The Complainant is Express Scripts, Inc. of Missouri, United States of America represented by Bryan Cave, LLP, United States of America.
The Respondent is TheSonicNet, Crawley of United Kingdom of Great Britain and Northern Ireland, represented by itself. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2010. On August 24, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On August 25, 2010, GoD, Inc. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 31, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 20, 2010. The Response was filed with the Center on September 17, 2010.
On September 24, 2010, the Complainant filed a Reply to Respondent’s Response to Complaint and on October 3, 2010, the Respondent filed a Supplementary Filing to the Response.
The Center appointed Christopher J. Pibus, John Swinson and Dawn Osborne as panelists in this matter on December 15, 2010. The presently appointed Panel finds that it was properly constituted. Each member of 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.
After the Response was submitted and before the present Panel was appointed, the Center proceeded to appoint a panel following which comments were received from the Respondent with respect to the panel appointment process. Comments were consequently sought from the Complainant, in light of which the Center determined that the appropriate course was to re-appoint a new presiding panelist which the Center subsequently did. 4. Factual Background
The Complainant operates a business that provides pharmacy management services to approximately 50 million members through its facilities in the United States and Canada. The Complainant has since 1986, provided those services under the trademark EXPRESS SCRIPTS.
The Complainant owns a trademark registration for the EXPRESS SCRIPTS trademark, namely U.S. Trademark Registration No. 1,809,555. The Complainant also owns other trademarks which include the words EXPRESS SCRIPTS as a first element, namely EXPRESS SCRIPTS CHOICEMATTERS (U.S. Registration No. 3,442,764); and EXPRESS SCRIPTS TREND CENTRAL (U.S. Registration No. 3,048,473).
The Complainant also owns seventeen domain names which include the words EXPRESS SCRIPTS, including: ; ; ; ; ; and .
The Complainant operates a website in association with its various domain names which permits Internet users to order prescription drug products; receive health and drug information; procure and co-ordinate healthcare services; and obtain benefit details and prescription histories.
The Respondent registered the domain name in dispute on July 24, 2010, and on the following day, contacted the Complainant to offer to sell the domain name. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar
The Complainant contends that it owns the trademark EXPRESS SCRIPTS by virtue of its U.S. Trademark registrations, and that the domain name is confusingly similar to its registered trademark. The disputed domain name replicates the Complainant’s trademark in its entirety and the addition of the url designation does not serve to distinguish the trademark from the Complainant’s registered trademark rights. The Complainant relies on several panel decisions that found the Complainant had established rights in the EXPRESS SCRIPTS trademark, including: Express Scripts, Inc. v. Whois Privacy Protection Service, Inc./Domaindeals,WIPO Case No. D2008-1302 and Express Scripts, Inc. v. Windgather Investments Ltd./Mr. Cartwright,WIPO Case No. D2007-0267. Rights or Legitimate Interests
The Complainant submits that the Respondent is not commonly known by the words “Express Scripts”. The Complainant contends that the Respondent is not associated with the Complainant, and has never received authorization or a license to use the Complainant’s EXPRESS SCRIPTS trademark. The Complainant further submits that the Respondent has not and is not making a bona fide use of the disputed domain name, in that the disputed domain name reverts to a webpage that diverts Internet users to unrelated advertisements. Registered and Used in Bad Faith
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith, as the Respondent must have been aware of the Complainant’s registered trademark rights when it registered the disputed domain name. Complainant notes that Respondent contacted Complainant one day after registering the domain name, to offer to sell the domain name. Complainant alleges that Respondent intended to sell the domain name for an amount greater than its out-of-pocket costs of registration, although no specific sales price was designated. The failure to clearly identify its out-of-pocket expenses, when requested to do so, is put forward as evidence of a bad faith intention to obtain a higher amount. Complainant also relies on the fact that Respondent has registered a domain name that purposefully mis-spells the Complainant’s registered trademark, thereby committing the act of typo-squatting. B. Respondent
The Respondent does not deny that the domain name is similar to the Complainant’s trademark, but claims that the Complainant has no reputation in the United Kingdom where Respondent conducts its business. The Respondent contends that it had no knowledge of the Complainant’s trademark rights when it registered the disputed domain name. The Respondent further contends that it did not register the disputed domain name for the purpose of monetary gain by re-selling the domain name for a higher amount than its out-of-pocket expenses. The Respondent submits that it purchased the disputed domain name to provide services to the general public as a non-commercial enhancement to his main business, providing computer scripts to the public. The Respondent denies that it registered the disputed domain name to divert Internet users away from the Complainant’s website and thereby interfere with the Complainant’s business. The Respondent notes that it never claimed to be associated with the Complainant and does not attempt or intend to tarnish the Complainant’s business. The Respondent contends it never did request more than its out-of-pocket expenses to transfer the disputed domain name. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
