The Complainant is CVS Pharmacy, Inc., United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Paul Archie, 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 April 7, 2021. On April 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 7, 2021, the Registrar transmitted by email to the Center its verification response, which disclosed registrant and contact information for the Domain Name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 8, 2021, 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 April 8, 2021. The Center verified that the Complaint together with the amendment to the Complaint (collectively, 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 April 12, 2021. In accordance with the Rules, paragraph 5, the due date for the Response was May 2, 2021. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on May 4, 2021. The Center appointed D. Brian King as the sole panelist in this matter on May 12, 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 A. The Parties The Complainant is CVS Pharmacy, Inc. (“CVS” or the “Complainant”), the principal operating subsidiary of the CVS Health Corporation. CVS is incorporated in Rhode Island, United States. According to the Complainant, CVS employs approximately 300,000 people and has nearly 10,000 retail locations across the United States. The Complainant’s brand is well-known, ranking fifth on the “Fortune 500” list of the biggest companies in the United States (Annex 6 to the Complaint). In 2020, the Complainant earned annual revenue of USD 268.7 billion (Annex 4 to the Complaint). The Respondent has not provided the Panel with any information. B. The Mark The Complainant first used the CVS mark in 1963. Since that time, the Complainant has registered approximately 520 trademarks for CVS, CVS HEALTH or related marks in at least 27 countries (Annex 14 to the Complaint). These registrations include the following: Trademark Jurisdiction Registration Number Registration Date CVS United States 0919941 September 07, 1971 CVS China 8120303 March 21, 2011 CVS HEALTH Mexico 1575576 September 28, 2015 CVS HEALTH India 3119222 December 08, 2015 CVS India 3325496 August 02, 2016 CVS HEALTH China 18386145 December 28, 2016 CVS Brazil 840417357 January 23, 2018 CVS Canada TMA992222 March 12, 2018 CVS HEALTH United States 5464981 May 08, 2018 CVS HEALTH Brazil 910871680 June 19, 2018 CVS HEALTH European Union 015309222 March 07, 2019 The Complainant uses several websites that incorporate the CVS marks in connection with its business, including The Domain Name was registered on February 15, 2021. The Domain Name does not currently resolve to an active website, although it is configured to send emails. 5. Parties’ Contentions A. Complainant The Complainant begins by submitting that the Domain Name is confusingly similar to its registered CVS and CVS HEALTH trademarks (the “CVS Marks”). The Complainant notes that the Domain Name entirely incorporates these marks. The “.com” generic Top-Level Domain (“gTLD”) is a domain name registration requirement, and, according to the Complainant, should be disregarded for purposes of the confusing similarity test. The Complainant further asserts that the addition of the word “mail” does not diminish the confusing similarity of the Domain Name to its marks. Moreover, the Complainant argues that the overall impression of the Domain Name suggests a connection to the Complainant’s business. According to the Complainant, the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant represents that it has not authorized the Respondent to use the CVS Marks in any way, nor is the Respondent commonly known by a name corresponding to the Domain Name. The Complaint further alleges that the Respondent has used the Domain Name in connection with a scam operation – specifically, to impersonate the Complainant’s Chief Customer Officer and send fraudulent communications to customers. The Complainant submits that such activity cannot constitute a bona fide offering of goods and services capable of conferring rights or legitimate interests. Finally, the Complainant submits that the Domain Name was registered and is being used in bad faith. The Complainant argues that the mere registration of a Domain Name that is confusingly similar to well-known marks constitutes bad faith registration. Furthermore, according to the Complainant, it is implausible that the Respondent registered the Domain Name without knowledge of the Complainant’s rights in the CVS Marks, which the Complainant has used in connection with its leading retail pharmacy business for over half a century. The Complainant adds that the fact that the Domain Name does not currently resolve to an active website does not prevent a finding of bad faith registration and use. While the Respondent may not be making use of the Domain Name at present, it has previously used the Domain Name to attempt to perpetrate fraud – a per se illegitimate activity that constitutes bad faith use. In any event, according to the Complainant, a finding of bad faith is justified under the “passive holding” doctrine on the facts here. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Paragraph 4(c) of the Policy sets out illustrative circumstances that could demonstrate a respondent’s rights or legitimate interests in a domain name for purposes of paragraph 4(a)(ii) above. Paragraph 4(b) of the Policy sets out illustrative circumstances that may demonstrate registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) above. A. Identical or Confusingly Similar The Domain Name wholly incorporates the Complainant’s CVS and CVS HEALTH trademarks, appending the dictionary term “mail” and the gTLD “.com”. The addition of the gTLD does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.8 and 1.11. The Panel finds that the addition of the word “mail” likewise does not prevent a finding that the Domain Name is confusingly similar to the Complainant’s CVS Marks. Accordingly, the Panel has no difficulty in concluding that the Complainant succeeds on the first element of the test under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Many prior UDRP panels have found that a complainant only needs to establish a prima facie case in relation to the second element of the test under paragraph 4(a)(ii) of the Policy (see, e.g., Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; MatchNet plc. v. MAC Trading,WIPO Case No. D2000-0205). Once a prima facie showing is made, the burden of production shifts to the respondent to demonstrate that it possesses rights or legitimate interests in respect of the disputed domain name. The present Panel agrees that the Complainant need only make out a prima facie case and finds that it has met that standard here. In the absence of any contrary evidence, the Panel accepts the Complainant’s representation that the Respondent has no connection to the Complainant and has not received permission to use the Complainant’s CVS Marks. The Panel also finds no indication that the Respondent is commonly known by a name corresponding to the Domain Name. In these circumstances, the Complainant has made out a prima facie case that the Respondent lacks any rights or legitimate interests in the Domain Name. The Respondent has failed to provide any contrary evidence, despite having had the opportunity to do so. The Panel accordingly finds that the Complainant succeeds as to the second element of the paragraph 4(a) test. C. Registered and Used in Bad Faith The third element of the test under paragraph 4(a) requires proof that the Domain Name has been registered and is being used in bad faith. The Panel finds that to be sufficiently established here. The Panel has already found above that the Domain Name is confusingly similar to the Complainant’s CVS Marks. On the evidence of record, the Panel finds that this confusingly similar Domain Name has been used by the Respondent in furtherance of a fraudulent scheme (see in particular Annex 10 to the Complaint). The Panel agrees with the Complainant that per se illegitimate uses such as this establish bad faith registration and use for purposes of paragraph 4(a) of the Policy (WIPO Overview 3.0, section 3.1.4) While the website to which the Domain Name resolves may be inactive at present, the Complainant has further established to the Panel’s satisfaction that the fact that there are not any active websites does not prevent a finding of bad faith. It follows that on either or both grounds, the Complainant has established that the Respondent has registered and is using the 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 Domain Name, D. Brian King
Sole Panelist
Date: May 26, 2021
Full & Egal Universal Law Academy