The Complainants are Aetna Inc. of Hartford, Connecticut, United States of America (“United States”) and CVS Pharmacy, Inc. of Woonsocket, Rhode Island, United States, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is James of Seoul, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Korea Server Hosting Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2018. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2018, the Registrar transmitted by email to the Center its verification response confirming that the language of the registration agreement is Korean, that the Respondent is listed as the registrant, and providing the Respondent’s contact details.
On April 13, 2018, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. On April 16, 2018, the Complainants requested for English to be the language of the proceeding. On April 17 and April 18, 2018, the Respondent requested for Korean to be the language of the proceeding.
The Center verified that the 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 the Respondent of the Complaint in both English and Korean, and the proceedings commenced on April 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2018. The Center received informal email communications from the Respondent on April 20, 2018. On May 10, 2018, the Center informed the Parties that it would proceed to panel appointment.
The Center appointed Moonchul Chang as the sole panelist in this matter on May 18, 2018. 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 first Complainant, Aetna Inc., founded in 1853, is one of the leading health care benefits companies in the United States, which offers a broad range of traditional, voluntary and consumer-directed health insurance products and related services. Aetna Inc. first registered a United States service mark including the AETNA mark on October 30, 1923 (THE AETNA-IZER). Aetna Inc. is the owner of at least 137 trademark registrations in at least 38 countries including the Republic of Korea (e.g., Reg. No. 4100103820000 for AETNA, registered on February 19, 2009).
The second Complainant, CVS Pharmacy, Inc., is a leading pharmacy innovation company in the United States which offers retail pharmacy, pharmacy benefits management, clinical services, specialty pharmacy and digital services, etc. CVS Pharmacy, Inc. is the owner of at least 357 trademark registrations in at least 20 countries including the Republic of Korea for marks that consists of or includes “CVS” (e.g., Reg. No. 40-1245094 for CVS HEALTH, registered on April 7, 2017). CVS Pharmacy, Inc. also owns the CVS mark, Reg. No. 919,941, registered in the United States on September 7, 1971.
On December 3, 2017, CVS Pharmacy, Inc. and Aetna Inc. officially announced a “definitive merger agreement under which CVS Health will acquire all outstanding shares of Aetna”. The merger of the Complainants received widespread publicity in media before and after the official announcement.
The Respondent registered the disputed domain name on October 31, 2017, shortly after news articles were first published about a potential merger between the Complainants.
The Respondent is not using the disputed domain name in connection with an active website. 5. Parties’ Contentions A. Complainants
(1) The Complainants contend that the disputed domain name is identical or confusingly similar to both the AETNA trademark and the CVS trademark. The disputed domain name contains only the AETNA trademark and the CVS trademark in their entireties. The inclusion of two parties’ trademarks in the disputed domain name does nothing to dispel any confusing similarity.
(2) The Complainants contend that the Respondent has no rights or legitimate interest in the disputed domain name. The Complainant has never granted, licensed or authorized the Respondent to register or use the AETNA trademark or the CVS trademark in any manner. The Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. In addition the Respondent has never been commonly known by the disputed domain name. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
(3) The Complainants further contend that the Respondent registered and used the disputed domain name in bad faith. As the AETNA trademark and the CVS trademark are famous or widely known, the mere registration of the disputed domain name that is identical or confusingly similar to the famous or widely known trademark can create a presumption of bad faith. Although the Respondent is not using the disputed domain name in connection with an active website, his passive holding of the disputed domain name may amount to bad faith use. The disputed domain name was registered only five days after news articles were first published about a potential merger between the Complainants. Such timing is yet another indication of bad faith. Given the global reach and popularity of the AETNA mark and the CVS mark, it is inconceivable that the Respondent chose the disputed domain name without knowledge of the Complainants’ activities and their trademarks. Further, because the disputed domain name is so obviously connected with the Complainants, the Respondent’s actions suggest opportunistic bad faith. B. Respondent
The Center received informal email communications from the Respondent in which the Respondent indicated that he requests Korean to be the language of the proceeding, declines to participate in the present proceeding, will file a lawsuit, and will file a police report against the Complainant for obtaining the Respondent’s domain name registration ID and password by “hacking” the Respondent. The Respondent did not reply substantively to the Complainants’ contentions. 6. Discussion and Findings 6.1. Preliminary Issue: Language of Proceedings
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the panel determines otherwise or otherwise agreed to by the Parties. In this present case the Registrar confirmed that the language of the Registration Agreement for the disputed domain name is Korean.
