Complainant is Express Scripts, Inc. of Missouri, United States of America, represented by Bryan Cave, LLP, United States of America.
Respondent is CSRUS Enterprises, Gerente de Dominia of Santiago, Chile and Smtm Enterprises LTD of Clayton, Panama City, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with Power Brand Center Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2011. On March 22, 2011, the Center transmitted by email to Power Brand Center Corp. a request for registrar verification in connection with the disputed domain name. On March 22, 2011, Power Brand Center Corp. 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 Complainant on March 28, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 5, 2011.
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 Respondent of the Complaint, and the proceedings commenced on April 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 26, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 6, 2011.
The Center appointed Ross Carson, John Swinson and Rodrigo Velasco Santelices as panelists in this matter on May 20, 2011. 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 a Fortune 100 company and one of the largest pharmacy benefit management companies in the world. Complainant provides pharmacy benefit management services to over 50 million members through facilities in eight states of the United States of America and Canada. For approximately twenty-five (25) years, since at least as early as 1986, Complainant has continuously been engaged in the provision of pharmacy benefit management services under and in connection with its valuable and well known EXPRESS SCRIPTS trademarks.
Complainant is the registered owner of United States Registration No.1,809,555 for: the trademark EXPRESS SCRIPTS registered on December 7, 1993, based on first use in commerce since October 1, 1986 in relation to the goods and services: (1) “pharmacy home delivery services,” in International Class No. 39; (2) “pharmacy services and pharmacy mail order services,” in International Class No. 42; and (3) “administering a pharmacy reimbursement program,” in International Class No. 36.
Complainant is also the registered owner of the following United States trademark Registrations:
EXPRESS SCRIPTS CHOICEMATTERS (U.S. Registration No. 3,442,764) for services in International Classes Nos. 35, 41, and 44;
EXPRESS SCRIPTS TREND CENTRAL (U.S. Registration No. 3,048,473) for: (1) “administering pharmacy reimbursement programs and services by means of a global computer network and proprietary global information services,” in International Class No. 35; and (2) “providing temporary use of non-downloadable software for reporting, monitoring and analyzing pharmacy transactions, prescription drug transactions, sales patterns, overall prescription drug performance and market share,” in International Class No. 42; and EXPRESS SCRIPTS CONSUMEROLOGY (U.S. Registration No. 3,894,248) for services in International Classes Nos: 35, 36, 42 and 44.
Complainant operates and maintains its “” website in association with its domain name . Complainant also owns at least ten (10) other domain names including “expressscripts” with or without a hyphen between “express” and “scripts”.
Previous UDRP panels have found that Complainant has legitimate rights in and to its EXPRESS SCRIPTS trade mark. See, Express Scripts, Inc. v. TheSonicNet,WIPO Case No. DCO2010-0010 (December 27, 2010) (“Complainant’s evidence[...] provides convincing proof that the EXPRESS SCRIPTS trademark and business are very well-known. This is a well- established business, with a significant Internet presence in North America and internationally.”); Express Scripts, Inc. v. Whois Privacy Protection Service, Inc./Domaindeals,WIPO Case No. D2008-1302 (December 1, 2008) (“The Panel finds Complainant has established rights in the Mark based on Complainant’s long-standing use of it in relation to pharmacy services as well as U.S. trademark registrations such as U.S. Registration No. 1,809,555 for EXPRESS SCRIPTS.”); Express Scripts, Inc. v. Windgather Investments Ltd./Mr. Cartwright,WIPO Case No. D2007-0267, (April 26, 2007); Express Scripts, Inc. v. Kal, WIPO Case No. D2006-0301 (May 12, 2006); Express Scripts, Inc. v. Bella Gia,WIPO Case No. D2006-0310, (March 10, 2006); Express Scripts, Inc. v. Kal Kuchora,WIPO Case No. D2005-1164 (February 15, 2006) (“Complainant has established registered and unregistered trademark rights in the term EXPRESS SCRIPTS”); and 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 (February 26, 2004) (“Complainant has established that it has prior rights in the mark EXPRESS SCRIPTS for pharmacy services”).
