Complainant is CVS Pharmacy, Inc. of Woonsocket, Rhode Island, United States of America (“United States”), represented by Partridge Snow & Hahn LLP, United States.
Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / CVS Health of Woonsocket, Rhode Island, United States.1 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2015. On October 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 21, 2015, the Registrar 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 October 26, 2015 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 October 29, 2015.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 2, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 23, 2015.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on December 4, 2015. 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
Complainant, CVS Pharmacy, Inc., is a retail pharmacy company that operates more than 7,800 retail drug stores in the United States. Complainant owns and uses the CVS, CVS HEALTH and CVS/PHARMACY names and marks and has submitted as Annex C to the Complaint copies of (i) its United States federal trademark registrations for the marks CVS (the earliest of which issued in 1971) and CVS/PHARMACY (the earliest of which issued in 1997), and (ii) United States federal trademark applications for CVS HEALTH (filed on September 2, 2014). Complainant also owns the domain names , which operates as an online retail website, and , which provides information regarding Complainant and its affiliates and their services under the CVS mark.
The disputed domain name was registered on or about July 9, 2015. Currently, the disputed domain name does not resolve to any web page. 5. Parties’ Contentions A. Complainant
Complainant asserts that CVS is a well-known retail brand and that the CVS trademarks are well known to consumers of retail and online drug store services.
Complainant contends that the disputed domain name is confusingly similar to Complainant’s CVS and CVS HEALTH marks because it contains the CVS and CVS HEALTH marks in their entirety. Complainant also contends that the inclusion in the disputed domain name of the descriptive term “career” creates confusion because the term is generic within Complainant’s industry and suggests that consumers can enter into transactions with Complainant and/or obtain online information about Complainant.
Complainant argues that because it has established prior rights in and to its CVS marks, and has not licensed or authorized Respondent to register the disputed domain name, Respondent lacks any rights or legitimate interests in the disputed domain name. Complainant further contends that Respondent is not commonly known by the disputed domain name, is not in any way affiliated with Complainant, and has not used the disputed domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use, but instead has used the disputed domain name in connection with an email address in order to pretend to be an official member of Complainant and to fraudulently solicit personal identifying information from unsuspecting consumers seeking a job with Complainant.
Finally, Complainant asserts that Respondent registered and has used the disputed domain name in bad faith since Respondent must have known of Complainant’s well-known CVS marks given that Respondent has used the disputed domain name with an email address to solicit personal information from consumers seeking jobs with Complainant’s organization. Complainant further asserts that Respondent’s use of the disputed domain name is in bad faith as Respondent has used the disputed domain name for financial gain by misleading and attracting job seekers interested in positions with Complainant in order to illicitly obtain personal information from such job seekers. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states:
“4.6 Does failure of a respondent to respond to the complaint (respondent default) automatically result in the complainant being granted the requested remedy?
Consensus view: A respondent’s default does not automatically result in a decision in favor of the complainant … the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. Although a panel may draw appropriate inferences from a respondent’s default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 2.0, paragraph 1.1. Complainant has provided evidence that it owns trademark registrations for the CVS mark and that it has adopted, made extensive use of and filed a United States trademark application for the CVS HEALTH mark well before Respondent registered the disputed domain name. Complainant has also submitted ample evidence that the CVS mark is a well-known retail brand in the United States.
With Complainant’s rights in the CVS and CVS HEALTH marks established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s CVS and CVS HEALTH marks as it incorporates the CVS and CVS HEALTH marks in their entirety at the head of the disputed domain name. The addition of the descriptive term “career” does not distinguish the disputed domain name from Complainant’s CVS and CVS HEALTH marks and in fact heightens the confusion by suggesting that the disputed domain name is related to Complainant and to “careers” at Complainant’s company. See, e.g.,Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the CVS and CVS HEALTH marks and in showing that the disputed domain name is identical or confusingly similar to those trademarks. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, well aware of Complainant and its CVS marks and does not have any rights or legitimate interests in the disputed domain name. Respondent has not made any bona fide or fair use of the disputed domain name in connection with any product or service. Rather, Respondent has used the disputed domain name to mislead those seeking a job with Complainant to disclose personal information such as driver’s license and passport numbers. Indeed, Complainant has produced examples of correspondence sent by Respondent to job seekers falsely providing a job offer with Complainant and soliciting personal information from such job seekers. Such use essentially constitutes a form of phishing and does not, and cannot, constitute a bona fide use or legitimate interest.
Given that Complainant has established with sufficient evidence that it owns rights in the CVS and CVS HEALTH marks, and given Respondent’s above noted actions and failure to file a response, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
In sum, the Panel finds that in this case Complainant has established a prima facie case showing that Respondent has no rights to or legitimate interests in the disputed domain name. As Respondent, although given an opportunity to present its case, has decided not to submit a response and put forward arguments as to why it should be regarded as having rights or legitimate interests in the disputed domain name, the Panel concludes that, based on the available record, Respondent has not rebutted Complainant’s prima facie case. Complainant thus prevails on this element of the Policy. C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
In the present case, Respondent has registered the disputed domain name that fully incorporates Complainant’s CVS and CVS HEALTH marks with the generic term “career”. Such combination of a generic term with Complainant’s well-known CVS and CVS HEALTH marks creates a likelihood of confusion by suggesting to consumers that the disputed domain name concerns careers or employment with Complainant. Given that Respondent has sent emails and correspondence to job seekers that feature the CVS HEALTH name and mark and specifically refers to Complainant’s corporate website at , there can be no doubt that Respondent was aware of Complainant and its CVS marks when Respondent registered the disputed domain name. Needless to say, given that the uncontested evidence shows that Respondent has used the disputed domain name to send fraudulent job offers to consumers to elicit personal information and to scam individuals into making purchases of alleged equipment they will be receiving as part of their employment, it is clear that Respondent specifically targeted Complainant and its CVS mark, and has done so opportunistically and in bad faith.
Respondent’s bad faith is further established by the fact Respondent has not only sought to conceal its identity by using a privacy shield, but has registered the disputed domain name by falsely claiming to be Complainant and using Complainant’s own contact details. Such actions by Respondent, when coupled with the sending of false and fraudulent emails to job seekers, underscores Respondent’s overall bad faith registration and use of the disputed domain name.
Accordingly, the Panel finds that Complainant succeeds under this element of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Complainant.
Georges Nahitchevansky
Sole Panelist
Date: December 18, 2015
1 Although CVS Health is technically the registrant of the disputed domain name and therefore correctly named as Respondent under the Rules, the Panel finds that the CVS Health name was falsely used to register the disputed domain name and was likely done in furtherance of the true registrant’s job scam, discussed below.
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