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 albertsons pharmacy, India. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2021. On March 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 20, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 March 25, 2021. In accordance with the Rules, paragraph 5, the due date for the Response was April 14, 2021. The Respondent did not submit a formal response and, on April 15, 2021, the Center notified the parties that it was proceeding to Panel Appointment. The Center appointed Antony Gold as the sole panelist in this matter on April 23, 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 CVS Pharmacy, Inc. is the principal operating company of CVS Health Corporation, a publicly traded corporation on the New York Stock Exchange, and holds its trade marks and other intellectual property. As CVS Health Corporation and CVS Pharmacy, Inc. are part of the same corporate group, these two entities collectively are referred to below as “the Complainant”. The Complainant is a leading health innovation company in the United States with approximately 300,000 staff working at more than 9,900 retail locations and approximately 1,100 walk-in medical clinics. Its annual revenue in 2020 was USD 268.7 billion. The Complainant trades as CVS, CVS HEALTH and CVS PHARMACY and it has registered a large number of trade marks, in the United States and elsewhere, to protect these trading styles. These include: - United States service mark, registration number 919941, for CVS, registered on September 7,1971, in class 35; In addition, the Complainant has registered and uses the domain names The disputed domain name was registered on February 17, 2021. It resolves to a website branded as “CVS Health Pharmacy” (also presented as “CVSHealthPharmacy”), which offers for sale a range of prescription-only drugs. 5. Parties’ Contentions A. Complainant The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights. In this respect, it relies on its trade marks for CVS, CVS HEALTH and CVS PHARMACY, (collectively referred to below as “the CVS Trade Marks”), details of exemplar registrations for each of these marks having been provided above. The generic Top Level Domain (“gTLD”) “.org” is a standard registration requirement and is disregarded for the purpose of applying the test for confusing similarity. The disputed domain name contains the Complainant’s CVS Trade Marks in their entirety and is therefore confusingly similar to them. Moreover, the overall impression created by the disputed domain name is that it is connected with the trade marks of the Complainant; see, for example, L’OREAL v. Lewis Cheng,WIPO Case No. D2008-0437. The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the CVS Trade Marks. The Respondent is not commonly known by the disputed domain name and has never acquired any trade mark or service mark rights in it. By using the disputed domain name in connection with a website that purports to offer for sale prescription drugs in competition with the Complainant, the Respondent is not making a bona fide offering of goods or services under the Policy; see The John Hopkins Health System Corporation, The John Hopkins University v. Domain Administrator,WIPO Case No. D2008-1958. Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The CVS Trade Marks are famous and widely known and it is impossible that the Respondent was unaware of them when it registered the disputed domain name. Because the disputed domain name will be perceived as obviously connected with the Complainant, the Respondent’s actions suggest opportunistic bad faith in violation of the Policy. The Complainant cannot conceive of any use of the disputed domain name that would not interfere with the Complainant’s long-established trade mark rights. In addition, by using the disputed domain name in connection with a website that purports to sell prescription drugs, the same services for which the Complainant uses the CVS Trade Marks, the Respondent is clearly creating a likelihood of confusion with them, comprising bad faith use pursuant to paragraph 4(b)(iv) of the Policy. Furthermore, the Respondent’s name is listed in the WhoIs record as “albertsons pharmacy” and the Respondent has evidently provided false contact information to disguise its true identity, given that its website does not identify itself as “albertsons pharmacy”. In addition, the Respondent’s name corresponds to the name of a well-known legitimate pharmacy operating online, this being Albertson’s Pharmacy. However, the Respondent’s address in the WhoIs record is listed as being in India, whereas the genuine Albertson’s Pharmacy has its headquarters in Boise, Idaho. The provision of false contact details to hide a registrant’s true identity provides an additional indicator of bad faith registration. B. Respondent The Respondent did not serve a formal response to the Complainant’s contentions. However, on April 14, 2020, the Center received an email from one of the contact email addresses shown by the Respondent on its website in the following terms; “I don’t know why the Dispute comes across to me. Does it matter if any publicly available domains are banned to use? Or you guys have that type of domain name issue then please purchase all the domains with a similar name. Sorry, this is not the way of dispute. I got it publically. Even though I didn’t use domain name to make a profit. I didn’t even think of it. If you guys have a problem then please contact the vendor who is selling the domain publically that not my issue and I think there is no dispute with me”. 