The Complainant is CVS Pharmacy, Inc., United States of America (“U.S.”), represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Nanci Nette, Name Management Group, United States of America. 2. The Domain Name and Registrar
The disputed domain name (“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 July 22, 2019. On July 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 24, 2019, 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 the Complainant on July 25, 2019, 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 amendment to the Complaint on July 26, 2019.
The Center verified that the Complaint together with the amendment to 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, and the proceedings commenced on July 31, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 20, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 21, 2019.
The Center appointed Martin Schwimmer as the sole panelist in this matter on September 12, 2019. 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, CVS Pharmacy, Inc., is eighth on the Fortune 500 list of U.S. corporations. It has owned and used the CVS trademark for retail and healthcare services for many years. It owns numerous trademark registrations for CVS in many jurisdictions, including U.S. trademark Registration No. 919,941, registered on September 7, 1971. The Respondent registered the Dispute Domain Name on November 11, 2017. The Respondent re-directed the Disputed Domain Name to a website providing a link to download “security” software. 5. Parties’ Contentions A. Complainant
The Complainant adopted the CVS trademark (the “Mark”) 54 years before the Respondent’s registration of the Disputed Domain Name, in connection with retail and pharmacy services. It has registered the Mark in over 27 countries.
The Disputed Domain Name is confusingly similar to the Complainant’s famous CVS trademark. The term “myhr” is likely to be taken as relating to human resources, and the term is generic and non-distinctive.
The Respondent uses the Disputed Domain Name to direct to a site offering “Safe Net by Safely” software, a similar variation of which has been described as a “browser hijacker”. The Respondent has no rights or legitimate interests in the term “cvs”.
The Respondent’s registration and use of the Disputed Domain Names is in bad faith, as it was clearly chosen with the Complainant and its famous trademark in mind.
The Disputed Domain Name has been used in a confusing and deceptive manner and relies on the Complainant’s well-known trademark to attract visitors and thereby generate income. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has easily established its rights in the CVS trademark.
Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662). It is established that, where a mark is recognizable within a disputed domain name, as is the case here with the famous CVS mark, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694).
It is also established that the mere addition of a descriptive term (here, the term “myhr”) does not prevent a finding of confusing similarity under the first element (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189). The Panel agrees with the Complainant’s contention that “myhr” is likely to be taken as relating to human resources and the term “myhr” non-distinctive. This precise term was in fact viewed as non-distinctive in a recent UDRP proceeding also involving this Complainant, CVS Pharmacy, Inc. v. Sameul Badri,WIPO Case No. D2019-1743 ().
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.org”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, e.g., Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
Finally, the Panel notes that in this case, the addition or substitution of spaces or punctuation marks is inconsequential in determining identity or confusing similarity”. Six Continents Hotels, Inc. v. Finlaw Agency and ResS, Inc.,WIPO Case No. D2002-1159.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademarks and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of these applies in the present circumstances. The Complainant has not authorized, licensed, or permitted the Respondent to either register or use the Disputed Domain Name or use the CVS trademark. The Complainant has prior rights in the CVS trademark which precede the Respondent’s registration of the Disputed Domain Name.
The Complainant alleges that the Respondent is using the Disputed Domain Name in connection with a variety of random websites, including a website that falsely purports to offer a “Security Check” but instead redirects users to another website where they are encouraged to install a Google Chrome extension called “Safe Net by Safely”, a similar variation of which has been described as a “browser hijacker”. Such uses are not bona fide. See, e.g., Tumblr, Inc. v. A Domain Privacy / Transure Enterprise Ltd, Host Master,WIPO Case No. D2013-0213 (a disputed domain name that “redirects to a false plugin error page that generates pop-up advertisements and attempts to install a file” is not bona fide).
The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name. See, e.g., Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(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 web site or location or of a product or service on your web site or location.
The Panel concludes that (iv) applies as the Disputed Domain Name is likely to attract traffic because of confusion with the Complainant’s trademark. The Respondent likely derives or intended to derive commercial gain as a result.
First, it is implausible that the Respondent was unaware of the Complainant when it registered the Disputed Domain Name given the fame of the Trademark. See, e.g., Six Continents Hotels, Inc. v. Lin hongyu, Cheng Qi Lin,WIPO Case No. D2017-2033. “[T]he mere registration of a domain name that is identical or confusingly similar… to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.1.4.
The addition of the term “myhr” to the Disputed Domain Name removes any doubt that the Respondent targeted the Complainant. “HR” is commonly understood in the U.S. to refer to “human resources”, and the HR departments of companies often administer healthcare benefits, including prescription drug benefits, on behalf of employees. The Complainant is one of the largest providers of prescription drug benefits in the U.S.
Second, the Dispute Domain Name re-directs to an advertisement for a “security” software that is purported to be a form of malware. Panels have held that a website “inviting the user to follow links which may lead to the installation of disruptive adware or damaging malware” is “for commercial gain or use for the purpose of disrupting the business of the Complainant” and is axiomatic bad faith. ZB, N.A., dba Zions First National Bank v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2017-0386.
Accordingly, and applying the principles in the above noted UDRP decisions the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. 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.
Martin Schwimmer
Sole Panelist
Date: September 20, 2019
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