Administrative panel decision pinnacle Intellectual Property V. World Wide Exports Case No. D2005 1211




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WIPO Arbitration and Mediation Center



ADMINISTRATIVE PANEL DECISION



Pinnacle Intellectual Property v. World Wide Exports
Case No. D2005 1211

1. The Parties
The Complainant is Pinnacle Intellectual Property, Dublin, Ohio, United States of America, represented by Markus Cohen Law Office, Canada.
The Respondent is World Wide Exports, Victoria, British Columbia, Canada, represented by Taylor McCaffrey LLP, Canada.

2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Go Daddy Software.

3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2005. On November 23, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. The Center verified that the Complaint together with the amendment to the 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 December 7, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response December 27, 2005. The Response was filed with the Center December 23, 2005.
The Center appointed Mark V.B. Partridge, M. Scott Donahey and David Lametti as panelists. The Panel finds that it was properly constituted. Each member of 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
Complainant is the owner of two relevant trademark registrations issued by the United States Patent & Trademark Office: Reg. No. 1,006,128, for the mark THE MEDICINE SHOPPE, issued March 4, 1975; and Reg. No. 1,719,127, for a design mark including the words THE MEDICINE SHOPPE in stylized letters, issued September 22, 1992.
It appears from the record that these registrations were acquired by Complainant by assignment on November 13, 1997. The record also indicates that Complainant filed a Statement of Use for Reg. No. 1,719,127, and renewed that registration on December 12, 2002.
Complainant has provided no evidence or allegations to explain the nature and extent of any ongoing use of the mark THE MEDICINE SHOPPE, although it can be inferred that Complainant has licensed the name to others and that Respondent worked at a THE MEDICINE SHOPPE franchisee.
The Disputed Domain Name was registered on February 4, 2003. Respondent developed a website at the Disputed Domain Name operating under the name Canada Medicine Shop which promotes itself as “Canada’s leading Canadian mail order pharmacy”. Respondent is a fully licensed Canadian pharmacy. According to Respondent, it has developed over 35,000 regular customers and enjoys gross sales in excess of $1.7 million (US). Respondent explains that its customers are located outside Canada who take title to the goods in Canada. Respondent then acts as an agent to ship the goods to the customers in the U.S. Respondent claims it selected the name “Canada Medicine Shop” because it desired a name that indicated the nature of its business and location, but the names “CanadaDrugs”, “CanadaPharmacy” and “CanadaDrugMart” were already taken.
Complainant first informed Respondent that it objected to the Disputed Domain Name on June 7, 2005, after Respondent had commenced the operations described above.

5. Parties’ Contentions
A. Complainant
Complainant contends that the Disputed Domain Name is confusingly similar to a mark in which it has rights, that Respondent lacks any rights or legitimate interests in the Disputed Domain Name, and that the Disputed Domain Name was registered and used in bad faith.
B. Respondent
Respondent denies that Complainant has rights in any mark that is confusingly similar to the Disputed Domain Name. Respondent also claims that it registered and used the Disputed Domain Name in good faith to describe the nature and location of its services and that it has established a legitimate interest in the Disputed Domain Name based on bona fide use of the name prior to any objection from Complainant.
6. Discussion and Findings
Paragraph 4(a) of the Policy identifies three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration and to obtain relief:
(1) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) Respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar




Complainant owns U.S. federal registrations for the mark THE MEDICINE SHOPPE, which support its claim of rights in the mark.
Complainant, however, has not provided evidence of the nature and extent of its use of the mark. Therefore, we are not able to access the scope of rights to which it may be entitled. The mark itself is a weak mark composed of elements that are descriptive and generic. Moreover, Respondent has provided evidence of third party use and registration of the similar marks. Such evidence of third party use combined with the obvious descriptive nature of the mark serves to limit the scope of protection to which Complainant is entitled and reduces the potential for confusion.
We recognize that the mere addition of a descriptive term to another’s mark is normally not sufficient to avoid confusion. Under the records presented here, however, we conclude that Complainant has failed to establish the Disputed Domain Name is confusingly similar to mark THE MEDICINE SHOPPE. Indeed, we believe the mark and name create readily distinguishable commercial impressions. Given that the mark is weak and exists in a crowded field, it appears likely that the mark can coexist with the Disputed Domain Name without creating confusion.



B. Rights or Legitimate Interests

Complainant contends that Respondent lacks any rights or legitimate interest in the Disputed Domain Name because it is not authorized to use the name, owns no trademark rights in the name and was not previously known by the name.


Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate a registrant’s rights to and legitimate interest in the domain name:
(1) Demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;

(2) An indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or

(3) Legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.
Respondent claims it was engaged in a bona fide offering of goods and services under the Disputed Domain Name prior to any notice of objection from Complainant. Complainant denies this claim with the unsupported allegation that “the United States has taken the official position that sales by non resident pharmacies is [sic] illegitimate”. This is not an appropriate forum to evaluate that contention, and the Panel has not been provided the facts or authority necessary to make that determination. What seems undisputed, however, is that Respondent engages in the sale of pharmaceutical products under the name CanadaMedicineShop. The Panel concludes that the name is an apt descriptive choice for Respondent’s business, and that Respondent has demonstrated a legitimate interest in the name.

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and used the Disputed Domain Name because it selected the name with actual and constructive knowledge of Complainant’s rights in the mark THE MEDICINE SHOPPE. Accepting that Respondent had such knowledge, it does not follow that the choice of CanadaMedicineShop was made in bad faith. Indeed, the name Canada Medicine Shop is an apt descriptive choice to identify the nature and location of Respondent’s services. It does not appear that the name was selected to trade on confusion with Complainant’s mark. Given the weak, descriptive nature of Complainant’s mark, we conclude that Complainant has failed to establish that Respondent registered and used the Disputed Domain Name in bad faith.



7. Decision
For all the foregoing reasons, the Complaint is denied.

_____________________________________

Mark V. B. Partridge

Presiding Panelist


__________________________________ __________________________________

M. Scott Donahey David Lametti



Panelist Panelist
Date: February 17, 2006

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