Complainants are CVS Pharmacy, Inc. and MinuteClinic, L.L.C., United States of America (“United States” or “US”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
Respondent is Samuel White, “cvs-minuteclinic”, United States. 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 29, 2021. On March 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 29, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainants on March 30, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amendment to the Complaint on March 30, 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 April 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 22, 2021. The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on April 28, 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 Complainants are CVS Pharmacy, Inc. (“CVS”) and its subsidiary MinuteClinic LLC (“MinuteClinic”). Complainant CVS is the principal operating company of CVS Health Corporation, a publicly traded corporation (NYSE: CVS) with an annual revenue of USD 268.7 billion in 2020. Co-complainant MinuteClinic is a subsidiary of CVS Pharmacy, Inc., and is the owner of the MINUTECLINIC trademarks. Complainants have approximately 300,000 workers in more than 9,900 retail locations and approximately 1,100 walk-in medical clinics (named the “MinuteClinic”) in 49 states in the United States, the District of Columbia in the United States and in Puerto Rico, serving 4.5 million customers daily. Complainant CVS is the owner of approximately 586 trademark registrations in at least 38 countries or jurisdictions worldwide for marks that consist of or contain “CVS”. Complainant’s registrations for the CVS trademarks include the following in the United States: - Reg. No. 919,941 for CVS (first used May 9, 1963; registered September 7, 1971) Co-Complainant MinuteClinic is the owner of at least 19 trademark registrations in at least six countries or jurisdictions worldwide for marks that consist of or contain “MINUTECLINIC” or “MINUTE CLINIC”. Complainant’s registrations for the MINUTECLINIC trademarks include the following in the United States: - US trademark registration no. 2,966,381 for MINUTECLINIC (first used November 10, 2003; registered July 12, 2005); and Complainant CVS also operates and is the registrant of the domain name Respondent registered the Domain Name on March 8, 2021. At the time of the filing of the Complaint, the Domain Name resolved to a website that prominently stated “Welcome to CVS-Minuteclinic-Covid-19” in all capital letters and featured photographs of pharmaceutical products with links which encouraged users to contact and subscribe to third party medical professional services. The Domain Name has since been locked by the Registrar and at the time of the Decision, the Domain Name resolves to an error page. 5. Parties’ Contentions A. Complainant Complainants contend that (i) the Domain Name is identical and confusingly similar to Complainants’ trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith. In particular, Complainants contend that they have trademark registrations for the CVS and MINUTECLINIC marks and own domain names incorporating the CVS and MINUTECLINIC marks. Complainants contend Respondent registered and is using the Domain Name, to confuse Internet users looking for bona fide and well-known CVS and MINUTECLINIC products and services. Complainants note that they have no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainants’ marks, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainants contend that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainants’ rights. B. Respondent Respondent did not reply to Complainants’ contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed a complainant must satisfy the Panel that: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which a complainant has rights; and Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainants to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainants provided evidence of their rights in the CVS and MINUTECLINIC marks, which have been registered since at least as early as 1971 (in the case of CVS) and 2005 (in the case of MINUTECLINIC),. Complainants have also submitted evidence, which supports that CVS and MINUTECLINIC are each widely known trademarks and a distinctive identifier of Complainants’ products and services. Complainants have therefore proven that they have the requisite rights in the CVS and MINUTECLINIC marks. With Complainants’ rights in the CVS and MINUTECLINIC marks established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain (“TLD”) in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. Here, the Domain Name is confusingly similar to Complainants’ CVS and MINUTECLINIC marks. These marks, which are fanciful and inherently distinctive, are recognizable in the Domain Name. The complete incorporation of the CVS and MINUTECLINIC mark and the voluntary addition of a hyphen, “-” between “cvs” and “minuteclinic”, in the Domain Name does not prevent a finding of confusing similarity between Complainants’ trademarks and the Domain Name registered by Respondent. Indeed, the presence or absence of “punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity.” Six Continents Hotels, Inc. v. Helen Siew,WIPO Case No. D2004-0656. See also, e.g., Western Union Holdings, Inc. v. Anna Valdieri,WIPO Case No. D2006-0884 (“the insertion of a hyphen… [is] not [a] relevantly distinguishing feature[]”); Di El Industrie-Electronic