WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Express Scripts, Inc. v. Kal
Case No. D2006-0301
1. The Parties
The Complainant is Express Scripts, Inc., of Maryland Heights, Missouri , United States of America, represented by Bryan Cave, LLP, United States of America.
The Respondent is Kal, of Rawalpindi, Rawalpinidi, Pakistan.
2. The Domain Names and Registrar
The disputed domain names (“Domain Names”):
are all registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2006. On March 10, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain names at issue. On March 10, 2006, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 on March 21, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April�10,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 11, 2006.
The Center appointed Fabrizio Bedarida, Debra J. Stanek and Willem J. H. Leppink as panelists in this matter on April 28, 2006. 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.
The language of the proceeding is English.
4. Factual Background
Complainant is a large pharmacy benefit management company in North America. Complainant has provided pharmacy services for at least 20 years under and in connection with its trade mark EXPRESS SCRIPTS.
Complainant’s EXPRESS SCRIPTS trademark, U.S. Registration No. 1,809,555, was filed in September 1992, and registered on December 7, 1993.
Complainant owns and operates the domain name . Complainant also owns the following domain names: , ; , , , , , , , , , , , , , , , , , and .
Respondent registered the disputed Domain Names between June and August 2003.
5. Parties’ Contentions
A. Complainant
Complainant alleges that:
The Domain Names are virtually identical and confusingly similar to Complainant’s EXPRESS SCRIPTS trade mark.
Respondent has slavishly copied the Domain Names in order to confuse Internet users and to trade upon Complainant’s goodwill and well known marks. The Domain Names all shamelessly incorporate Complainant’s EXPRESS SCRIPTS registered trademarks, both in appearance and phonetics and, accordingly, are confusingly similar under the law and UDRP precedent.
Specifically, Respondent has registered insignificant variations (most of which are misspellings) of Complainant’s EXPRESS SCRIPTS trade mark in an effort to misdirect Internet users who make any number of common typographical errors.
Respondent has no legitimate rights or interest whatsoever in the disputed Domain Names.
Respondent registered the Domain Names intending and knowing that his actions would mislead and divert a large number of consumers seeking Complainant and its authentic website. Respondent’s intent alone precludes a finding of a bona fide offering of goods and/or services or a legitimate non-commercial or fair use.
Respondent cannot evade the fact that he is not in any way associated with Complainant and has never sought nor received authorization or a license to use the EXPRESS SCRIPTS trade mark. Moreover, Respondent cannot demonstrate that he has ever made any legitimate offering of goods or services under Complainant’s EXPRESS SCRIPTS trade mark.
Respondent has no means to establish that he is or ever has been commonly known as “Express Scripts”. Upon information and belief, Respondent has not sought nor procured any registrations for any trade names, corporations, or trademarks with any Secretary of State, or the U.S. Patent & Trademark Office, or any foreign trademark authority, for “Express Scripts”.
Respondent registered and is using the disputed Domain Names in bad faith, in direct violation of, at least paragraphs 4(b)(ii), (iii) and (iv) of the Policy. Respondent’s bad faith conduct is evidenced as follows:
First, Respondent is intentionally attempting to divert, for commercial gain, Internet users to a competing website to confuse and mislead consumers. Respondent’s mere act of typo-squatting presents ample evidence of bad faith.
Second, Respondent’s bad faith conduct is designed to disrupt and harm Complainant’s business. Respondent utilizes infringing and virtually identical domain names to divert potential users away from Complainant’s authentic website at .
Third, upon information and belief, Respondent has absolutely no legitimate trademark, service mark or other intellectual property rights in or to the disputed Domain Names, or any similar marks or names.
Fourth, Respondent plainly knew of Complainant’s long and continuous use of its EXPRESS SCRIPTS trademark at the time of registration and he had no right, title or interest, whatsoever, in the mark or Domain Names.
Fifth, a Reverse Whois search for Respondent’s name indicates that Respondent has registered (and is presumably using), or is otherwise connected with (e.g., as the designated Administrative Contact) a total of over 600 domain name registrations. Many of these incorporate the famous marks and brand names of well-known companies. Thus Respondent seems to be specialized in the registration of misspellings of popular drug brand names, pharmaceutical companies and pharmacy retailers.
