The Complainant is CVS Pharmacy, Inc. (“CVS”), United States of America (“United States”), represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States / Haluk Mercan, Turkey. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2020. On July 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 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 July 28, 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 July 28, 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 August 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2020. The Center appointed Gareth Dickson as the sole panelist in this matter on September 23, 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 operates in the field of healthcare in the United States. It is one of the largest corporations in the United States and is the registrant of the domain names The Complainant is the owner of over 500 trade mark registrations around the world for marks that consist of or contain “CVS” (the “CVS Mark”), including the following United States trade mark registrations: - Reg. No. 919,941 for CVS (first used May 9, 1963; registered September 7, 1971); The Complainant also operates a website at “https://cvshealth.com/covid-19/return-ready/workplaces”. That website makes, with reference to a return to work during the COVID-19 pandemic, prominent use of the phrase “Return Ready, by CVS Health” (the “Return Ready Mark”). The Complainant is using the Return Ready Mark in commerce and has applied to protect it as a trade mark in the United States, although as at the date of the Complaint such protection had not been granted. The disputed domain name was registered on July 4, 2020. It does not provide access to a functioning website, beyond it being offered for sale for the sum of USD 988. 5. Parties’ Contentions A. Complainant The Complainant argues that it has rights in the CVS Mark and the Return Ready Mark by virtue of its ownership of various trade mark registrations for the CVS Mark around the world and its use of the Return Ready Mark in commerce in the United States, for which it has applied for trade mark protection. The Complainant contends that the disputed domain name is confusingly similar to these marks since it incorporates them in their entirety, and they are recognisable within the disputed domain name, under the generic Top-Level Domain (“gTLD”) “.com”. The Complainant confirms that the disputed domain name was registered by the Respondent without its permission and that the Respondent is not a licensee of the Complainant. It alleges that by using the disputed domain name only in connection with a website offering to sell it for USD 988, a sum far in excess of its out-of-pocket costs directly related to the disputed domain name, the Respondent has failed to create a bona fide offering of goods or services under the Policy. Furthermore, the Complainant submits that there is no evidence to suggest that the Respondent: has been commonly known by the disputed domain name; is making, or intends to make, a legitimate noncommercial or fair use of it; or has ever used or demonstrated preparations to use it in connection with a bona fide offering of goods or services. The Complainant submits that the Respondent must have known of the Complainant and the CVS Mark and the Return Ready Mark when it registered the disputed domain name. The CVS Mark, according to the Complainant, is well known around the world, as demonstrated in previous UDRP decisions. A trade mark application had been filed for the Return Ready Mark only three days before the disputed domain name was registered, and after the Complainant had begun using that mark in commerce online. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that: a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and c) the disputed domain name has been registered and is being used in bad faith. These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied. A. Identical or Confusingly Similar The Panel accepts that the Complainant is the owner of, and therefore has rights in, the CVS Mark. Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. The Panel therefore finds that the disputed domain name is confusingly similar to the CVS Mark, since that mark is recognisable within the disputed domain name. The disputed domain name also incorporates in its entirety the Return Ready Mark (minus the comma), but in light of the finding in relation to the CVS Mark it is not necessary for the Panel to make a finding on the scope of the Complainant’s rights in that mark. The disputed domain name is clearly intended to appear, and is, confusingly similar to the CVS Mark. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not alter this conclusion. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. In the current proceeding, the Complainant has established its prima facie case. The evidence before the Panel is that the CVS Mark has been recognised by previous UDRP panels as distinctive of the Complainant, making coincidental adoption by the Respondent highly unlikely, particularly in light of the incorporation of the Return Ready Mark in addition to the well known CVS Mark. The Complainant states that it has not given the Respondent permission to use its marks, in a domain name or otherwise, and submits that the Respondent has not been commonly known by the disputed domain name. There is no evidence that the Respondent has acquired any common law rights to use the CVS Mark, is commonly known by that mark or has chosen to use the CVS Mark in the disputed domain name in any descriptive manner or is making any use of the disputed domain name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it. By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element. As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The Panel notes that the Mark has already been found by previous UDRP panels to be well known and distinctive of the Complainant. The Panel also notes that the disputed domain name was registered many years after the CVS Mark was registered and accepts that the disputed domain name was chosen by reference to the CVS Mark. As a result, and in the absence of evidence from the Respondent that the similarity of the disputed domain name to the CVS Mark is coincidental or permitted, the Panel must conclude that the Respondent knew of the Complainant’s rights in the CVS Mark when it registered the disputed domain name. The Panel therefore finds that the Respondent’s registration of the disputed domain name was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant, rights in the Complainant’s CVS Mark. The disputed domain name is also being used in bad faith. It is being used for a commercial purpose that involves offering the disputed domain name for sale for a sum far in excess of the Respondent’s out-of-pocket costs. The value of the disputed domain name is found solely in its incorporation of the CVS Mark and also the Return Ready Mark. The Respondent has not sought to explain its registration and use of the disputed domain name, has attempted to conceal its identity, and has not participated in these proceedings. There is also no conceivable use of the disputed domain name by the Respondent that would not be illegitimate and therefore there is no basis for the Panel to conclude that the Respondent’s use of the disputed domain name is justified. Therefore, and on the basis of the information available to it, the Panel must, and does, find that the Respondent’s use of the disputed domain name is without justification and is inconsistent with the Complainant’s exclusive rights in the CVS Mark. Consideration of these and other factors militates in favour of a finding of bad faith. The Panel finds that the Respondent has registered and is using the disputed domain name 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 Gareth Dickson
- Reg. No. 1,698,636 for CVS (first used 1974; registered July 7, 1992); and
- Reg. No. 1,904,058 for CVS (first used April 28, 1992; registered July 11, 1995).
Sole Panelist
Date: October 8, 2020
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