CVS Pharmacy, Inc. v. WhoisGuard, Inc. / Name Redacted
Claim Number: FA2010001917322
Complainant is CVS Pharmacy, Inc. (“Complainant”), represented by Sarah J Schneider of Sheridan Ross P.C., Colorado. Respondent is WhoisGuard, Inc. / Name Redacted[i] (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cvshealthusa.com> (the “disputed domain name”), registered with NameCheap, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 16, 2020; the Forum received payment on October 16, 2020.
On October 19, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <cvshealthusa.com> disputed domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 26, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 16, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@cvshealthusa.com. Also on October 26, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 23, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant operates a chain of pharmacy stores across the United States. Complainant has rights in the CVS and CVS HEALTH marks through its numerous registrations with the United States Patent and Trademark Office (“USPTO”). (e.g., CVS, United States Reg. No. 919,941, registered Sept. 7, 1971; CVS HEALTH, United States Reg. No. 5,055,141, registered Sept. 2, 2014) (hereinafter collectively the “CVS Mark”).
Complainant
contends that Respondent’s disputed
domain name is confusingly similar to the CVS Mark, that Respondent lacks
rights and legitimate interests in the disputed domain name, and that
Respondent registered and is using the disputed domain name in bad faith.
Complainant also contends that the name of Respondent is that of an employee of
Complainant whose identity was stolen by the registrant of the disputed domain
name to register the <cvshealthusa.com> disputed domain name. As a result, Complainant
requests, in accordance with Forum
Supplemental Rule 15(b), that the Respondent’s name in the instant case be
stricken from the resulting published decision to prevent further negative
impact related to the theft of her identity. In, the Panel redacted the
respondents’ personal information from the decision “to prevent further
victimization of the Respondent.” the Panel will redact Respondent’s personal information from this
decision to prevent the further victimization of Respondent
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant has rights in the CVS Mark as described above. The Panel also finds that the disputed domain name is confusingly similar to the Complainant’s CVS Mark, Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Preliminary Issue
Complainant has indicated in its Complaint that Respondent, as named in the WhoIs results, is an employee of Complainant and a victim of identity theft and that the actual identity of Respondent is unknown. Complainant requests that any references to Respondent be omitted from all publicly available material in an effort to protect the victim from further injury as a result of the fraud. The Panel has agreed to do so.
The Panel concludes that Complainant has rights in the CVS Mark through its numerous registrations with the USPTO. (e.g., CVS, United States Reg. No. 919,941, registered Sept. 7, 1971; CVS HEALTH, United States Reg. No. 5,055,141, registered Sept. 2, 2014). Registration with the USPTO is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
The Panel also concludes that the disputed domain name is confusingly similar to Complainant’s CVS Mark, as the disputed domain name incorporates the mark in its entirety, adds the dictionary term “health” and the geographic term “usa”, followed by the “.com” gTLD. Under Policy ¶ 4(a)(i), adding a dictionary term, and a geographic term along with the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Cargill, Incorporated v. Sales Office / Cargill Brasil, FA 1737212 (Forum July 21, 2017) (finding the addition of the geographic term “Brasil” does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).); see also Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii); then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). Here, the Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name as Respondent has not provided evidence nor proven that it is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the CVS Mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. Further, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to impersonate Complainant in a fraudulent phishing scheme aimed at defrauding Complainant and its suppliers. Respondent uses the disputed domain name to send and receive fraudulent emails, which use is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel concludes that Respondent registered and is using the <cvshealthusa.com> disputed domain name in bad faith.
First, Respondent attracts users for commercial gain through a fraudulent email phishing scheme. Use of a disputed domain name to capitalize on a complainant’s reputation for commercial gain is evidence of bad faith under Policy ¶ 4(b)(iv). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). Here, Respondent masquerades as Complainant to fraudulently solicit price quotes and offers from commercial vendors orders and then attempts to purchase products from the unsuspecting vendor, requesting that the vendor pay shipping costs to a fake third party. Complainant provides copies of Respondent’s emails as an example of Respondent’s bad faith activity. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Moreover, Respondent’s name is that of an employee of Complainant and the identity of that individual was likely stolen by the registrant of the disputed domain name. Such conduct is emblematic of bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cvshealthusa.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: December 3, 2020
[i] The Respondent appears to have used the name and contact details of a third party who is an employee of the Complainant when registering the disputed domain name. In light of the identity theft, the Panel has redacted the named Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the named Respondent. The Panel has authorized the Forum to transmit Annex 1 to the Registrar as part of the order in this proceeding and has indicated that Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See Halfbrick Studios Pty, LTD. / Kate Hynes v. REDACTED, FA 1592887 (Forum Jan. 7, 2015).
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