Upon information and belief, Complainant claims that many of the below registered domain names link to the same N website associated with the disputed Domain Names. A partial list of domain names registered by Respondent (along with, upon information and belief, a listing of the actual brands or rightful owners of the marks and names) includes, but is not limited to:
• (Aspercreme – arthritis medicinal ointment);
• (Atkins Center for Complementary Medicine);
• (Allegra –Aventis Pharma AG allergy medication);
• (United Healthcare – insurance company);
• (F – online drug retailer);
• (Allegra – Aventis Pharma AG allergy medication);
• (Allegra – Aventis Pharma AG allergy medication);
• (Aleve – Merck & Co. pain medication);
• (Aleve – Merck & Co. pain medication);
• (Medco Health – mail order pharmacy);
• (Hannaford Supermarkets – in-store pharmacies),
• (Mayo Clinic – cancer hospitals and clinics);
• (Brooks Pharmacy – retail chain of pharmacystores);
• (Eckerd Drugs – retail chain of drug stores);
• (Eckerd Drugs – retail chain of drug stores);
• (Walgreen’s – retail chain of drug stores);
• (CVS Pharmacies – retail chain of pharmacies);
• (CVS Pharmacies – retail chain of pharmacies);
• (Vioxx – Merck & Co. arthritis pain medication);
• (Walgreen’s – retail chain of drug stores);
• (Walgreen’s – retail chain of drug stores);
• (Xanax – Pfizer pain medication);
• (Zyban – GlaxoSmithKline anti-depression drug);
• (Xenadrin – Cytodine Technologies dietary supplement);
• (Zyrtec – Pfizer antihistamine drug);
• (Weight Watchers International – nutrition company);
• (Weight Watchers International – nutrition; company);
• (Weight Watchers International – nutrition company);
• (Wellbutrin – GlaxoSmithKline antidepressant);
• (Wellbutrin – GlaxoSmithKline antidepressant);
• (Wellbutrin – GlaxoSmithKline antidepressant);
• (Vicodin – Abbott Laboratories medication);
• (Slim-Fast – health and nutrition company);
• (Singulair – Merck & Co. asthma drug);
• (Cialis – Eli Lilly & Co. erectile dysfunction drug);
• (Cialis – Eli Lilly & Co. erectile dysfunction drug);
• (Cialis – Eli Lilly & Co. erectile dysfunction drug);
• (Clearasil – anti-acne cream medication);
• (Celebrex – Pfizer arthritis medication);
• (Celebrex – Pfizer arthritis medication);
• (Viagra – Pfizer erectile dysfunction medication);
• (Slim-Fast – health and nutrition company);
• (Costco – retail chain of home-stores);
• (Flonase – GlaxoSmithKline inhaler drug);
• (Flexeril – Merck & Co. muscle relaxant);
• (Flexeril – Merck & Co. muscle relaxant);
• (Flexeril – Merck & Co. muscle relaxant);
• (Fluoxetine – Eli Lilly & Co. anti-depressant);
• (Rite Aid – retail drug chain);
• (Rite Aid – retail drug chain);
• (Rite Aid – retail drug chain);
• (Rite Aid – retail drug chain);
• (Rite Aid – retail drug chain);
• (Prilosec – Astrazenaca heartburn medication);
• (Priolsec – Astrazenaca heartburn medication);
• (Prilosec – Astrazenaca heartburn medication);
• (Parke Davis – drug manufacturer);
• (Nyquil – Richardson Vicks liquid cold medicine);
• (Levitra – Pfizer erectile dysfunction drug);
• (Levitra – Pfizer erectile dysfunction drug);
• (Lamisil – Novartis anti-foot fungal medicine);
• (Lancome – makeup manufacturer);
• (Kroger Supermarket – in-store pharmacies);
• (Extreme Makeover – ABC television series);
• (Extreme Makeover – ABC television series);
• (Ambien – Sanofi-Aventis sleep-aid drug);
• (Fertinex – Serono fertility drug);
• (Acuvue – Johnson & Johnson contact lenses);
• (Accutane – Hoffman-LaRoche acne medication);
• (Prevacid – Abbott Labs heartburn medication);
• (Kroger Supermarket – in-store pharmacies);
• (Wal-Mart – in-store pharmacies);
• (Claritin – Schering Plough medication);
• (Planetdrugsdirect – online drug retailer);
• (Clarinex – Schering Plough allergy medication);
• (California Board of Pharmacy – state agency);
Complainant finally sustains that a search conducted in the database of the WIPO and NAF arbitration decisions reflects at least the following UDRP decisions in which the Respondent has been a party:
