The Complainant is CVS Pharmacy, Inc., United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Andris Tukis, Latvia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2020. On May 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 22, 2020, 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 June 1, 2020 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 June 1, 2020. 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 June 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2020. On June 3, 2020, the Center received an informal email communication from the Respondent. The Respondent did not submit any formal response. Accordingly, the Center notified the commencement of Panel Appointment Process on June 24, 2020. The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on July 10, 2020. 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 CVS Pharmacy, Inc., is the principal operating company of CVS Health Corporation (“CVS Health”), a publicly traded corporation with annual revenue in 2019 of USD 256.8 billion. CVS Pharmacy, Inc., is a direct, wholly owned subsidiary of CVS Health and holds many assets directly, including most of the relevant intellectual property interests, including the CVS trademark (as defined below) and the domain names containing the CVS trademark. The Complainant is the owner of at least 520 trademark registrations in at least 27 countries or jurisdictions worldwide for marks that consist of or contain CVS or CVS HEALTH, hereinafter referred to as the “CVS Trademark”. The Complainant’s registrations for the CVS Trademark in the United States include the following: - Reg. No. 919,941 for CVS (registered September 7, 1971) The Complainant is the registrant of and uses the domain names The disputed domain name The Complainant is a health innovation company in the United States, with approximately 300,000 workers in more than 9,900 retail locations and approximately 1,100 walk-in medical clinics in 49 states, the District of Columbia, and Puerto Rico, serving 4.5 million customers daily and ranks as number 8 on the “Fortune 500” list of America’s largest corporations. In summary, the Complainant claims that the disputed domain name is identical and confusingly similar to the CVS Trademark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith. The Respondent offered to sell the disputed domain name to the Complainant by sending an email to the Complainant on the same date that the Respondent registered the disputed domain name, April 28, 2020. Further, the Respondent is advertising the disputed domain name for sale on a website associated to the disputed domain name. The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the CVS Trademark in any manner. The Respondent has never been commonly known by the disputed domain name and has never acquired any trademark or service mark rights in the disputed domain name. Although it is unclear whether the Respondent is currently engaged in actual acts of phishing with the disputed domain name, it is obvious that a domain name that is identical to the Complainant’s CVS Trademark is ripe for phishing or other misuse. Finally, the Complainant requests the Panel to issue a decision ordering that the disputed domain name be transferred to the Complainant. B. Respondent On June 3, 2020, the Respondent sent an informal email to the Center in which he appeared to have indicated that he would transfer the disputed domain name to the Complainant in return for a payment of USD 3,000. The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the 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. A. Identical or Confusingly Similar The Panel is satisfied that the Complainant has proved that it has rights in the CVS Trademark. As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the disputed domain name is confusingly similar with the trademark. The test involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. The Panel considers that the disputed domain name is identical and confusingly similar with the Complainant’s CVS Trademark. The disputed domain name contains the CVS Trademark (including the CVS HEALTH trademark) in its entirety. As set forth in section 1.7 of WIPO Overview 3.0: “in cases where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark”. See also, e.g., Oki Data Americas, Inc. v. Asdinc.com,WIPO Case No. D2001-0903 (“the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy”). In a previous UDPR case the panel found that disputed domain names containing the words “CVS” and “health” were confusingly similar to the CVS Trademark (CVS Pharmacy,Inc. v. Linyanxiao,WIPO Case No. D2015-1839). For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) as it is viewed as a standard registration requirement (section 1.11 of WIPO Overview 3.0). Thus, for the test for confusing similarity the Panel shall disregard the “.info” gTLD included in the disputed domain name. The Panel finds that the disputed domain name is identical or confusingly similar with the CVS Trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s 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 it 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. Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. The offering for sale of the disputed domain name by the Respondent does not constitute use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services and, therefore, cannot establish rights or legitimate interests pursuant to paragraph 4(c)(i) of the Policy. As sustained by the Complainant, there is no evidence in the present case that the Respondent has been commonly known by the disputed domain name, enabling it to establish rights or legitimate interests therein. The name of the Respondent does not resemble the disputed domain name in any manner. Furthermore, there is no evidence in the file to prove any of the circumstances mentioned in paragraph 4(c) of the Policy, nor any other element to prove that the Respondent has legitimate interests or that it has established rights in the disputed domain name. Likewise, and as further discussed under section 6.C of this decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name – which is identical and confusingly similar with the Complainant’s CVS Trademark – but rather that it intends to use the disputed domain name for the purpose of deriving unfair monitory advantage by confusing Internet users and leading them to believe that the site to which the disputed domain name relates to the official site of the Complainant. As established in section 2.5 of WIPO Overview 3.0: “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry [….] Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation.” As indicated in paragraph 6.A above, the disputed domain name is identical or confusingly similar with the CVS Trademark and the Respondent is not using the disputed domain name in any way that may be considered fair use. The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name (Telstra Corporation Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been fulfilled. C. Registered and Used in Bad Faith The Respondent registered the disputed domain name that contains a third party’s trademark without authorization. The Respondent could not ignore the existence of the CVS Trademark when it registered the disputed domain name on April 28, 2020. Pursuant to section 3.1.4 of WIPO Overview 3.0 , “[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”. The CVS Trademark is famous and/or widely known, as previous UDRP panels have said. Specifically, a previous UDRP panel said the CVS Trademark “is a well-known retail brand in the United States”. CVS Pharmacy, Inc. v. Registration Private, Domains By Proxy, LLC / CVS Health,WIPO Case No. D2015-1876. In fact, the CVS Trademark is widely known worldwide, given that it is protected by at least 520 trademark registrations in at least 27 countries or jurisdictions worldwide, and the Complainant had net revenue of USD 256.8 billion in 2019. Previous panels under the Policy have said that “the mark CVS [… is] widely known in many countries,” Aetna Inc. and CVS Pharmacy, Inc. v. James,WIPO Case No. D2018-0796; and the CVS Trademark enjoys “reputation and fame”, Aetna Inc., CVS Pharmacy, Inc. v. Chang Jiang Li, Li Chang Jiang,WIPO Case No. D2018-0795. The Complainant registered and used the CVS Trademark many years before the Respondent registered the disputed domain name. Therefore, it is difficult to conceive that any use of the disputed domain name would not be related by Internet users to the Complainant and its activities. This assumption is further supported by the fact that the disputed domain name entirely contains the Complainant’s CVS Trademark. The inclusion of the word “health” in the disputed domain name not only relates to the Complainant’s business but also makes the disputed domain name identical to the Complainant’s trademark CVS HEALTH and strengthens the idea of a relationship between disputed domain name and the Complainant and the CVS Trademarks. In view of the above, it is inconceivable that the Respondent was not well aware of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Indeed, the Respondent’s purpose in registering the disputed domain name incorporating the CVS Trademark was very likely to capitalize on the reputation of the Complainant’s CVS Trademark by diverting Internet users to its own website. UDRP panels have found that registering and offering a domain name for sale in excess of the respondent’s costs related to the domain name may support a finding of bad faith registration and use when circumstances exist such as, inter alia, the distinctiveness or reputation of the complainant’s mark, the respondent’s likely knowledge of the complainant’s rights, the nature of the domain name, and the failure of the respondent to present a credible evidence-backed rationale for registering the domain name. The Panel finds that all these circumstances are relevant to this administrative proceeding and therefore that a finding of bad faith is supported by the Respondent’s registration and offering of the disputed domain name for sale with the intent to profit from the goodwill associated with the Complainant’s well-known trademarks. (Section 3.1.1 of WIPO Overview 3.0). In conclusion, the Panel considers that the Respondent has registered and is using the disputed domain name in bad faith to confuse Internet users and thereby derive an illegal commercial benefit by taking advantage of the popularity of the Complainant’s CVS Trademark. Therefore, the Complaint also succeeds on the third prong of paragraph 4 (a) 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 Miguel B. O’Farrell
- Reg. No. 1,698,636 for CVS (registered July 7, 1992)
- Reg. No. 1,904,058 for CVS (registered July 11, 1995)
- Reg. No. 5,055,141 for CVS HEALTH (registered October 4, 2016)
- Reg. No. 5,402,010 for CVS HEALTH (registered February 13, 2018)
Sole Panelist
Date: July 18, 2020
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