Express Scripts, Inc. v. Tulip Company / Tulip Trading Company
Claim Number: FA1609001692735
Complainant is Express Scripts, Inc. (“Complainant”), represented by Arkadia Olson of HUSCH BLACKWELL LLP, Missouri, USA. Respondent is Tulip Company / Tulip Trading Company (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <expressscriptspatientscript.com>, registered with Key-Systems GmbH.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 7, 2016; the Forum received payment on September 7, 2016.
On September 8, 2016, Key-Systems GmbH confirmed by e-mail to the Forum that the <expressscriptspatientscript.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 September 13, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 3, 2016 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, administrative, and billing contacts, and to postmaster@expressscriptspatientscript.com. Also on September 13, 2016, 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 October 10, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has rights in the EXPRESS SCRIPTS mark based on its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,809,555, registered Dec. 7, 1993). Respondent’s domain name <expressscriptspatientscript.com> is confusingly similar to Complainant’s mark, because the terms “patient” and “script” are descriptive of Complainant’s service to provide prescriptions to medical patients. The domain name is confusingly similar because descriptive terms do not differentiate the domain name from Complainant’s mark, and the omission of spaces and a “.com” generic top-level domain (“gTLD”) are irrelevant for Policy ¶ 4(a)(i) analysis.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise granted any permission to Respondent to use its EXPRESS SCRIPTS mark, and Respondent is not commonly known by <expressscriptspatientscript.com> domain name. Respondent is using the domain to offer competing hyperlinks for click-through revenue. This is not a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent has registered and is using the disputed domain name in bad faith. Respondent had actual notice of Complainant’s rights in the EXPRESS SCRIPTS mark when it registered the <expressscriptspatientscript.com> domain name. This is evidenced by the offering of competing hyperlinks in the same field as Complainant. The hyperlinks are also an attempt to commercially gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s domain name. Respondent’s primary purpose when registering this domain name was to disrupt the business of Complainant in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <expressscriptspatientscript.com> domain name.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant asserts it has rights in the EXPRESS SCRIPTS mark based on its registration with the USPTO (Reg. No. 1,809,555, registered Dec. 7, 1993). Panels have found that a USPTO registration confers rights in the mark, even when a respondent is operating in a country outside the United States. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man). Thus, the Panel may decide that Complainant has rights in the EXPRESS SCRIPTS mark under Policy ¶ 4(a)(i).
Complainant further asserts that Respondent’s <expressscriptspatientscript.com> domain name is confusingly similar to its EXPRESS SCRIPTS mark. Complainant argues that the terms “patient” and “script” are descriptive of clients who receive its pharmaceutical services business. Panels have held that the addition of descriptive terms does not differentiate a domain name from a respondent’s mark, and that the omission of spaces and addition of a gTLD may be ignored for confusingly similar analysis under Policy ¶ 4(a)(i) analysis. See Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a)(i).”); see also Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”). Therefore, the Panel finds <expressscriptspatientscript.com> is confusingly similar to Complainant’s EXPRESS SCRIPTS mark.
Complainant has proved this element.
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent has no rights or legitimate interests in the <expressscriptspatientscript.com> domain name. Complainant asserts that it has not licensed or otherwise authorized Respondent to use its EXPRESS SCRIPTS mark in any fashion, and that Respondent is not commonly known by the disputed domain name. The WHOIS information for the domain name in question lists “Tulip Company” as the registrant, and “Tulip Trading Company” as the organization. Previous panels have found that a respondent is not commonly known by a domain name from the WHOIS information and lack of contradicting evidence in the record. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). The Panel finds that Respondent is not commonly known by <expressscriptspatientscript.com>.
Complainant further asserts that Respondent is not using the disputed domain name to make a bona fide offering of goods and services under Policy ¶ 4(c)(i), or using it to make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant argues that Respondent’s website at the disputed domain name resolves to pay-per-click hyperlinks that feature Complainant’s mark and unrelated services. Panels have found that offering such links does not confer rights or legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Accordingly, the Panel holds that Respondent is not using <expressscriptspatientscript.com> to make a bona fide offering of goods and services or a legitimate noncommercial or fair use.
Complainant has proved this element.
Complainant argues that Respondent registered and is using the <expressscriptspatientscript.com> domain name in bad faith. First, Complainant argues that Respondent registered the domain name primarily for the purpose of disrupting Complainant’s business. Complainant argues that the links on Respondent’s website offer competing services, and that Internet users looking for Complainant will be diverted by Respondent’s hyperlinks. Panels have found that offering competing hyperlinks can show bad faith under Policy ¶ 4(b)(iii). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”). Thus, the Panel finds Respondent in violation of Policy ¶ 4(b)(iii).
Complainant additionally argues that Respondent is commercially gaining from a likelihood of confusion intentionally created between its domain name and a source, sponsorship, affiliation, or endorsement with Complainant’s EXPRESS SCRIPTS mark. Complainant contends that Respondent receives revenue from the “Sponsored Listings” on its website, and every time an Internet user mistakenly clicks one of the pay-per-click hyperlinks. Panels have found offering competing links to be a bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Clark Equipment Company v. Namase Patel / Mumbai Domains, FA1406001566288 (Forum July 30, 2014) (“The Panel observes that the Respondent’s disputed domain name leads to a website that features links to products that directly compete with Complainant’s products. The Panel determines that Respondent is attempting to mislead consumers as to Complainant’s affiliation with the disputed domain name, and Respondent likely profits from the resulting confusion. Therefore, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”). As such, the Panel holds Respondent’s conduct to be in violation of Policy ¶ 4(b)(iv).
Lastly, Complainant argues that Respondent had actual notice of Complainant’s rights in the EXPRESS SCRIPTS mark when it registered the <expressscriptspatientscript.com> domain name. Complainant argues that its EXPRESS SCRIPTS mark has achieved such world-wide fame that Respondent should be presumed to have had actual notice of the mark. While Complainant has not presented any evidence of this fame other than self-serving allegations, the Panel may infer a Respondent had actual notice of Complainant’s mark based on the hyperlinks that were related to Complainant’s business. See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Therefore, while the UDRP does not recognized constructive notice as sufficient to constitute bad faith, the Panel finds Respondent had actual notice of Complainant’s rights in the EXPRESS SCRIPTS mark when it registered the disputed domain name, and that such conduct is in violation of Policy ¶ 4(a)(iii).
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <expressscriptspatientscript.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: October 12, 2016
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