The disputed domain name was registered on December 17, 2009. The disputed domain name resolves to a parked page that directly, automatically and immediately resolves to pages that provide links to sites for competing goods and services, including those offered by Complainant’s competitors. 5. Parties’ Contentions A. Complainant A.1. Identical or Confusingly Similar
Complainant states that it’s registered trademarks for or including EXPRESS SCRIPTS referred to in section 4 above have been in use since at least as early as 1986 and are well-known throughout the United States of America in association with pharmacy benefit management and other pharmacy services for which they are registered.
Complainant submits that the disputed domain name is virtually identical and confusingly similar to Complainant’s trademarks for or including EXPRESS SCRIPTS. See, e.g., OBH, Inc. v. Spotlight Magazine, Inc., 86 F. Supp.2d 176, 187 (W.D.N.Y. 2000) (“intentional copying of the trademark gives rise to a presumption of a likelihood of confusion”); Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr,WIPO Case No. D2000-1525 (January 29, 2001) (“when a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy”).
Complainant further submits that the disputed domain name is identical to Complainant’s EXPRESS SCRIPTS trademark except that the disputed domain name adds the word “pharmacy,” deletes the space between EXPRESS and SCRIPTS, and adds the generic top-level domain “.com.” “When a domain name differs from a trademark only by removing a space between words and appending a TLD designation, the domain name is confusingly similar to the mark.” Nasdaq Stock Market, Inc.v. Jon Steinsson,WIPO Case No. D2002-0571 (August 6, 2002).
Complainant states that the addition of the term “.com” is, of course, irrelevant as it is functional to domain names and does not serve to distinguish source. See, Donvand Limited trading as Gullivers Travel Associates v. Omniscience,WIPO Case No. D2002-0746 (October 4, 2002) (holding that disputed domain name was identical to the trademark owned by the complainant when the only difference between the domain name and the trademark was the addition of the suffix “.com”). This alteration therefore does nothing to distinguish the disputed domain name from Complainant’s EXPRESS SCRIPTS trademark, rendering the alteration legally irrelevant.
Complainant further states that UDRP panels have consistently held that the omission of a space between words is irrelevant in determining whether a trademark is identical or confusingly similar to a domain name, particularly because a space between letters in a domain name is “a technical impossibility”. Julie & Jason, Inc. d/b/a Mah Jongg Maven v. Faye Scher d/b/a Where the Winds Blow,WIPO Case No. D2005-0073 (March 6, 2005) (“panelists have uniformly found, spaces between words […] are irrelevant, particularly since prevailing internet convention does not allow spaces between words […] in internet addresses”).
Complainant submits that the mere addition of the word “pharmacy” to the established trademark EXPRESS SCRIPTS does not prevent a finding of confusing similarity. It is well-established in UDRP panel decisions that “where a domain name takes a mark of a company and then adds words descriptive of services it provides, the result is a domain name that is confusingly similar to the mark concerned.” Acuity, Inc. v. Netsolutions Proxy Services,WIPO Case No. D2005-0564 (July 12, 2005). See also Accor v. Howell Edwin,WIPO Case No. D2005-0980 (November 22, 2005) (“The only difference between the disputed domain name and the trademarks of the Complainant is the addition of the abbreviation of the word corporation “corp”. The addition of the word “corp” (which is a generic term that describes the entity of the Complainant) does not add a distinctive element to the disputed domain name, but compounds the likelihood of confusion between the domain name and the Complainant’s trademarks.”). A.2. No Rights or Legitimate Interests in respect of the Domain Name
Complainant states that Respondent is not in any way associated with Complainant and it has never sought nor received authorization or a license from Complainant to use Complainant’s valuable, famous and distinctive EXPRESS SCRIPTS trademark as the distinctive portion of the disputed domain name or otherwise.
