashing Complainant’s check is evidence that Respondent does not have rights or legitimate interests in the disputed domain name. See Marcor Intl’ v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent’s willingness to transfer the domain name at issue indicates that it has no rights or legitimate interests in the domain name in question). Furthermore, there is no evidence Complainant was making any bona fide offering of goods or services on the Website, as it was engaged in linking the disputed domain name to a competitor of Complainant’s Website, and later engaged in falsely advertising rugs for sale. See The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that Respondent’s use of the disputed domain names is confusingly similar to Complainant’s mark. Respondent’s use of the domain names to sell competing goods was an illegitimate use and not a bona fide offering of goods). There is no evidence in the record, and Respondent has not come forward to establish that it is commonly known by the <savondrugstore.com> domain name, pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark). Furthermore, there is no evidence that demonstrates Respondent is making a legitimate noncommercial, or fair use of the <savondrugstore.com> domain name pursuant to Policy ¶ 4(c)(iii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name). The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name, and that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent’s agreement to transfer the <savondrugstore.com> domain name to Complainant is sufficient, standing alone, to support a finding of bad faith. The fact that Respondent accepted payment for the transfer of the domain name, and later refused to transfer the domain name to Complainant further establishes Respondent’s bad faith. See Marcor Intl’ v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent’s registration and use of the domain name at issue coupled with its expressed willingness to transfer the name amply satisfies the bad faith requirements set forth in ICANN Policy). Respondent’s registration and use of the <savondrugstore.com> domain name constitutes bad faith, pursuant to Policy ¶ 4(b)(ii), because Respondent has prevented Complainant from reflecting its mark in a corresponding domain name, and Respondent has engaged in a pattern of such infringing conduct. See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks); see also Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where the Respondent engaged in the practice of registering domain names containing the trademarks of others). Furthermore, Respondent acted in bad faith pursuant to Policy ¶ 4(b)(iv), because it intentionally attempted to attract, assumedly for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s SAV-ON DRUG mark. See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant). The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. DECISION Having established all three of the elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted. Accordingly, it is Ordered that the <savondrugstore.com> domain name be transferred from Respondent to Complainant. Hon. Ralph Yachnin, Panelist Justice, Supreme Court, NY (Ret.) Dated: July 23, 2001 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.