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 WhoisGuard Protected, WhoisGuard, Inc., Panama / Name Redacted. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2021. On February 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 12, 2021, 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 February 15, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on February 15, 2021. 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 Respondent of the Complaint, and the proceedings commenced on February 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 8, 2021. On February 24, 2021, the Center received a communication from the person named as Respondent. The Center further noted Complainant’s claims that the registration of the disputed domain name has been made using the name of a former officer of Complainant, without their knowledge or authorization. For this reason, that name has been redacted from this decision, and is included in Annex 1 to the Registrar. Respondent did not submit any response. The Center notified the Commencement of Panel Appointment Process on March 9, 2021. The Center appointed Lorelei Ritchie as the sole panelist in this matter on March 15, 2021. 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 is a wholly-owned subsidiary of CVS Health (collectively, “Complainant”). Complainant is a publicly-traded company which, together with its predecessors and affiliates, has offered retail drug and other services under the CVS mark for over forty years, and under the CVS HEALTH mark since at least 2016. Complainant owns numerous registrations for its marks. These include, among others, United States Trademark Registration Nos. 0919941 (registered September 7, 1971) and 1698636 (registered July 7, 1992) for CVS; and United States Trademark Registration Nos. 5055141 (registered October 4, 2016) and 5402010 (February 13, 2018) for CVS HEALTH. Complainant owns the registrations for several domain names that incorporate its CVS and CVS HEALTH marks. These include The disputed domain name Complainant contends that (i) the disputed domain name In particular, Complainant contends that it has a well-known mark in the field of retail drug, health care, and other services. Complainant further contends that it has used the CVS mark since at least 1971, and CVS HEALTH since at least 2016, with rights significantly prior to the date that Respondent registered the disputed domain name. In this regard, Complainant contends that it is a publicly-traded company, listed as No. 5 on the United States Fortune 500. Complainant contends that Respondent has incorporated the well-known CVS and CVS HEALTH marks into the disputed domain name, and added the descriptive wording “mail,” with a non-source-identifying hyphen, which would likely be perceived as a location for Complainant’s hundreds of thousands of employees and affiliates to access their company-related mail. Complainant further contends that Respondent lacks rights or legitimate interests in the disputed domain name, and rather has registered and is using it in bad faith, having simply acquired the disputed domain name for Respondent’s own commercial gain, in an attempt to confuse consumers. B. Respondent Respondent did not reply to Complainant’s contentions.2 6. Discussion and Findings A. Identical or Confusingly Similar The Panel must first determine whether the disputed domain name The Panel finds that it is. The disputed domain name incorporates in full Complainant’s CVS and CVS HEALTH marks, with the addition of the descriptive wording “mail,” and a non-source-identifying hyphen. Numerous UDRP panels have agreed that supplementing or modifying a trademark with descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Inter-IKEA v. Polanski,WIPO Case No. D2000-1614 (transferring The Panel therefore finds that Complainant has satisfied the first UDRP element, in showing that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy. B. Rights or Legitimate Interests The Panel next considers whether Complainant has shown that Respondent has no “rights or legitimate interest” as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “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”. No evidence has been presented to the Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name, and Respondent has no license from, or other affiliation with, Complainant. Therefore, the Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy which Respondent has not rebutted. C. Registered and Used in Bad Faith There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “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 the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] website or location”. As noted in Section 4 of this Panel’s decision, Respondent has used the URL associated with the disputed domain name to redirect Internet users to other websites, presumably for Respondent’s own commercial gain. Although at the time of filing the Complaint, the website was redirected to Complainant’s own website, Complainant avers that it has no control over how Respondent uses the disputed domain name or the associated URL. The disputed domain name incorporates Complainant’s well-known CVS and CVS HEALTH marks, and the Panel finds ample evidence that Respondent registered and has used the disputed domain name with knowledge of Complainant’s prior rights in these marks. See, CVS Pharmacy, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Andris Tukiss, WIPO Case No. D2020-1298 (transferring Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith for purposes of paragraph (4)(a)(iii) 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 Lorelei Ritchie 1 Respondent appears to have used the name of a third party (formal officer of Complainant) when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST 12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788. 2 As noted, the person named as Respondent (name redacted) is a former officer of Complainant, and is not involved in this proceeding.
Sole Panelist
Date: March 23, 2021
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