Complainant further states that Respondent cannot show that it uses the disputed domain name or the trademark or name EXPRESS SCRIPTS in connection with a bona fide offering of goods and/or services, because it does not. The disputed domain name is a parked page that directly, automatically and immediately resolves to pages that provide links to sites for competing goods and services, including those offered by Complainant’s competitors. Respondent’s registration and use of the disputed domain name are for the sole purpose of diverting Internet users to advertisements for companies not related to Complainant, most if not all of which are Complainant’s direct competitors. Respondent is clearly wrongfully profiting and trading upon Complainant’s EXPRESS SCRIPTS trademark and goodwill. Use that intentionally trades on the fame of another cannot constitute a bona fide offering of goods and/or services. See, Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "M",WIPO Case No. D2000-0847 (December 15, 2000).
Complainant submits that Respondent has no means to establish that it is or ever has been commonly known as “Express Scripts,” because it has not. Upon information and belief, Respondent has not sought or procured any registrations for any trade names, corporations, or trademarks for “Express Scripts”. Respondent has absolutely no legitimate trademark, service mark or other intellectual property rights in or to the EXPRESS SCRIPTS trademark. No rights or legitimate interest can accrue to the disputed domain name if its use constitutes trademark infringement. See, The Chase Manhattan Corporation et al. v. John Whitely,WIPO Case No. D2000-0346 (June 12, 2000)(“This Panel finds Respondent has no legitimate right or interest in the domain name . This is because Respondent’s use of the name "Chase" is an infringing use of Complainant’s trademark. An infringing use of Complainant’s trademark cannot give rise to a legitimate right or interest on the part of Respondent...”); Underground Services, Inc. v. CSS Group, LLC., NAF Claim No. 96843 (Nat. Arb. Forum, April 27, 2001) (“If the use of the Domain Name constitutes clear trademark infringement, then such use does not result in any rights or legitimate interests in respect of the domain names.”).
Complainant further submits that Respondent is not making any legitimate noncommercial use of the disputed domain name. As set forth above, Respondent registered and continues to use a domain name virtually identical to Complainant’s EXPRESS SCRIPTS trademark, solely for the improper commercial purposes of: (i) profiting from advertisements; (ii) illegally trading upon Complainant’s goodwill to potentially confuse, mislead, deceive, and divert consumers; (iii) misdirecting Complainant’s customers to Complainant’s competitors websites; and (iv) intentionally tarnishing and diluting Complainant’s valuable and well-known EXPRESS SCRIPTS trademark. Respondent purposely registered the disputed domain name to obtain traffic that was intended for Complainant. See, WP IP LLC v. Direct Navigation Associates/ Moniker Privacy Services,WIPO Case No. D2007-1638 (January 22, 2008) (“The Panel is also prepared to find that the Respondent registered the disputed domain name and is using the domain name for the operation of a click-through website which provide links to websites of competitors of the Complainant. The Respondent is thereby deliberately trading on the goodwill of the Complainant, by attracting internet users and diverting internet traffic intended for the Complainant to the Respondent’s website for the purpose of monetary gain. Prior Panels have recognized this type of conduct as evidence of bad faith”). A.3. Registration in Bad Faith
Complainant states that, upon information and belief, Respondent has absolutely no legitimate trademark, service mark or other intellectual property rights in or to the disputed domain name, or any similar marks or names. Respondent’s complete lack of intellectual property rights in the disputed domain name further demonstrates bad faith in adopting and using . Where a domain name is so obviously connected to a particular product or service and the registrant is found to have “no connection” to that product or service, UDRP panels will find a registrant guilty of “opportunistic bad faith.” See e.g.,Veuve Clicquot Ponsardin Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (May 1, 2000); Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226 (May 17, 2000).
Complainant further states that Respondent plainly knew of Complainant’s long and continuous use of its EXPRESS SCRIPTS trademark at the time of registration of the disputed domain name and that it had no right, title or interest, whatsoever, in the trademark or the disputed domain name. Respondent, upon information and belief, registered the disputed domain name more than twenty (20) years after the adoption by Complainant of its EXPRESS SCRIPTS trademark in 1986, and also well after Complainant’s services began to receive numerous endorsements and consumer and industry popularity and recognition. Moreover, Complainant filed a U.S. trademark application for its EXPRESS SCRIPTS trademark in September 1992, well prior to the registration of the disputed domain name, providing Respondent and others with constructive notice of its rights in and to the mark. A.4. Use in Bad Faith
Complainant submits that Respondent registered and is using the disputed domain name in bad faith, in direct violation of, at least, the Policy paragraphs 4(b)(i), (iii) and (iv).
