CVS Pharmacy, Inc. and MinuteClinic, L.L.C v. Pham Dinh Nhut
Claim Number: FA1703001723633
Complainant is CVS Pharmacy, Inc. and MinuteClinic, L.L.C (“Complainant”), represented by Sarah J Schneider of Sheridan Ross P.C., Colorado, USA. Respondent is Pham Dinh Nhut (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <minuteclinics.com>, registered with April Sea Information Technology Company Limited.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 24, 2017; the Forum received payment on March 24, 2017.
On March 30, 2017, April Sea Information Technology Company Limited confirmed by e-mail to the Forum that the <minuteclinics.com> domain name is/are registered with April Sea Information Technology Company Limited and that Respondent is the current registrant of the name. April Sea Information Technology Company Limited has verified that Respondent is bound by the April Sea Information Technology Company Limited 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 April 4, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 2017 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@minuteclinics.com. Also on April 4, 2017, 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 April 28, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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, CVS Pharmacy, Inc. and MinuteClinic, L.L.C., is a large scale pharmacy healthcare provider based in Woonsocket, Rhode Island, USA. In connection with this business, Complainant uses the MINUTECLINIC mark. Complainant has rights in the MINUTECLINIC mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,966,381, registered Jul. 12, 2005). See Compl., at Attached Ex. A. Complainant also has common law rights in the MINUTECLINIC mark per its long, continuous use of, and secondary meaning given to, the mark. Respondent’s domain name, <minuteclinics.com>, is confusingly similar to Complainant’s MINUTECLINIC mark as it contains the mark in its entirety and adds a single letter “s” and the generic top level domain (“gTLD”) “.com.”
Respondent lacks rights and legitimate interests in <minuteclinics.com>. Respondent has not been commonly known by the domain name, nor has Complainant authorized Respondent to register a domain name containing its MINUTECLINIC mark. Respondent utilized a domain name privacy service to conceal its identity. Further, Respondent has failed to use the domain name in connection with a bona fide offering of goods and services, or for a legitimate noncommercial or fair use. Instead, <minuteclinics.com> resolves to a page directing Internet users to competing websites and competing drop-in clinics. See Compl., at Attached Ex. G (resolving webpage featuring related and unrelated hyperlinks regarding drop-in medical and pharmacological services).
Respondent registered and used <minuteclinics.com> in bad faith. Respondent utilizes the domain name to attract Internet users by creating a likelihood of confusion with Complainant’s MINUTECLINIC mark for Respondent’s commercial gain. Further, Respondent had actual knowledge of Complainant’s mark at the time of registration—evidence further supporting a finding of bad faith registration and use per Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name, <minuteclinics.com>, was registered September 7, 2004.
The Panel finds that the disputed domain name, <minuteclinics.com>, is confusingly similar to Complainant’s common law trademark, MINUTE CLINIC; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
The Panel further finds that it is appropriate to proceed in the English language even though Respondent signed an agreement in Vietnamese. Complainant has elicited sufficient arguments to support such a finding. Complainant contends Respondent is conversant in English based upon the fact that the WHOIS information, Respondent’s email address, and all of the content on the resolving website is in English. See Compl., at Attached Exs. 1, G. Additionally, Respondent has been named respondent in numerous UDRP proceedings and has been found suitably familiar with the English language for such proceeding to be conducted in English. See, e.g., Geisinger Clinic v. Pham Dinh Nhut, FA 1704942 (Forum Jan. 10, 2017); Kimmel Center, Inc. f/k/a Regional Performing Arts Center, Inc. v. Vietnam Domain Privacy Services / Pham Dinh Nhut D2015-1361 (WIPO Nov. 11, 2016). Further, Complainant contends that requiring it to translate the Complaint into Vietnamese would be prejudicial to Complainant in light of Respondent’s history of serial cybersquatting and demonstrated mastery of the English language. As such, the Panel elects to proceed in the English language.
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.”).
The Panel finds that the disputed domain name, <minuteclinics.com> is confusingly similar to the valid and subsisting trademark, MINUTE CLINIC, of Complainant. Complainant has adequately plead and demonstrated its common law rights in and to this trademark. Respondent arrives at the disputed domain name by merely adding an “s” to Complainant’s precise trademark, deleting a space, and adding the g TLD “.com.” This is insufficient to distinguish the disputed domain name from the legitimate trademark of Complainant.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent apparently has no rights, license or permission to register the disputed domain name. Respondent is not commonly known by the disputed domain name. The WHOIS information of record identifies the registrant as “Vietnam Domain Privacy Services,” the shield was removed at the commencement of this proceeding to reveal the registrant as “Pham Dinh Nhut.” Use of a WHOIS privacy service can further support a finding a respondent has not been commonly known by a domain name. As such, the Panel finds that Respondent is not commonly known by the disputed domain name.
Furthermore, Respondent has failed to utilize the disputed domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, <minuteclinics.com> resolves to a page directing Internet users to related and unrelated hyperlinks to third parties, some of which compete with Complainant’s business. See Compl., at Attached Ex. G (resolving to related and unrelated hyperlinks regarding drop-in medical and pharmacological services). Use of a disputed domain name to host both competing and unrelated hyperlinks to goods and services in competition with a complainant is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii).
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name.
The Panel also finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Complainant contends that Respondent’s bad faith registration and use of <minuteclinics.com> is part of a pattern of bad faith registration and use aimed to prevent Complainant from reflecting its mark in a domain name. Evidence of a pattern of bad faith registration as described in Policy ¶ 4(b)(ii) can be determined from prior adverse UDRP findings. See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Complainant points to multiple UDRP proceedings in which Respondent was ordered to transfer subject domain names. See Compl., at Attached Ex. 2 (a list of 30 different adverse UDRP findings against Respondent). As such, the Panel finds Respondent to evince a pattern of bad faith registration and use per Policy ¶ 4(b)(ii).
Complainant also argues Respondent registered and used <minuteclinics.com> in bad faith as Respondent utilized the domain to attract Internet users by creating a likelihood of confusion with Complainant’s MINUTECLINIC mark for Respondent’s commercial gain. See Compl., at Attached Ex. G (Resolving to a page containing links for services that are in the same healthcare or related healthcare field as Complainant). Use of a disputed domain name to disrupt a complainant’s business by hosting pay-per-click hyperlinks to competitors of a complainant for a respondent’s commercial gain can evidence a finding of bad faith registration and use per Policy ¶¶ 4(b)(iii) & (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum Jul. 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).”); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum Jun. 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). The Panel, therefore, finds that Respondent registered and used <minuteclinics.com> in bad faith pursuant to Policy ¶¶ 4(b)(iii) & (iv).
Next, Complainant contends Respondent had actual knowledge of Complainant’s MINUTECLINIC mark at the time it registered and subsequently used the <minuteclinics.com> domain name. Complainant argues that Respondent’s hyperlinks to competitors of Complainant at the resolving website and use of the MINUTECLINIC mark in the domain name indicates that Respondent had actual knowledge of Complainant’s mark and rights. Given the totality of the circumstances, the Panel finds that Respondent had actual knowledge of Complainant’s mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant fails to explain why it waited some 13 years to bring this complaint; however, as this Panel lacks equitable powers and Complainant has otherwise established all three elements under the policy, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <minuteclinics.com> domain name transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: April 30, 2017
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