1. Longs Drug Stores California, Inc. v. Kal Kuchora, WIPO Case No. D2005-0428 ( and ); and
2. Express Scripts, Inc. v. Kal Kuchora, WIPO Case No. D2005-1164 ().
B. Respondent
The Respondent was duly notified of the administrative proceedings as stipulated under paragraph 2(a) of the Rules but did not reply to the Complainant’s contentions.
6. Discussion and Findings
Since the Respondent has not submitted a response, the Panel decides this dispute on the basis of the Complaint, in accordance with the Rules, paragraph 5 (e).
A. Identical or Confusingly Similar
Complainant has established that it has prior rights in the trademark EXPRESS SCRIPTS for pharmacy services.
Complainant claims that the Domain Names are instances of “typosquatting” i.e. domain names that derive from another’s mark based on common typographical mistakes (see Express Scripts, Inc. v. Roy Duke, Apex Domains aka John Barry aka Domains for Sale and Churchill Club aka Shep Dog, WIPO Case No. D2003-0829). In support of its argument, it has provided the table below, which compares each of the Domain Names to its EXPRESS SCRIPTS trade mark.
Domain Name
Comparison of the EXPRESS SCRIPTS Trademark with the disputed Domain Names
E
Transposition of “p” and “r” in “express”
E
Omission of one “r” in “express”
E
Omission of one “r” in “scripts”
E
Addition of one “s” to “express”
E
Omission of one “s” in “scripts”
E
Omission of one “c” in “scripts”
E
Misspelling of “express” as “espress” and omission of one “s” in “scripts”
E
Transposition of “p” and “t” in “scripts”
E
Omission of one “c” and one “s” in “scripts”
E
Omission of one “i” in “scripts”
R
Substitution of “r” for “e” in “express”
E
Use of “scriptions” instead of “scripts”
E
Omission of one “c” in “scripts”
E
Transposition of “p” and “x” in “express”
With the exceptions of the domain name , which is discussed below, each of the domain names listed above is virtually identical as to sight, sound, and meaning when compared to Complainant’s trade mark. The domain names differ from Complainant’s trade mark in insignificant ways that do not distinguish the domain name from Complainant’s mark and that appear calculated to take advantage of Internet users’ typing errors. Therefore, the Panel finds that the Domain Names are confusingly similar to Complainant’s mark.
In Dell Computer Corp. v. Clinical Evaluations, WIPO Case No. D2002-0423, the Panel noted that: “Typo-squatting seeks to take advantage of errors by users in typing domain names into their Web browser’s location bar. Domain names which constitute typo-squatting are confusingly similar by definition; it is this similarity which makes them attractive” and “It is particularly persuasive that Respondent has adopted not one but two different domain names that differ from Complainant’s by only a single letter each. It is implausible in the extreme that this circumstance was merely coincidental”. See also Dow Jones & Company, Inc. and Dow Jones, L.P. v. Powerclick, Inc., WIPO Case No. D2000-1259 (concluding that the deliberate introduction of errors or changes does not render Respondent’s domain name less confusingly similar to the core trademark held by the Complainant).
As regards the domain name , it is the Panel’s view that that domain name does not at first sight appear to be a typosquatting case. Nevertheless, because the term “prescriptions” has the same meaning as the shortened term “scripts,” the Panel finds this domain name to be phonetically and conceptually similar to Complainant’s trademark EXPRESS SCRIPTS, thus confusingly similar to a trademark in which Complainant has established intellectual property rights.
Moreover, the Panel considers that Respondent’s meticulous attention in registering hundreds of domain names that are basically misspelled versions of third parties’ trademarks itself gives rise to an inference that each of the fourteen (14) Domain Names were purposely chosen by Respondent for their similarity to Complainant’s trademark.