As a preliminary matter, the Panel must decide whether to accept the Reply to the Respondent’s Response (filed by the Complainant) and/or the Supplementary Respondent’s Response. As the Policy does not provide for the filing of any such additional materials, and in the absence of any extraordinary circumstances, the Panel has concluded that there is no reason to accept or consider these supplementary submissions. A. Identical or Confusingly Similar
It is clear that Complainant owns registered trademark rights in EXPRESS SCRIPTS, sufficient to support its claims. Respondent actually admits that the disputed domain name is similar to the Complainant’s trademarks. The Panel finds that the domain name is confusingly similar to a trademark in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Based on the evidence as filed, it is clear that the Respondent is not commonly identified by the words EXPRESS SCRIPTS, nor has it been authorized or licensed to use the trademark. The Panel is not persuaded that any bona fide use of the domain name has occurred, in that the Respondent’s activity has essentially been limited to its attempts to sell the domain name, and its operation of a skeletal website, that diverts users to unrelated advertisements. There is no evidence of bona fide preparations undertaken by Respondent in connection with the operation of a business under the domain name, prior to Respondent’s offer to sell the domain name. The Panel’s findings with respect to the intentions of the Respondent in adopting and using the domain name, are set out below under the Bad Faith heading. Those findings are entirely consistent with an absence of rights or legitimate interests on the part of the Respondent.
The Complainant has therefore satisfied the requirements under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
In this proceeding, the analysis of bad faith depends on an evaluation of the Respondent’s arguments that it was unaware of the Complainant’s rights in the EXPRESS SCRIPTS trademarks, related domain names and websites. The Respondent’s evidence, such as it is, consists entirely of statements that are made in the course of its formal response. No sworn declaration or affidavit was provided by any representative of the Respondent, and no supporting documents were filed on the key issue of prior knowledge of the Complainant’s rights. The Respondent has chosen simply to deny that it was aware of the EXPRESS SCRIPTS trademarks. In the circumstances of this case, a bare denial is not persuasive.
Complainant’s evidence, on the other hand, provides convincing proof that the EXPRESS SCRIPTS trademark and business are very well-known. This is a well-established business, with a significant Internet presence in North America and internationally. The words EXPRESS SCRIPTS, although they are common terms in the English language, form a unique combination. We see no evidence that “express scripts” is a commonly used phrase with other applications; it appears to be a good example of a trademark which has acquired significant distinctiveness through extensive use over a lengthy period of time.
Respondent claims that it chose the words because they are descriptive of computer scripts. The Panel finds this evidence to be singularly unconvincing, in the absence of corroborative documents. Further, the Panel is not prepared to accept Respondent’s denial that it was unaware of the EXPRESS SCRIPTS trademark. The fact that the Respondent contacted the Complainant the very next day after having registered the domain name in question is simply not consistent with a party who was unaware of the EXPRESS SCRIPTS trademarks. Respondent’s pattern of conduct suggests that it was fully aware of the trademark rights in question, and that it intended to take advantage of Complainant by attempting to sell the domain name back to its rightful owner at the earliest possible moment. This was calculated opportunism, not an attempt to “rectify” the situation, as the Respondent claims.
Respondent spends a significant amount of effort attempting to refute the contention that it was offering to sell the domain name to Complainant at a price in excess of its acquisition costs. Once again, Respondent’s evidence on this point is not persuasive. At best, it can be said that Respondent attempted to dance around the issue, by denying that it ever asked for any amount beyond the costs of registration. The correspondence shows that Complainant clearly asked Respondent on a number of occasions if it was willing to sell the domain name for its out-of-pocket costs. Faced with those clear questions, Respondent ought to have indicated one way or the other whether it was willing to do so. The failure to address the question squarely and candidly does not assist the Respondent on this issue.
On the balance of probabilities, the Panel is prepared to find that the Respondent registered the domain name with the intention of selling to the trademark owner at a price in excess of its out-of-pocket costs.
Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(iii) under the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
Christopher J. Pibus
Presiding Panelist
John Swinson
Panelist
Dawn Osborne
Panelist
Dated: December 27, 2010
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