The Complainant is CVS Pharmacy, Inc., United States of America, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America (“United States”).
The Respondent is Domain Admin / Privacy Protect, LLC (PrivacyProtect.org), United States / Domain Privacy Guard Sociedad Anónima Ltd, Panama. 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 23, 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 May 27, 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 May 27, 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 May 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2020. The Center appointed Alistair Payne as the sole panelist in this matter on July 14, 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 The Complainant is the principal operating company and a wholly owned subsidiary of CVS Health Corporation, a publicly listed United States Fortune 500 company operating in the health sector. The Complainant operates throughout 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. The Complainant owns at least 520 trademark registrations in 27 jurisdictions for its CVS mark, including in particular, United States trademark registration No. 919,941 for CVS first used on May 9, 1963 and registered on September 7, 1971. The Complainant is the registrant of and uses the domain names The disputed domain name was registered on May 9, 2012. The disputed domain name redirects to a website that is a monetized parking page containing pay-per-click (“PPC”) links for various goods and services, including links labeled “HR Payroll Services” and “Employee Benefits Management”. The website also advertises the disputed domain name for sale. 5. Parties’ Contentions A. Complainant The Complainant submits that it owns registered trademark rights as set out above. It says that the disputed domain name wholly incorporates its CVS mark and is therefore confusingly similar to the Complainant’s CVS mark. The Complainant notes that the additional elements “my” and “hr” are either non-distinctive or a widely used abbreviation and do not prevent a finding that the disputed domain name is confusingly similar to the Complainant’s CVS trademark. The Complainant also notes that previous panels have found that disputed domain names containing the CVS mark plus the words “my” and/or “hr” (a common abbreviation for “human resources”) are confusingly similar to the CVS mark. See for example CVS Pharmacy, Inc. v. Rajesh,WIPO Case No. D2019-2614. The Complainant submits that it has never assigned, granted, licensed, sold, transferred or in any way authorised the Respondent to register or use its CVS mark in any manner. It says that to the best of its knowledge 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. It submits that by including commercial links for third-party websites on the website associated with the disputed domain name (even those that are for unrelated services), the Respondent has failed to create a bona fide offering of goods or services under the Policy for the purposes of paragraph 4 (c)(i) of the Policy. In addition, it submits that by using the disputed domain name in connection with a monetized parking page the Respondent’s actions are clearly commercial and, therefore the Respondent cannot establish rights or legitimate interests under paragraph 4(c)(iii) of the Policy. The Complainant submits that the CVS mark was registered 41 years before the disputed domain name and is famous and that the Respondent must have been aware of its mark when the disputed domain name was registered. The Complainant notes that a previous panel said that 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, and says that the mark is well-known worldwide, considering that it is protected by at least at least 520 trademark registrations in at least 27 countries or jurisdictions worldwide and Complainant had net revenue of USD 256.8 billion in 2018. The Complainant notes that the website at the disputed domain name is a monetised parking page that features pay-per-click links. Even if not directed at the CVS mark or competitor brands, the Complainant submits that this still amounts to bad faith use in terms of paragraph 4(b)(iv) of the Policy. In addition the Complainant says that by offering the disputed domain name for sale on the website that it has acted in bad faith under paragraph 4(b)(i) of the Policy. As a consequence, the Complainant maintains that the Respondent has both registered and used the disputed domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has demonstrated that it owns various trade mark registrations including United States trademark registration No. 919,941 for CVS first used on May 9, 1963 and registered on September 7, 1971. The disputed domain name wholly incorporates the Complainant’s CVS trade mark. The additional elements in the disputed domain name, namely, “my” and “hr” are either non-distinctive, a pronoun, or a widely used abbreviation and the Panel agrees with the Complainant that they do not prevent a finding that the disputed domain name is confusingly similar to the Complainant’s CVS trade mark. As a result the Complaint succeeds under this element of the Policy. B. Rights or Legitimate Interests The Complainant has submitted that it has never assigned, granted, licensed, sold, transferred or in any way authorised the Respondent to register or use its CVS mark in any manner. It has also said that to the best of its knowledge 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. In addition, the Complainant has submitted that the disputed domain name is not being used for bona fide purposes in relation to its own goods and services but is rather being used to resolve to a website that features pay-per click parking links most likely for the Respondent’s own commercial benefit. The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has failed to rebut this case and for this reason and also for those outlined under Part C below the Panel finds that the Complaint also succeeds under this element of the Policy. C. Registered and Used in Bad Faith The disputed domain name was registered many years after the Complainant’s trademark registration. The Panel notes that the Complainant’s CVS trademark has previously been found by a panel to be well known (see CVS Pharmacy, Inc. v. Registration Private, Domains By Proxy, LLC / CVS Health,WIPO Case No. D2015-1876. This Panel finds that the CVS mark is at the least well reputed considering that it is protected by hundreds of trademark registrations in at least 27 countries or jurisdictions worldwide and that the Complainant’s business is very large having had net revenues of USD 256.8 billion in 2018. In these circumstances the Panel finds it more likely than not that the Respondent was well aware of the Complainant’s mark when it registered the disputed domain name. The disputed domain name resolves to a parking page that features pay-per-click links. Even though it does not appear that the links are directed at the CVS mark or competitor brands, it appears to be use of the disputed domain name containing the well reputed CVS mark to redirect traffic to a monetized parking page. In effect, the Respondent is trading off the goodwill attaching to the Complainant’s well reputed and distinctive mark without any legitimate reason. This conduct amounts to using the disputed domain name to intentionally attract Internet users to the Respondent’s website for the purposes of commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website. Under paragraph 4(b)(iv) of the Policy this amounts to evidence of registration and use of the disputed domain name in bad faith. The website at the disputed domain name also features a notice that the disputed domain name is for sale. Past panels have found that offering a domain name for sale generally to the public without a satisfactory reason as to why the disputed domain name incorporates a trademark is being offered for sale is evidence of bad faith even where the circumstances do not fall squarely within paragraph 4(b)(i) of the Policy. (See for example Sanofi v. Mi Zhang/ li qianfang,WIPO Case No. D2013-0682). In all the circumstances, the Panel finds that the disputed domain name has both been registered and used in bad faith and the Complaint also succeeds under this element 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 Alistair Payne
Sole Panelist
Date: July 23, 2020
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