6. Discussion and Findings Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint: (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 has been registered and is being used in bad faith. A. Identical or Confusingly Similar The information provided by the Complainant in relation to its trade mark registrations for the CVS Trade Marks, including the marks in respect of which full details are provided above, establish its rights in these trade marks. For the purpose of determining whether the disputed domain name is identical or confusingly similar to the Complainant’s mark, the gTLD “.org” is disregarded as this is a technical requirement of registration. The disputed domain name includes all the individual components of the Complainant’s CVS Trade Marks, that is the words “CVS”, “HEALTH” and “PHARMACY” in their entirety and therefore comprises a composite of all three of the Complainant’s CVS Trade Marks. As explained at section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. The Complainant’s CVS, CVS HEALTH and CVS PHARMACY trade and service marks are clearly recognizable within the disputed domain name. The Panel therefore finds that the disputed domain name is confusingly similar to trade and service marks in which the Complainant has rights. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or legitimate interests in a domain name. These are, summarised briefly: (i) if the respondent has been using the domain name in connection with a bona fide offering of goods and services; (ii) if the respondent has been commonly known by the domain name; or (iii) if the respondent has been making a legitimate noncommercial or fair use of the domain name. The use of the disputed domain name and a trading style which comprises a composite of the Complainant’s CVS Trade Marks in order to sell products which compete with those of the Complainant does not comprise a bona fide offering of goods and services, even if those products are genuine, because the Respondent is misappropriating the Complainant’s repute in its marks in order to encourage Internet users to visit its website. Irrespective of whether or not the Complainant itself operates a website selling prescription only drugs to members of the public, Internet users visiting the Respondent’s website will associate the name “CVS Pharmacy Health” with the Complainant and are likely to assume that its website is operated by, or with the approval of, the Complainant. The Respondent is clearly seeking to profit from such an association and, in all the circumstances, the Respondent’s website cannot be considered to comprise a bona fide offering of goods and services; see, by way of example, Labrador II, Inc. v. Viva La Pets Inc.,WIPO Case No. D2016-0010. See also section 2.13.1 of the 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”. The second circumstance can be dealt with briefly; there is no evidence that the Respondent has been commonly known by the disputed domain name. The third circumstance is also inapplicable; the Respondent’s website is commercial in character and the composition of the disputed domain name is such that it carries a high risk of implied affiliation with the Complainant, which prevents its use from being considered fair. It is difficult to discern precisely what points are sought to be made in the email response sent from, or on behalf of, the Respondent to the Center, dated April 14, 2021, other than the assertion that the disputed domain name was acquired by the Respondent without an intent to profit from it. This is incorrect; not only is the Respondent’s website clearly intended to be profit-making, but the Respondent is intentionally using the association that Internet users are likely to make between the disputed domain name and the Complainant in order to attract prospective customers to its website. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith As at the time of registration of the disputed domain name in February 2021, the Complainant’s CVC Trade Marks were well-established and well-known. Given that the disputed domain name is confusingly similar to those marks and that it resolved, very shortly after registration, to a website which sold goods competing with those of the Complainant, it is clear that the Respondent was aware of the Complainant and its CVS Trade Marks as at the date of registration of the disputed domain name and registered it in order to take unfair advantage of those. Moreover, the registration by a respondent of a domain name that is identical or confusingly similar to a well-known trade mark will often raise a presumption of a bad faith registration; see, by way of example; Walgreen Co. v. Muhammad Azeem / Wang Zheng, Nicenic International Group Co., Limited,WIPO Case No. D2016-1607. Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out in paragraph 4(b)(iv) of the Policy are if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. The use to which the Respondent has put the disputed domain name falls precisely within these circumstances in that it points to a website which misleading suggests to Internet users that it has some form of connection with the Complainant and offers products for sale which are also supplied by the Complainant to its customers. The belief of Internet users that the Respondent’s website is operated by, or on behalf of, the Complainant will be reinforced because of the confusing similarity between the disputed domain name and the Complainant’s CVS Trade Marks. Furthermore, notwithstanding the contents of the email sent by or on behalf of the Respondent to the Center on April 14, 2021, there is no conceivable good faith use which the Respondent could make of the disputed domain name. These factors collectively point to bad faith registration and use of the disputed domain name; see, in broadly similar circumstances, the decision of the panel in Swarovski Aktiengesellschaft v. WhoisGuard Protected / Peter D. Person,WIPO Case No. D2014-1447. Finally, as the Complainant has asserted, the provision of false contact information by the Respondent is an additional indicator of bad faith. The Panel accordingly finds that the disputed domain name was registered and is being used 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, Antony Gold
- United States service mark, registration number 5055141, for CVS HEALTH, registered on October 4, 2016, in classes 35, 36 and 44;
- United States trade mark, registration number 4673785, for CVS PHARMACY, registered on January 20, 2015, in multiple classes.
Sole Panelist
Date: May 5, 2021
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