However, the Complaint was filed in English. The Complainants request that the language of proceeding be English for the following reasons. Firstly, the disputed domain name consists solely of English – not Korean – characters given that it contains two trademarks – AETNA and CVS – that are owned by companies based in the United States. Consistent with WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1, the English language is supported in this case given that English is represented by the language/script of the disputed domain name, which is the same as that of the Complainants’ marks. Secondly, it is also appropriate to allow this proceeding in English because there is evidence of other Respondent-controlled domain names registered, used, or corresponding to the English language such as , , , , and . Finally, to proceed otherwise would be to apply a strict and unbending application of paragraph 11 that may result in delay and considerable and unnecessary expenses of translating documents. On the other hand the Respondent contends that he does not understand English and requests to conduct the administrative proceeding in the Korean language since the language of the registration agreement is Korean.
Here, the Panel observes that the Center, for its part, has communicated with the Parties in a bilingual manner in both English and Korean concerning all of the various steps and requirements thus far in this administrative proceeding. The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of the language of the proceeding by giving full consideration, inter alia, to the parties’ level of comfort with each language, expenses to be incurred, and possibility of delay in the proceeding in the event translations are required and other relevant factors.
In consideration of the above circumstances and in the interest of fairness to both Parties, the Panel concludes, in view of all of the above, that it is appropriate to render this Administrative Panel Decision in English. 6.2. Merits
Under paragraph 4(a) of the Policy, the Complainants must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the disputed domain name is identical or confusingly similar to the Complainants’ trademark or service mark; 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 disputed domain name incorporates the Complainants’ CVS trademark and AETNA trademark in their entirety. Numerous UDRP panels have held that where a domain name substantially incorporates a complainant’s trademark, this is sufficient to find the domain name “confusingly similar” within the meaning of the Policy (see A, Inc. v. MCL International Limited,WIPO Case No. D2000-1678). The inclusion of two trademarks owned by the Complainants does not serve to avoid a finding of the confusing similarity with either of the Complainants’ marks. In addition, the generic Top-Level Domain (“gTLD”) suffix “.com” can be disregarded under the confusing similarity test (see DHL Operations B.V. v. zhangyl,WIPO Case No. D2007-1653).
Accordingly, the Panel finds the first element under paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the overall burden of proof is on the Complainants. However, once the Complainants present a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show its rights or legitimate interests. If the Respondent fails to come forth asserting any rights or legitimate interests, the Complainants are considered to have satisfied their burden (see, Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Firstly, the Complainants contend that they have never licensed or authorized the Respondent to use the Complainants’ trademarks or to register any domain names incorporating the CVS mark or the AETNA mark. The Respondent has used the Complainants’ trademarks without permission from the Complainants. Here, the Panel finds that the Complainants have made out a prima facie case. Secondly, the Complainants contend that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Thirdly, there is no evidence presented to the Panel that the Respondent has used, or has made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services or is making a legitimate noncommercial or fair use of the disputed domain name. In addition, there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name.
In this present case, the Respondent failed to come forward with any appropriate allegations or evidence that might demonstrate his rights or legitimate interests in the disputed domain name to rebut the Complainants’ prima facie case.
Accordingly, the Panel concludes that the Complainant has satisfied the second element under paragraph 4(a) of the Policy in the present case. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the domain name “has been registered and is being used in bad faith”. As this requirement is conjunctive, the Complainant must establish both bad faith registration and bad faith use. In addition, the circumstances listed in paragraph 4(b) of the Policy are not exclusive, and other circumstances may likewise lead to a finding of bad faith registration and use.
Firstly, regarding the bad faith registration, since the marks CVS and AETNA are widely known in many countries, including the Republic of Korea and United States, the Respondent is likely to have registered the disputed domain name with notice of both of the Complainants’ trademarks. Further, the Panel considers that the Respondent in all likelihood registered the disputed domain name with the expectation of taking advantage of the reputation of the Complainants’ trademarks or selling it to the Complainants or a third party. This is supported by the timing of the Respondent’s registration of the disputed domain name, i.e., shortly after news articles were first published about a potential merger between the Complainants. On the other hand, regarding bad faith use, although the Respondent is not using the disputed domain name in connection with an active website, the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding especially considering the reputation of the Complainants’ trademarks in this case. (WIPO Overview 3.0, section 3.3).
Based on the foregoing, the Panel is satisfied that bad faith registration and use have been sufficiently established with respect to the disputed domain name in accordance with paragraph 4(a)(iii) 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 the Complainant CVS Pharmacy, Inc.
Moonchul Chang
Sole Panelist
Date: June 10, 2018
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