WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION CVS Pharmacy, Inc. v. WhoisGuard Protected / Andrey Molodavkin Case No. D2009-1604 1. The Parties
The Complainant is CVS Pharmacy, Inc. of Woonsocket, Rhode Island, United States of America, represented by Edwards Angell Palmer & Dodge, LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is WhoisGuard Protected / Andrey Molodavkin of Dzerzhinsk, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2009. On November 30, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On November 30, 2009, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 3, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 7, 2009. The Center verified that the Complaint together with the amended 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 December 8, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 28, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 29, 2009.
The Center appointed Ross Wilson as the sole panelist in this matter on January 6, 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. 4. Factual Background
The Complainant operates the largest pharmacy chain in the United States with approximately 6,900 stores in the US. Its trademarks promote CVS pharmacy drugstores and its online retail website “.” Through its CVS/pharmacy stores and online through “” the Complainant allows customers to refill prescriptions and sells a wide assortment of general merchandise, including over-the-counter drugs, greeting cards, film and photofinishing services, beauty products and cosmetics, seasonal merchandise and convenience foods.
The Complainant owns numerous trademarks including CVS, CVS.COM, CVS/PHARMACY, CVS/PHARMACY 24 HOURS and FOR ALL THE WAYS YOU CARE. The earliest CVS trademark was registered in the United States in September 1971 and the earliest CVS/PHARMACY trademark was registered in April 1997. Interbrand, one of the world's leading brand valuation specialists, currently values the CVS/PHARMACY brand as the 5th most valuable brand in the United States, with a value of USD 12.56 billion.
The disputed domain name was created on August 1, 2009.
On August 18, 2009, the Complainant sent the Respondent a cease and desist letter by email informing the Respondent that the disputed domain name was registered in violation of the Complainant's trademark rights. The Respondent replied on August 23, 2009 admitting “I did not know what (sic) I need authorisation to use the ‘CVS'. I deleted this site.” 5. Parties' Contentions A. Complainant
The Complainant contends that as a result of its extensive use of CVS and CVS/PHARMACY marks in the United States almost all consumers in the United States will readily associate the terms “CVS” and “CVS pharmacy” with the Complainant and Internet users are likely to associate the disputed domain name with the Complainant's marks. In addition, any difference between the Complainant's marks and the disputed domain name is an irrelevant distinction that does not change the confusing similarity between the terms.
The Complainant contends that it has never licensed or otherwise authorized the Respondent to use its CVS trademarks or any derivative of those trademarks either in domain names or otherwise.
The Complainant states that the Respondent's activity is not legitimate noncommercial fair use pursuant to any part of the Policy, paragraph 4(c) and that it is evident that the Respondent registered the disputed domain name to obtain commercial gain from the extraordinarily valuable goodwill of the Complainant's marks and to attract Internet users to the website at the disputed domain name. Further, based on the Respondent's use of the disputed domain name (and the Complainant's marks) for commercial use, the Respondent is misleadingly diverting consumers and tarnishing the Complainant's marks particularly through the sale of certain pharmaceuticals that the Complainant specifically does not retail online.
The Complainant contends that the Respondent's registration and use of the disputed domain name clearly constitutes registration and use in bad faith and does not constitute a legitimate noncommercial fair use. Further, the Complainant alleges bad faith registration and use through the registration of a domain name containing its trademarks and that there is no plausible circumstance under which the Respondent could legitimately register or use the disputed domain name.
The Complainant asserts that the Respondent has been engaged in a pattern of registering domain names to prevent the owners of trademarks from reflecting their mark in a corresponding domain name. Evidence was provided by way of listing five WIPO decisions under the UDRP that have resulted in the transfer of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy, as follows:
(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 in bad faith. A. Identical or Confusingly Similar
The Complainant provided evidence that it has registered rights in a number of trademarks that incorporate the letters “CVS”. The most relevant for the purposes of this dispute is the trademark CVS/PHARMACY.
