The Complainant is CVS Pharmacy, Inc., United States of America (“United States”), represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Sameul Badri, India, self-represented. 2. The Domain Names and Registrar
The disputed domain names and (together the “Disputed Domain Names”) are 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 Names. On July 24, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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, and the proceedings commenced on July 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2019. On July 26, 2019, the Center received an email communication from the Respondent indicating that he is deleting the Disputed Domain Names. On July 29, 2019, the Center sent an email communication to the Parties regarding possible settlement. The Center received email communications from the Respondent on July 31, 2019, and August 16, 2019. The Complainant did not request suspension of the proceeding. No substantive Response was filed with the Center. On August 16, 2019, the Center informed the Parties that it would proceed to appoint the Panel. On the same date, the Center received an unsolicited supplemental filing from the Complainant.
The Center appointed Nick J. Gardner as the sole panelist in this matter on August 21, 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 is a retail pharmacy company based in the United States. It is the principal operating company of CVS Health Corporation (“CVS Health”), a publicly traded corporation with annual revenue in 2018 of USD 194.6 billion. The Complainant has more than 9,900 retail locations, approximately 1,100 walk‑in medical clinics, a pharmacy benefits manager with approximately 94 million plan members, and a dedicated senior pharmacy care business serving more than one million patients per year. The Complainant owns numerous trademarks for the term “cvs”, the earliest of which is United States Registration No. 919,941 for CVS (first used May 9, 1963; registered September 7, 1971). These trademarks are referred to in this decision as the “CVS trademark”. The Complainant also owns numerous registrations for the term “cvs caremark” – for example United States Registration No. 3,684,025 (first used February 29, 2008; registered September 15, 2009). These trademarks are referred to in this decision as the “CVS CAREMARK trademark”. The Complainant also owns the domain names , which is linked to a website which operates as an online retail website, and , which is linked to a website which provides information regarding the Complainant and its affiliates and their services under the CVS mark.
The Disputed Domain Name was created on April 26, 2018. Evidence filed with the Complaint shows the Respondent has used the Disputed Domain Name in connection with a website that purports to provide information about the Complainant but also contains placeholders for advertisements as well as links to other websites. At the time of this decision the website has changed and now contains what purports to be a third party survey from a well-known retailer. The Disputed Domain Name was created on September 6, 2017. This Disputed Domain Name does not resolve to any web page. 5. Parties’ Contentions A. Complainant
The Complainant has filed a detailed Complaint citing numerous previous UDRP decisions. The Panel does not consider it is necessary to repeat all that material here. The essential points the Complainant makes are as follows.
The Complainant says that the Disputed Domain Name is confusingly similar to its CVS trademark and the Disputed Domain Name is confusingly similar to its CVS CAREMARK trademark. It says “myhr” is likely to be taken as relating to human resources and the terms “myhr” and “login” are generic and non-distinctive.
The Complainant says that the Respondent has no rights or legitimate interests in the term “cvs” or “cvs caremark”.
The Complainant says that the Respondent’s registration and use of the Disputed Domain Names is in bad faith. It says they were clearly chosen with the Complainant and its trademarks in mind. It says 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. It says that the Disputed Domain Name has not been used but refers to various previous UDRP decisions as to passive holding of a domain name in this regard which it says establish bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. As indicated above email communications from the Respondent were received by the Center. These said that he was “ready to hand over the domains” and had “deleted the domains long ago”. The Panel does not propose to treat these as a Response as (a) they do not seek to set out any affirmative case the Respondent may have and (b) they do not in any event appear to be factually correct – as indicated above the Disputed Domain Name still resolves to an active website ad there is nothing in the record to show the Respondent has relinquished the Disputed Domain Names. 6. Discussion and Findings 6.1. Preliminary Issues
In the absence of a formal response from the Respondent the Panel can nevertheless proceed to determine this Complaint given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar which satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. In any event the communications from the Respondent (above) show he has received the Complaint. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909).
The Panel does not propose to admit the unsolicited filing from the Complainant. That filing merely comments on the Respondent’s email communications and it does not affect the Panel’s reasoning. 6.2. Substantive Discussions
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in relation to each of the Disputed Domain Names that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has rights in the CVS trademark and the CVS CAREMARK 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, 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 dictionary or descriptive term (here “myhr” and “login”) does not prevent a finding of confusing similarity under the first element (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.info”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Names are each 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 authorised, licensed, or permitted the Respondent to register or use either of the Disputed Domain Names or to use the CVS trademark or the CVS CAREMARK trademark. The Complainant has prior rights in the CVS trademark and the CVS CAREMARK trademark which precede the Respondent’s registration of the Disputed Domain Names. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Names 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, for example, 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 his rights or legitimate interests in the Disputed Domain Names. Accordingly the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Names 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 website to which it was linked clearly gives the impression of being operated by the Complainant but contains placeholders for sponsored links to third party products and services and the Respondent likely derives or intended to derive commercial gain as a result. It is well established that where a domain name is used to generate revenue in respect of “click through” traffic, and that traffic has been attracted because of the name’s association with the Complainant, such use amounts to use in bad faith, see for example Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315; Owens Corning v. NA,WIPO Case No. D2007-1143; McDonald’s Corporation v. ZusCom,WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky,WIPO Case No. D2008-0396.
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.
On the evidence that the Respondent has made no use of the Disputed Domain Name in the time he has owned it. In the circumstances of this case the Panel adopts the approach set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at 3.3 as follows:
“Can the ‘passive holding’ or non-use of a domain name support a finding of bad faith?
From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”.
In the present case the Panel adopts this approach and notes in particular the Respondent’s failure to provide any evidence of actual or contemplated good-faith use.
Overall it does not generally matter that the Respondent has not as yet used the Disputed Domain Name . “Passive holding” can itself amount to bad faith registration and use where the holding involves a domain name deliberately chosen because of its association with the Complainant. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131; Westdev Limited v. Private Data,WIPO Case No. D2007-1903; Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393; and Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273.
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 Names and be transferred to the Complainant.
Nick J. Gardner
Sole Panelist
Date: September 4, 2019
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