Complainant is CVS Pharmacy, Inc., United States of America (“United States”), represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, United States.
Respondent is Registration Private, Domains By Proxy, LLC, United States / Justin Kamm, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2019. On October 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 28, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 19, 2019. The Center appointed Robert A. Badgley as the sole panelist in this matter on November 25, 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 Complainant, with its affiliated companies (collectively “Complainant”), is a major retail pharmacy in the United States, with operations in many other countries as well. More broadly, Complainant describes itself as follows: “Complainant is the premier health innovation company in the United States, with more than 9,900 retail locations, approximately 1,100 walk-in medical clinics, a leading pharmacy benefits manager with approximately 94 million plan members, a dedicated senior pharmacy care business serving more than one million patients per year, expanding specialty pharmacy services, and a leading stand-alone Medicare Part D prescription drug plan.” Complainant is ranked as the eighth largest American corporation on the “Fortune 500” list. In 2018, its global revenues exceeded USD 194 billion. Complainant has owned the domain name Complainant holds hundreds of trademark registrations throughout the world for the mark CVS and CVS-formative marks, including United States Patent and Trademark Office Reg. No. 0,919,941 (registered September 7, 1971) for CVS in connection with “retail drugs, beauty aids and sundry goods store services.” As Complainant has noted, numerous panels in prior cases decided under the Policy have held that Complainant’s CVS mark is “well-known” and/or “famous” in the United States. See, e.g., Aetna Inc. and CVS Pharmacy, Inc. v. James,WIPO Case No. D2018-0796 (“the mark[] CVS... [is] widely known in many countries”); Aetna Inc., CVS Pharmacy, Inc. v. Chang Jiang Li, Li Chang Jiang,WIPO Case No. D2018-0795 (referring to “the reputation and fame” of the CVS Trademark); and CVS Pharmacy, Inc. v. Registration Private, Domains By Proxy, LLC / CVS Health,WIPO Case No. D2015-1876 (“the CVS mark is a well-known retail brand in the United States”). The Domain Name was registered on May 8, 2019. The Domain Name does not resolve to an active website. On September 13, 2019, Complainant’s lawyer sent a notice to the Registrar asserting Complainant’s rights in the CVS mark and asking the Registrar to disclose Respondent’s contact information to Complainant. On September 16, 2019, Respondent sent an email to Complainant’s counsel, stating: “I would be willing to sell this domain to the client. Let me know if they would be interested in making an offer.” On September 17, 2019, Complainant’s counsel sent Respondent a cease-and-desist letter, demanding the immediate and uncompensated transfer of the Domain Name to Complainant. Respondent did not reply to this letter. The Complaint followed. 5. Parties’ Contentions A. Complainant Complainant contends that it has established all three elements required under the Policy for a transfer of the Domain Name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and The Panel concludes that Complainant has rights in the mark CVS through registration and use demonstrated in the record. The Panel also finds that the Domain Name is identical to Complainant’s registered trademark. Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements: (i) before any notice to you [Respondent] of the dispute, your 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 The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent has not come forward in this proceeding (or earlier, in response to Complainant’s communications) to articulate why it registered the Domain Name or otherwise explain its bona fides. Complainant asserts that Respondent has no affiliation with Complainant, and no permission to use the CVS mark in a Domain Name or any other manner. There is no evidence that Respondent has some legitimate connection to the initials “CVS.” Finally, Respondent has not put the Domain Name to any use, other than to offer it for sale to Complainant. Complainant has established Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”: (i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or The Panel concludes that Respondent has registered and used the Domain Name in bad faith under the above-quoted Policy paragraph 4(b)(i). Given the fame of Complainant’s CVS mark in the United States (Respondent’s country), the Panel finds it more likely than not that Respondent was aware of the CVS mark when registering the Domain Name. Further, the fact that the Domain Name has the generic Top-Level Domain “.inc” suggests that Respondent associated “CVS” with some sort of business, in which case Complainant is the obvious association. Respondent made no use of the Domain Name until being contacted by Complainant’s counsel via the Registrar. At that time, Respondent stated that he wished to sell the Domain Name, and asked Complainant to make an offer. If Respondent were not interested in turning a profit, the natural thing to do would have been to state the price he had paid, and ask Complainant for that sum as compensation. The Panel also finds Respondent in bad faith under the well-established “passive holding” doctrine first articulated in Telstra Corp. Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In that seminal case, the panel held that bad faith under the Policy may occur, in appropriate circumstances, where a respondent passively holds a domain name confusingly similar to a famous trademark. The two main factual considerations driving the Telstra decision, which are also present here, are that the trademark in question is well-known in the respondent’s country and that the respondent offered no evidence of any legitimate purpose for registering the domain name. The Telstra panel concluded that, in those circumstances (plus some other considerations not present here but not as important), “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.” The Panel concludes that the same result is warranted under the record here. Complainant has established Policy paragraph 4(a)(iii). 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 Domain Name Robert A. Badgley
(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. A. Identical or Confusingly Similar
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
Sole Panelist
Date: November 25, 2019
Full & Egal Universal Law Academy