Complainant submits that Respondent is intentionally attempting to trade on Complainant’s good reputation by attempting to divert, for commercial gain, Internet users to Respondent’s and Complainant’s competitor’s websites. The hyperlinks on the web pages associated with the disputed domain name largely are in the pharmacy and pharmaceutical fields. This behavior is clear evidence of bad faith. See, e.g., Crédit Industriel et Commercial S.A v. Caribbean Online International Ltd.,WIPO Case No. D2007-0855 (August 13, 2007) (finding bad faith use and registration where respondent’s webpage had “numerous links related to the Complainant’s competitor websites.”)
Complainant further submits that since at least as recently as March 10, 2011, the disputed domain name resolved to a web page advertising that the domain name may be for sale. When Internet users click on the “More details” link, they are taken to a domain marketplace (S) stating that is for sale and inviting offers from the public. This offer to sell the disputed domain name to the public, coupled with the full incorporation of Complainant’s well-known EXPRESS SCRIPTS trademark, allows for an additional inference that Respondent registered the disputed domain name to profit from misdirecting consumers and to sell the disputed domain name to Complainant, its competitors or other third parties, for a sale price in excess of the registration costs, all in violation of the Policy. See, Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787 (October 8, 2002) (finding bad faith use and registration in the respondent’s general statement on the website and in the Whois information that the domain name is for sale).
Complainant states that Respondent’s bad faith conduct is designed to disrupt and harm Complainant’s business. See, Policy 4(b)(iii). Respondent utilizes an infringing and identical domain name to divert potential users away from Complainant’s authentic website at “” and towards competitive websites. Respondent’s conduct plainly has caused and will continue to cause Complainant commercial detriment, in terms of consumer confusion, lost sales and goodwill, and the loss of the general ability to communicate and transact with its existing and potential customers. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403 (June 27, 2000). A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must firstly establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant has established that it is the owner of numerous registered trademarks in the United States of America for or including the trademark EXPRESS SCRIPTS registered in relation to products and services in the pharmacy and pharmaceutical field described in more particularity in section 4 above. Complainant has manufactured, advertised, distributed and sold pharmaceutical and provided pharmacy benefit management services under the trademark EXPRESS SCRIPTS since at least as early as 1986. Complainant is a Fortune 100 company and one of the largest companies providing pharmacy benefit management services in the world with over fifty (50) million members.
The disputed domain name incorporates the entirety of Complainant’s trademark EXPRESS SCRIPTS. Many UDRP decisions have found that domain names are confusingly similar to trademarks when the domain name incorporates the trademark in its entirety. See, OBH, Inc. v. Spotlight Magazine, Inc., 86 F. Supp.2d 176, 187 (W.D.N.Y. 2000) (“intentional copying of the trademark gives rise to a presumption of a likelihood of confusion”); See, PepsiCo. Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),WIPO Case No. D2003-0696 (October 28, 2003) (a domain name is “nearly identical or confusingly similar” to a complainant’s mark when it “fully incorporate[s] said mark”; holding , , and other domains confusingly similar to the complainant’s PEPSI mark),
The disputed domain name is identical to Complainant’s EXPRESS SCRIPTS trademark except that the disputed domain name adds the word “pharmacy,” deletes the space between EXPRESS and SCRIPTS, and adds the generic top-level domain “.com.” “When a domain name differs from a trademark only by removing a space between words and appending a TLD designation, the domain name is confusingly similar to the mark.” Nasdaq Stock Market, Inc. v. Jon Steinsson, WIPO Case No. D2002-0571 (August 6, 2002).