The disputed domain name incorporates the Complainant's CVS/PHARMACY trademark in full with the descriptive addition of the word “online”. It has been held in many previous cases that incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co. Inc.,WIPO Case No. D2000-0113 and World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306). The Panel notes that the addition of the word “online” has been a popular generic addition in disputed domain name cases since the commencement of the UDRP (see Dow Jones & Company, Inc. v. Down Jones Update, WIPO Case No. D2000-0495). In the overwhelming number of cases where a disputed domain name incorporates the word “online” with a trademark in its entirety, it has been found to be confusingly similar to the mark at issue (and indeed, in most such cases, the complainant has gone on to establish the remaining two elements of the Policy and obtain transfer to it).
Also, numerous cases have recognised that the addition of generic or descriptive words does not provide sufficient differentiation for a disputed domain name to be considered distinctive from the dominant element of a complainant's trademark. For example, Caterpillar Inc. v. Roam the Planet, Ltd.,WIPO Case No. D2000-0275, General Motors Corporation and General Motors of Canada Limited v. Andre Rheaume,WIPO Case No. D2004-0664, and AirTran Holdings Inc. v. Forsyte Corporation,WIPO Case No. D2008-1169.
The Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the Complainant's registered CVS/PHARMACY mark. The Complainant therefore has satisfied the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out how a respondent can demonstrate rights to or legitimate interests in a disputed domain name. In this case, the Respondent has chosen not to file any submission or evidence to demonstrate its rights or legitimate interests in the disputed domain name. In such a situation, paragraph 14(b) of the Rules allows the Panel, in the absence of exceptional circumstances, to draw such inferences from the absence of a Response from the Respondent as it considers appropriate.
The Respondent has chosen to register a domain name that contains the Complainant's CVS/PHARMACY trademark in its entirety without authorisation by the Complainant. There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. Moreover, the Complainant has denied providing any authorisation at all.
Similarly, there is no evidence before the Panel that the Respondent is commonly known by the disputed domain name.
The Panel notes that in the Respondent's reply to the Complainant's cease and desist letter it acknowledged it was acting without authorisation.
Based on the evidence before the Panel and the conduct of the Respondent the Panel finds the Respondent lacks rights or legitimate interests in the disputed domain name and consequently has not demonstrated that it has met the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the disputed domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.
The Panel considers that the Respondent's selection of the disputed domain name incorporating the Complainant's trademark cannot be other than a deliberate action. The letters CVS by themselves have no specific meaning and it is improbable that the Respondent could come up with the letters in conjunction with the word “pharmacy” independently. In the Panel's view the only reason the Respondent wanted to register the disputed domain name was to gain some sort of advantage in relation to the Complainant's reputation and goodwill in its trademark.
The Panel accepts the Complainant's case that the Respondent would have been aware of the CVS/PHARMACY trademark and subsequently registered and used the disputed domain name to confuse Internet users who are seeking information about the Complainant and attracting them to its website for commercial gain. The evidence provided shows that when an Internet user accesses the website linked to the disputed domain name, the Complainant's trademarks CVS/PHARMACY and FOR ALL THE WAYS YOU CARE are prominently displayed. Confusion for Internet users is increased by the website appearing to sell products covered by the class of the Complainant's marks and by the use a colour scheme similar to the Complainant's own website. Such activity represents bad faith as envisaged by paragraph 4(b)(iv) of the Policy both in respect to registration and use of the disputed domain name.
Redirecting Internet users to other websites by using a domain name that incorporates a well known trademark to a website unconnected to the trademark owner does not constitute a bona fide offering of goods and services (see Madison Square Garden L.P., Radio City Trademarks, LLC v. Great Camanoe Investments Ltd / Belize Domain Names Whois Service Lt,WIPO Case No. D2007-0819 and Lance Armstrong Foundation v. Chris Angeles,WIPO Case No. D2005-0888).
Based on the above, the fact that the Respondent has failed to provide complete and accurate details such as its address and contact numbers, the pattern of conduct by the Respondent of registering the trademarks of others and without any available evidence of the Respondent's rights or legitimate interests in the domain names, the Panel is satisfied that the Complainant has proven the third element 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 name be transferred to the Complainant.
Ross Wilson
Sole Panelist
Dated: January 20, 2010
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