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 / Dolamani Bag, Webservices, India.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 2021, the Registrar transmitted by email to the Center its verification response:
(a) confirming it is the Registrar for the disputed domain name;
(b) disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint;
(c) the Respondent registered the disputed domain name on October 7, 2021; and
(d) English is the language of the registration agreement.
The Center sent an email communication to the Complainant on October 26, 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 amended Complaint on October 27, 2021.
The Center verified that the Complaint together with the amended 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 October 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2021.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on November 29, 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 BackgroundThe Complainant is a wholly-owned subsidiary and the principal operating company of CVS Health Corporation. It provides pharmacy and “health innovation” services. The Complainant employs some 300,000 workers in 9,900 retail outlets and 1,100 “walk-in” medical clinics in the United States and Puerto Rico. According to the Complaint, it serves 4.5 million customers daily under or by reference to the trademark CVS and the CVS PHARMACY logo.
In 2020 alone, the group’s annual revenue exceeded USD 268 billion.
The Complainant ranks number five on the Fortune 500 list of America’s largest corporations.
The Complainant has registered and been using the domain name
According to the Complaint, the Complainant has registered 520 trademarks in 27 countries for or containing CVS. These include:
(a) United States Registered Trademark No. 919,941, CVS, which has been registered since September 7, 1971 in respect of retail services in International Class 35 in connection with drugs, beauty and sundry goods. This trademark claims first use in commerce in the United States in 1964; and
(b) United States Registered Trademark No. 1,698,636, CVS, which has been registered since July 7, 1992 in respect of a wide range of goods in International Classes 1, 3, 5, 8, 9, 10, 16, 21 and 25; and
One example of the registration of the CVS PHARMACY logo above is United States Registered Trademark No. 5,031,926 which has been registered since August 30, 2016 in respect of retail store and drug store services in International Class 35.
The Respondent became the registrant of the disputed domain name on October 7, 2021.
Shortly before the Complaint was filed it resolved to a website which included a heading “CVS Products Review” in white lettering against a red background.
This headings was immediately followed by the CVS PHARMACY trademark and the Complainant’s stylized heart logo in bright red. This CVS PHARMACY logo was in much larger type that the “CVS Products Review” heading. Along side the CVS PHARMACY logo was a green link titled “Claim CVS Health Facility Now”.
Immediately under the CVS PHARMACY logo was another red band with white lettering “Best Offer For Regular Customer!!” Then, underneath that in by far the largest type the statement “We provide Total Health Care Solution” alongside an image of a woman wearing a white medical coat with a stethoscope around her neck.
Then followed another red band “CVS Services” and what appeared to be links to a range of different services under headings such as “Pharmacy services”, “Health & wellness services”, “Health plans” and the like.
5. Discussion and FindingsNo response has been filed. The Complaint and Written Notice have been sent, however, to the Respondent at the electronic and physical coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 SimilarThe first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of numerous registered trademarks for CVS including the two specifically referenced in section 4 above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.7.
In undertaking that comparison, it is permissible in the present circumstances to disregard the generic
Top-Level Domain (gTLD) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.
Disregarding the “.shop” gTLD, the disputed domain name consists of the Complainant’s registered trademark and the term “reviews”. As this requirement under the Policy is essentially a standing requirement, the addition of such a term does not preclude a finding of confusing similarity. See e.g. WIPO Overview 3.0, section 1.8. Apart from anything else, the Complainant’s trademark remains visually and aurally recognisable within the disputed domain name.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate InterestsThe second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it.
The disputed domain name is not derived from the Respondent’s name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
Although the disputed domain name includes the word “review”, the website to which the disputed domain name resolves is not a criticism or review site. Rather, it appears to be offering for sale commercial services and goods by reference to the Complainant’s trademark. Moreover, it falsely presents itself to the world as if it were the Complainant’s own website. As the Complainant points out, the use of a confusingly similar domain name in connection with the apparent offer of goods and services in competition with the Complainant’s own services does not qualify as a good faith offering under the Policy.
These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The basis on which the Respondent has adopted the disputed domain name, therefore, calls for explanation or justification. The Respondent, however, has not sought to rebut that prima facie case or advance any claimed entitlement. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad FaithUnder the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
In this connection, it can be recalled that the disputed domain name resolved shortly after the Respondent registered it to a website which falsely passed itself off as if it were the Complainant’s website, purporting to offer goods and services by reference to the Complainant’s logo and the Complainant’s registered trademark for that logo proclaiming “Best Offer For Regular Customer” and “We provide Total health Care Solution”. Accordingly, the Panel readily infers knowledge of the Complainant’s trademark on the part of the Respondent and, in addition, that the Respondent registered the disputed domain name to take advantage of its close resemblance to the Complainant’s trademarks.
Having regard to those inferences and the manner of the Respondent’s use, therefore, the Panel finds that the Respondent has both registered and used it in bad faith.
Accordingly, the Complainant has established all three requirements under the Policy.
6. DecisionFor 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,
Warwick A. Rothnie
Sole Panelist
Date: December 13, 2021