Therefore, the Panel finds that Complainant has met its burden of proving that the disputed Domain Names are confusingly similar to Complainant’s mark.
B. Rights or Legitimate Interests
Complainant must show that Respondent has no rights or legitimate interests in respect of the disputed domain names. The respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain names by demonstrating in accordance with paragraph 4(c) of the Policy:
a) that before any notice to the respondent of the dispute, he or she used or made preparations to use the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services; or
b) that the respondent is commonly known by the domain names, even if he or she has not acquired any trademark rights; or
c) that the respondent intends to make a legitimate, non-commercial or fair use of the domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
In the present default proceeding there is no contention on record, or made by Respondent, that the Panel could rely on, to conclude that Respondent might have trademark or other intellectual property rights, or in general, legitimate interests in the Domain Names. In fact, the Respondent has no connection or affiliation with the Complainant, which has not licensed or otherwise authorised Respondent to use or apply for any domain name incorporating Complainant’s trademarks. Respondent has not alleged any facts or elements to justify prior rights and/or legitimate interests in the disputed Domain Names. Respondent does not appear to make any legitimate use of the Domain Names for non-commercial activities. On the contrary, from Complainant’s evidence, confirmed by the Panel’s review of Respondent’s website, it appears that the Respondent is, for his own commercial gain, diverting Internet users looking for Complainant’s services to the websites associated with the disputed domain names. Such use cannot be considered bona fide.
Therefore, the Panel considers that there is not evidence that Respondent has done anything that could be regarded as giving rise to a legitimate interest under paragraph 4(c).
Accordingly, the Panel finds that the Complainant has satisfied the burden of proof with respect to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Names in bad faith:
i) circumstances indicating that the holder has registered or has acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain names; or
ii) the holder has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
iii) the holder has registered the domain names primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain names, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s web site or location or of a product or service on the holder’s web site or location.
Accordingly, for Complainant to succeed, the Panel must be satisfied that the Domain Names have been registered and are being used in bad faith.
Complainant has argued that Respondent registered the Domain Names and used the same for redirecting traffic to unrelated websites; that Respondent had actual knowledge of Complainant’s trademark and activity; that he has been already involved in another two proceedings under the UDRP (including one similar case relating to the domain name ) and that Respondent registered a large number of domain names corresponding to third parties’ renowned trademarks.
The Panel finds that from the records it appears that Respondent has registered and used the Domain Names with the sole purpose to attract Internet users for commercial gain and divert them to the website “www.n” where pharmacy-related goods and services competing with those of the Complainant are offered. While, it most recently appears that the Domain Names are no longer directing visitors to the website “www.n”, they are however used to divert Internet users, which are looking for the website of Complainant, to other websites, where pharmacy-related goods and services, including online prescriptions competing with those of the Complainant, are offered.
In addition, from the typology and the large number of domain names related to pharmaceutical goods, registered by Respondent, it is very likely that Respondent knew of the pharmaceutical on-line distribution business and the most renowned trademarks. Considering the above and the fact that Respondent registered numerous domain names that are clear misspellings of Complainant’s trademark, the Panel finds that Respondent had actual knowledge of Complainant’s trademark EXPRESS SCRIPTS when he registered the disputed Domain Names.
Moreover, from the large number of domain names corresponding to third parties’ renowned trademarks, registered by Respondent, it is possible to infer that Respondent is engaged in a pattern of conduct involving the registration of domain names corresponding to third parties’ trademarks.
Finally, Respondent has not denied Complainant’s assertions of bad faith, has not given any justification for the registration of the disputed domain names nor substantiated or at least alleged any concurrent right or legitimate interest to these disputed domain names.
Considering the foregoing, the registration and use of the Domain Names by Respondent in bad faith is evident.
The Panel therefore concludes that Respondent registered and is using the Domain Names in bad faith and that the requirements of paragraph 4 (a) (iiii) of the Policy are 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 names,
be transferred to Complainant.
Fabrizio Bedarida
Presiding Panelist
Debra J. Stanek
Panelist
Willem J. H. Leppink
Panelist
Dated: May 12, 2006
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