The disputed domain name adds the descriptive term “pharmacy” to Complainant’s registered trademark EXPRESS SCRIPTS. The descriptive term “pharmacy“ is directly related to the goods and services for which Complainant’s trademark is registered. In accordance with the prevailing case law, the addition of a descriptive term is not a distinguishing feature. See, Accor v. Howell Edwin,WIPO Case No. D2005-0980 (November 22, 2005) (“The only difference between the disputed domain name and the trademarks of the Complainant is the addition of the abbreviation of the word corporation “corp”. The addition of the word “corp” (which is a generic term that describes the entity of the Complainant) does not add a distinctive element to the disputed domain name, but compounds the likelihood of confusion between the domain name and the Complainant’s trademarks.”).
Previous UDRP panels have held that the addition of a term descriptive of complainant’s business to a well-known trademark can exacerbate the similarity between the disputed domain name and the mark in question. See, ACCOR v. Jose Manuel Fernandez Garcia,WIPO Case No. D2002-0988 (December 20, 2002), where complainant’s business related to operation of hotels and the disputed domain names included hotels or residences. In this case the inclusion of the descriptive term “pharmacy” in the disputed domain name enhances a finding of confusingly similarity as Complainant uses its trademark EXPRESS SCRIPTS in relation to goods and services associated with pharmacy and pharmaceuticals.
The inclusion of the top level domain descriptor “.com” in the disputed domain name does not affect a finding of confusing similarity. UDRP panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr. supra, which held that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 (June 25, 2000), finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Several UDRP panels have previously held that Complainant owns rights in the EXPRESS SCRIPTS trademark and that such rights merit protection under the Policy. See, Express Scripts, Inc. v. TheSonicNet,WIPO Case No. DCO2010-0010, supra (“Complainant’s evidence[...] provides convincing proof that the EXPRESS SCRIPTS trademark and business are very well-known. This is a well-established business, with a significant Internet presence in North America and internationally.”); Express Scripts, Inc. v. Whois Privacy Protection Service, Inc./Domaindeals, supra . See, Section 4 above for further cases.
The Panel finds that Complainant has proven that the disputed domain name is confusingly similar to Complainant’s trademarks for including EXPRESS SCRIPTS. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s registered trademarks or any trademarks confusingly similar thereto. Complainant’s registration of its EXPRESS SCRIPTS trademark preceded the registration of the disputed domain name by over fifteen years. Complainant’s use of its EXPRESS SCRIPTS registered trademark in the United States of America preceded the date of registration of the disputed domain name by over twenty years. Complainant has been using its EXPRESS SCRIPTS trademark in association with its goods and services since 1986. Respondent registered the disputed domain name on December 17, 2009. Complainant’s trademark EXPRESS SCRIPTS had been widely advertised, used, registered and was well-known in the United States prior to Respondent’s registration of the disputed domain name. Previous UDRP panels have found that in the absence of any license or permission from a complainant to use widely-known trademarks, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed. See, LEGO Juris A/S v. DomainPark Ltd, David Smith, A Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138 (March 10, 2010).
The disputed domain name resolves to a parked webpage that provides links to the websites of Complainant’s competitors. Use that intentionally trades on the fame of another cannot constitute a bona fide offering of goods and/or services. See, Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”, supra.
There is no evidence that Respondent is commonly known by the disputed domain name or is making a legitimate noncommercial or fair use of the disputed domain name. See, The Caravan Club v. Mrgsale, NAF Claim No. 95314 (involving the domain name , where it was held that “[r]egistration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to utilize the mark reveals bad faith”); See also CBS Broadcasting Inc. v. Worldwide Webs, Inc.,WIPO Case No. D2000-0834 (September 4, 2000).
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a disputed domain name. Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once this showing is made, the burden of production shifts to respondent to demonstrate its rights or legitimate interests in the disputed domain name. Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.
There is no evidence that Respondent is making any legitimate noncommercial use of the disputed domain name.
The Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and used in bad faith. C.1. Registered in Bad Faith
Complainant has established that it is the owner of numerous registered trademarks in the United States of America for or including the trademark EXPRESS SCRIPTS registered in relation to products and services in the pharmacy and pharmaceutical field described in more particularity in section 4 above. Complainant and its predecessors have manufactured, advertised, distributed and sold pharmaceutical and provided pharmacy benefit management services under the trademark EXPRESS SCRIPTS since at least as early as 1986. Complainant is a Fortune 100 company and one of the largest companies providing pharmacy benefit management services in the world with over fifty (50) million members.
The disputed domain name is identical to Complainant’s EXPRESS SCRIPTS trademark except that the disputed domain name deletes the space between EXPRESS and SCRIPTS, adds the word “pharmacy”, and adds the generic top-level domain “.com”. Complainant is the owner of the registered trademark EXPRESS SCRIPTS, a well-known trademark in the United States which was in use for over twenty five years prior to the date of registration of the disputed domain name on December 17, 2009. Complainant’s trademark EXPRESS SERVICES is registered in association with goods and services in the pharmacy and pharmaceutical field. The Panel finds that that it is exceedingly unlikely that the disputed domain name was not based on Complainant’s trademarks with knowledge that Complainant used its trademark EXPRESS SCRIPTS in association with goods and services in the pharmacy and pharmaceutical field.
The Panel finds on a balance of probabilities that Respondent registered the disputed domain name in bad faith. C.2. Domain Name Used in Bad Faith
Paragraph 4(b)(iv) of the Policy provides that using a domain name to intentionally attempt to attract Internet users to your website for commercial gain by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a respondent’s website constitutes evidence of bad faith use of a domain name.
Respondent’s webpage associated with the disputed domain name include links to entities providing products and services related to the kind of products and services offered by Complainant without any information relating to Respondent, its purpose, business, or proposed business, if any. Respondent’s use of the disputed domain name which is confusingly similar to Complainant’s registered trademark EXPRESS SCRIPTS as the distinctive elements and the descriptive term “pharmacy” which is descriptive of the goods and services for which Complainant’s trademark is used and registered enables Respondent to draw Internet users to the website associated with the disputed domain name for profit, by misleading Internet users associating the disputed domain name, goods and services with Complainant. The Panel infers that Respondent is receiving click-through profits as the pages associated with the disputed domain name make no reference to Respondent, its purpose, business or proposed business. Linking to websites of institutions that are active in the same field as Complainant is evidence of bad faith use. See, e.g., Google Inc. v. Forum LLC, NAF Claim No. 1053323 (finding bad faith registration and use where resolves to a commercial search engine website generating click-through advertising fees); Brink’s Network, Inc. v. Jenny Ho, ,WIPO Case No. D2009-0530 (June 10, 2009) (“Where, as here, the disputed domain name is used to link, inter alia, to websites of the [c]omplainant’s competitors, a holding of bad faith use will typically follow”).
The Panel finds that Respondent purposely registered the disputed domain name to obtain traffic that was intended for Complainant. See, WP IP LLC v. Direct Navigation Associates/ Moniker Privacy Services, supra, (“The Panel is also prepared to find that the Respondent registered the disputed domain name and is using the domain name for the operation of a click-through website which provides links to websites of competitors of the Complainant. The Respondent is thereby deliberately trading on the goodwill of the Complainant, by attracting internet users and diverting internet traffic intended for the Complainant to the Respondent’s website for the purpose of monetary gain. Prior Panels have recognized this type of conduct as evidence of bad faith”).
The Panel finds that Complainant has proven on a balance of probabilities that Respondent has used the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, and that Complainant satisfies the requirement under paragraph 4(a)(iii) of the Policy.
The Complainant also submitted that Respondent is using the disputed domain name in bad faith, in direct violation of paragraphs 4(b)(i) and 4(b)(iii) of the Policy. In view of the Panel’s finding under paragraph 4(b)(iv) above the Panel finds it unnecessary to consider Complainant’s submissions under paragraphs 4(b)(i) and 4(b)(III) 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 Carson
Presiding Panelist
John Swinson
Panelist
Rodrigo Velasco Santelices
Panelist
Dated: June 2, 2011
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