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 Privacydotlink Customer 2418653, Cayman Islands, United Kingdom / Zhenhua Bin, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2020. On August 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 24, 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 September 4, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Respondent sent an informal email communication prior to the commencement of the proceeding on September 6, 2020, stating: “I can sell the domain to you for $500, which is already lower than my cost price. The reason I did this is to make this dispute easy to resolve.” The Complainant filed an amendment to the Complaint on September 7, 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 September 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2020. The Respondent did not submit a formal response. Accordingly, the Center informed the Parties on October 15, 2020 that it would proceed to appoint a panel. The Center appointed Benjamin Fontaine as the sole panelist in this matter on October 21, 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 company CVS Pharmacy, Inc., which is the principal operating company of CVS Health Corporation, a corporation with annual revenue in 2019 of USD 256.8 billion. The Complaint indicates that the Complainant is “the premier 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, […] serving 4.5 million customers daily.” For the purpose of the Complaint, the Complainant relies on, among other, the following trademark registrations (Annexes 9 and 10): - United States trade mark registration No. 919,941 CVS registered on September 7, 1971; The disputed domain name was registered by the Respondent on September 3, 2014, through a privacy shield service. In the course of this proceeding, an individual was disclosed by the Registrar as the registrant of the disputed domain name. Prior to the filing of the Complaint, the disputed domain name resolved to a parked page where visitors were informed of alleged security threats on their computers. 5. Parties’ Contentions A. Complainant The Complainant develops a full set of arguments supported by numerous case law and references to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). These arguments can be summarized as follows: First, the Complainant claims that the disputed domain name is confusingly similar to its CVS trademark as it contains it in its entirety. To support its argumentation, the Complainant relies on section 1.7 of WIPO Overview 3.0: stating that “in cases where a domain name incorporates the entirety of a trademark […] the domain name will normally be considered confusingly similar to that mark”. The Complainant further claims that the disputed domain name contains the CVS HEALTH trademark in its entirety, absent only a space (which is an invalid character in a domain name) and deletion of the letter “l”, creating an obvious typographical variation of the CVS HEALTH trademark. To support its arguments, the Complainant relies on section 1.9 of WIPO Overview 3.0: “[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.” Second, the Complainant claims, on the one hand, that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the CVS trademark or the CVS HEALTH trademark in any manner. On the other hand, it is pointed out that the Respondent uses the disputed domain name in connection with a website that falsely informs visitors on security threats on their computers, relying on section 2.13 of WIPO Overview 3.0: “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.” Third, on the fact that the disputed domain name was registered and used in bad faith, the Complainant argues that “the fact that domain name 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”. (WIPO Overview 3.0, section 3.1.4). On this point, it is further invoked that the Respondent could not ignore the reputation of the Complainant’s trademarks, first because of its commercial success and then because the trademark has been used for more than 50 years. The Complainant further claims that the disputed domain name contains an obvious typographical variation of the CVS HEALTH trademark, which constitutes bad faith (WIPO Overview 3.0, section 3.1.1). Finally, the Complainant underlines that the disputed domain name is actually held by an individual who has been involved in numerous cases of cybersquatting and as such was subject of at least nine prior UDRP proceedings. B. Respondent The Respondent did not reply to the Complainant’s contentions. In his sole communication, the Respondent only proposed to sell the disputed domain name for USD 500. 6. Discussion and Findings Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings: (i) the disputed domain name is identical or confusingly similar to a trade mark 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 Complainant, under the first requirement of paragraph 4(a) of the Policy, needs to establish that the disputed domain name is confusingly similar to a trademark or a service mark in which it has rights. The Complainant owns several trademark rights, both over the signs CVS and CVS HEALTH. As regards the trademark CVS, the Panel finds that it is confusingly similar to the disputed domain name, as the trademark is entirely included in the disputed domain name. The addition of the element “heath”, that the Internet users may perceive as a typo of the word “health”, does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0. As regards the trademarks CVS HEALTH, the Panel notes that CVS HEALTH is also confusingly similar to the disputed domain name, as it only differs because of the omission of letter “l”. The Panel does not ignore that the disputed domain name was registered before the claims of first use of the trademark CVS HEALTH by the Complainant (by a margin of a few days, in September 2014). However, the fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element (see section 1.1.3 of the WIPO Overview 3.0). Therefore, the Panel finds that the first element of the Policy is satisfied. B. Rights or Legitimate Interests Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. In this case, the Complainant has sufficiently argued that the Respondent is not commonly known by the disputed domain name, and has not been authorized by the Complainant to register and use the disputed domain name. Further, as correctly pointed out by the Complainant, section 2.13 of WIPO Overview 3.0 states that “use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”. In the present case, the disputed domain name redirected to a page where pop-up windows pretended to be related to a computer anti-virus. Accordingly and absent specific allegations of the Respondent, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith In order to prevail under the third element of paragraph 4(a) of the Policy, the Complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists a number of circumstances, which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are: (i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or (ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or (iii) [the respondent has] registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location. Regarding, first, the registration of the disputed domain name in bad faith, the Panel notes that the Respondent has registered the disputed domain name with an obvious typographical variation of the Complainant’s trademarks which is considered as a bad faith behavior according to section 3.1.1 of WIPO Overview 3.0. Moreover, the fact that the Respondent is involved and has lost at least nine UDRP proceedings is hardly a coincidence and raises the preliminary assumption that the disputed domain name has been registered with harmful intent. This presumption has not been rebutted by the Respondent. Furthermore, the evidence shows that the Respondent is using the disputed domain name to falsely inform visitors of security flaws. The Panel agrees with the Complainant that by using the disputed domain name as described, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website and other online locations, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location, which is a circumstance of registration and use in bad faith pursuant to Policy paragraph 4(b)(iv). Accordingly, the Panel finds that the third criteria element set out in paragraph 4(a) of the Policy is also satisfied. 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 Benjamin Fontaine
- United States trade mark registration No. 1 698,636 CVS registered on July 7, 1992;
- United States trade mark registration No. 1 904,058 CVS registered in July 11, 1995;
- United States trade mark registration No. 5 055,141 CVS HEALTH, first used on September 6, 2014 and registered on October 4, 2016;
- United States trade mark registration No. 5 402 010 CVS HEALTH, registered on February 13, 2018;
- United States trade mark registration No. 5 402 188 CVS HEALTH, registered on February 13, 2018.
Sole Panelist
Date: November 4, 2020
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