GmbH and TR Electronic v. E-Orderdesk,WIPO Case No. D2007-0961 (“the use or absence of punctuation marks such as hyphens does not alter the fact that the domain name at issue is identical or confusingly similar to the trademark at issue”). Thus, the Panel finds that Complainants have satisfied the first element of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. From the record in this case, it is evident that Respondent was, and is, aware of Complainants and the CVS and MINUTECLINIC marks, and does not have any rights or legitimate interests in the Domain Name. Complainants have confirmed that Respondent is not affiliated with Complainants, or otherwise authorized or licensed to use the CVS and/or MINUTECLINIC trademarks or to seek registration of any domain name incorporating the trademarks. Respondent is also not known to be associated with or commonly known by the CVS and/or MINUTECLINIC marks. In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that at the time of the filing of the Complaint, the Domain Name resolved to a website that prominently stated “Welcome to CVS-Minuteclinic-Covid-19” in all capital letters and featured photographs of pharmaceutical products with links which encouraged users to contact and subscribe to third party medical professional services. The Domain Name has since been locked by the Registrar and at the time of the Decision, the Domain Name resolves to an error page. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration,WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name. Further, the nature of the Domain Name carries a risk of implied affiliation with Complainant (see WIPO Overview 3.0, section 2.5.1). Accordingly, Complainants have provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainants have met their burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.” The Panel finds that Complainants provided ample evidence to show that registration and use of the CVS and MINUTECLINIC marks long predate the registration of the Domain Name by Respondent. Complainants are also well established and known. Indeed, the record shows that Complainants’ CVS and MINUTECLINIC marks and related services are widely known and recognized. Therefore, and also noting the composition of the Domain Name itself, Respondent was aware of the CVS and MINUTECLINIC marks when it registered the Domain Name, or knew or should have known that the Domain Name was identical or confusingly similar to Complainant’s marks. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Under the circumstances, Respondent’s registration of the Domain Name incorporating Complainants’ widely-known CVS and MINUTECLINIC trademarks in their entirety, clearly suggests that Respondent registered the Domain Name with actual knowledge of Complainants’ rights in the CVS and MINUTECLINIC marks, in an effort to opportunistically capitalize on the registration and use of the Domain Name. The Panel therefore finds that Respondent’s awareness of Complainants’ trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007). As discussed above, at the time of the filing of the Complaint, the Domain Name resolved to a website that prominently stated “Welcome to CVS-Minuteclinic-Covid-19” in all capital letters and featured photographs of pharmaceutical products with links, which encouraged users to contact and subscribe to third party medical professional services. In particular, the record shows that Respondent’s website encouraged users to “SUBSCRIBE… Sign up to hear from us about specials, sales, and events”, “CONTACT US… Better yet, see us in person! … We love our customers, so feel free to visit during normal business hours”, “DROP US A LINE!” etc. Coupled together with the nature of the Domain Name, the content at the website to which the Domain Name resolves is clear evidence of bad faith, especially when considering the Complainants’ services in relation to the ongoing Covid-19 pandemic and the Domain Name’s reference thereto. See WIPO Overview 3.0, Section 3.2.1. In creating the impression that Respondent’s website is one that is affiliated with Complainant, Respondent attempted to deceive unsuspecting Internet users in an attempt to opportunistically capitalize on the goodwill and reputation associated with the Complainants’ marks. Therefore, the Panel finds that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainants’ marks as to the source, sponsorship, affiliation, or endorsement of his website. Such actions would not only be deceitful to unsuspecting Internet users, result in potential interception and improper use of the end user’s personal information, but would interfere with and potentially compromise Complainant’s business. It can also result in tarnishing Complainant’s goodwill and reputation. Accordingly, the Panel finds that Respondent has registered and is using the Domain Name in bad faith and Complainant succeeds under the third element of paragraph 4(a) 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 Domain Name Kimberley Chen Nobles
- Reg. No. 1,698,636 for CVS (first used February 18, 1974; registered July 7, 1992)
- Reg. No. 1,904,058 for CVS (first used April 28, 1992; registered July 11, 1995)
- US trademark registration no. 3,695,950 for MINUTE CLINIC (first used June 30, 2006; registered October 13, 2009.
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used in bad faith.
Sole Panelist
Date: May 6, 2021
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