WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eckerd Corporation v. John Barry doing business as Azra Ari Khan, Teki Inc., Center
For Ban on Drugs, Duke, Duke Inc., and Tech Domains
Case No. D2003-0329
1.
The Parties
The Complainant is Eckerd Corporation of Dallas, Texas, United States of America,
represented by Jerome K. Lipsich, JC Penney Legal Department, Dallas, Texas,
United States of America.
The Respondent is John Barry, also known as and/or doing business as Azra Ari Khan;
Teki Inc.; Center For Ban on Drugs; Duke; Duke, Inc.; and Tech Domains, of the
Bronx, New York, United States of America.
2.
The Domain Names and Registrars
The disputed domain name <ekcerd.com> is registered with Key-Systems GmbH dba
domaindiscount24.com. The disputed domain name <ekcerds.com> is registered with
eNom, Inc. The disputed domain names <ekerd.com>, <ekerddrugs.com> and
<ekerds.com> are registered with Intercosmos Media Group d/b/a directNIC.com.
3.
Procedural History
This is a long and winding road. A brief summary will suffice.
The original Complaint was filed with the WIPO Arbitration and Mediation Center
(the “Center”) on April 29, 2003. This consisted of a complaint on a single disputed
domain name <eckcerd.com> against a single respondent, Ken Burns. The appropriate
request for registrar verification on this domain name was transmitted by email to
eNom, Inc., on August 30, 2003. On May 1, 2003, eNom, Inc., transmitted by email to
the Center its response stating that the domain name had been deleted for false contact
data. After which the Complainant requested a 30-day suspension of the proceedings to
attempt to purchase the domain name if it became available for third party registration.
On June 9, 2003, the Complainant notified the Center that the negotiations had not
succeeded, and therefore, requested a resumption of the proceeding.
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Accordingly, on July 2, 2003, the Center transmitted a request for registrar verification
to Key-Systems GmbH d/b/a domaindiscount24.com in connection with the domain
name at issue, <ekcerd.com>. On July 4, 2003, Key-Systems GmbH d/b/a
domaindiscount24.com transmitted by email to the Center its verification response
confirming that the domain name was registered with Key-Systems GmbH, but that the
Respondent, Ken Burns was not listed as the registrant. The Registrar confirmed that
the current registrant was Azra Ari Khan and provided the contact details for the
administrative, billing, and technical contact.
On July 11, 2003, the Center requested an amendment to the Complaint. On
July 16, 2003, the amendment was filed with the Center listing the same larger set of
disputed domain names and respondent d/b/a’s (“doing business as” aliases) that appear
in this third Amended Complaint, which is the final version.
After a response from the Center citing deficiencies in the format of the Amended
Complaint, the Complainant submitted a second Amended Complaint on
August 15, 2003.
The Center responded by informing the Complainant that the second Amended
Complaint did not contain the proper elements for mutual jurisdiction with the U.S.
courts under the circumstances of this particular case. The Complainant then amended
the Complaint accordingly once again and submitted its third Amended Complaint on
August 27, 2003.
The Center verified that this third Amended 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 on September 4, 2003.
In accordance with the Rules, paragraph 5(a), the due date for Response was
September 24, 2003. The Respondent did not submit any response. Accordingly, the
Center notified the Respondent’s default on September 30, 2003.
The Center appointed Paul E. Mason as the sole panelist in this matter on
October 6, 2003. 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
The Complainant markets drug, medical, photographic, and convenience food products
and services throughout the northeastern, southeastern, and sunbelt regions of the U.S.
In the appendices to its Complaint, the Complainant has submitted a very large number
of trade and service mark registrations with the U.S. Patent & Trademark Office which
cover a variety of drug and medical related products and services provided by Eckerd
Corporation.
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In addition, and more importantly under U.S. trademark law, the Complainant has been
making consistent use of these marks in commerce over the years. Under U.S.
trademark law, registration of the marks is optional and provides a secondary set of
rights, provided that actual usage of the marks in commerce has been demonstrated.
5.
Parties’ Contentions
A.
Complainant
The Complainant’s basic allegation is the classic “typosquatting” case argument: a)
that the domain names at issue are confusingly similar to its company name and
trade & service marks, distinguished only by slight typographical variations; and
b)
that the Respondent has no proprietary interest in these domain names; and
c)
that the Respondent has registered and used the domain names in bad faith by
automatically directing internet traffic arriving at websites resolved to by the
domain names, to other websites advertising competing medical products and
services.
B.
Respondent
The Respondent did not reply to the Complainant’s contentions.
6.
Discussion and Findings
A.
Identical or Confusingly Similar
The Panel finds all the domain names at issue to be confusingly similar to the
Complainant’s company name and trade & service marks in the word "Eckerd". This is
all the more so because the Complainant’s name “Eckerd” is not intuitively easy to type
out and spell correctly, lending itself to frequent misspellings and typographical errors.
B.
Rights or Legitimate Interests
The Complainant’s annexes adequately prove its intellectual property rights in the
“ECKERD” name and marks. The Complainant also established a prima facie case that
the Respondent has no rights or legitimate interests in the domain names. The
Respondent by default has not shown any such rights or interests.
C.
Registered and Used in Bad Faith
The annexes to the Complaint show printouts of visits in July 2003, to websites to
which the domain names resolve, automatically directing the visitors to other sites
offering products and services for sale competing with those of the Complainant. On
October 10, 2003, this Panelist inputted the domain names on a search engine preceded
by “www.", but none of the domain names resolved to any website. However, as the
Complainant has shown ample evidence in its annex and the Respondent has not denied
the allegation, this Panel accepts the Complainant’s claim that automatic re-direction of
visitors was taking place, at least as of July 2003.
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While the Respondent is of course free to offer its own competing products and
services, it is not free to do so on the back of the reputation of the Complainant’s name
and marks. This bears all the marks of classic “typosquatting” cases, a myriad of which
have been decided in favor of UDRP complainants under these circumstances and
amount to registration and use in bad faith under paragraph 4(b)(iv) of the Policy.
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 names <ekcerd.com>, <ekcerds.com>,
<ekerd.com>, <ekerds.com>, and <ekerddrugs.com> be transferred to the Complainant.
______________________________
Paul E. Mason
Sole Panelist
Dated: October 11, 2003
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