Express Scripts, Inc. v. Domain Hostmaster, Customer ID : 37451937415113 / Whois Privacy Services Pty Ltd
Claim Number: FA1607001682578
Complainant is Express Scripts, Inc. (“Complainant”), represented by Arkadia Olson of HUSCH BLACKWELL LLP, Missouri, United States. Respondent is Domain Hostmaster, Customer ID : 37451937415113 / Whois Privacy Services Pty Ltd (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <expresscritps.com>, registered with Fabulous.com Pty Ltd.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 6, 2016; the Forum received payment on July 6, 2016.
On July 6, 2016, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <expresscritps.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 July 11, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 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, and billing contacts, and to postmaster@expresscritps.com. Also on July 11, 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 August 8, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant offers a broad range of services for patients, physicians, health plan sponsors, and pharmaceutical manufacturers. Complainant has registered the EXPRESS SCRIPTS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,809,555, registered Dec. 7, 1993), which demonstrates Complainant’s rights in its mark. The <expresscritps.com> domain is confusingly similar to Complainant’s mark as it contains lettering that is confusingly similar to the mark, and it includes the generic top-level domain (“gTLD”) “.com.”
ii) Respondent has no rights or legitimate interests in the domain. Respondent is not commonly known by the terms of the domain, and Respondent is not licensed, permitted, or authorized to use the EXPRESS SCRIPTS mark. Further, Respondent is not using the domain in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, Respondent’s domain either relates to malware or resolves to a website that contains links to pharmacy services that compete with Complainant’s business.
iii) Respondent registered and is using the domain in bad faith. First, Respondent is using the domain to redirect Internet users seeking Complainant’s services to a website distributing malware, or a commercial web directory featuring links to Complainant’s competitors. Second, Respondent has engaged in the tactic of typosquatting. Third, Respondent has failed to respond to Complainant’s cease and desist letter, and to Complainant’s reminder letter. Finally, because of the fame of Complainant’s mark, it is clear that Respondent registered the domain with at least constructive knowledge of Complainant’s mark and its rights therein.
B. Respondent
Respondent did not submit a response in this proceeding. The Panel notes that the disputed domain name was registered on February 19, 2005.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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 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 offers a broad range of services for patients, physicians, health plan sponsors, and pharmaceutical manufacturers. Complainant has registered the EXPRESS SCRIPTS mark with the USPTO (Reg. No. 1,809,555, registered Dec. 7, 1993), which Complainant argues demonstrates its rights in the mark. The Panel finds that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i), with respect to the geographic disparity of the parties. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). Thus, the Panel finds that Complainant has demonstrated its rights in its mark per Policy ¶ 4(a)(i).
Complainant argues that the <expresscritps.com> domain is confusingly similar to Complainant’s mark as it contains lettering that is confusingly similar to the mark, and it includes the gTLD “.com.” The Panel notes that Respondent’s domain removes the letter “s” from the word “scripts,” transposes the letters “p” and “t” of the word “scripts,” and eliminates the spacing between the words of Complainant’s mark. Panels have held that these changes do not serve to adequately distinguish a respondent’s domain from a complainant’s mark under Policy ¶ 4(a)(i). See Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004) (finding that the <utahwedding.com> domain name was confusingly similar to the complainant’s UTAHWEDDINGS.COM mark because the domain name simply lacked the letter “s”); see also Google Inc. v. Jon G., FA 106084 (Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). As such, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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 asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent is not commonly known by the terms of the domain, and that Respondent is not licensed, permitted, or authorized to use the EXPRESS SCRIPTS mark. The Panel notes that the WHOIS information merely lists “Domain Hostmaster, Customer ID : 37451937415113 / Whois Privacy Services Pty Ltd” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. Therefore, the Panel finds no basis in the available record to find Respondent is commonly known by the domain pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant argues that Respondent is not using the disputed domain in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, Complainant claims that Respondent’s domain either relates to malware or resolves to a website that contains links to pharmacy services that compete with Complainant’s business. Panels have concluded that a respondent lacks rights and legitimate interests where it uses a domain to either distribute malware or host competing hyperlinks. See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”); see also Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). For these reasons, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant contends that Respondent is using the domain to redirect Internet users seeking Complainant’s services to a website distributing malware, or a commercial web directory featuring links to Complainant’s competitors. Panels have determined that a respondent’s use of a domain to either distribute malware or host competing hyperlinks constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Google, Inc. v. Petrovich, FA 1339345 (Forum Sept. 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). As such, the Panel finds that Respondent registered and is using the domain in bad faith under Policy ¶ 4(b)(iv).
Complainant asserts that Respondent has engaged in the tactic of typosquatting. Panels have held that typosquatting is evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). As the Panel agrees with Complainant that Respondent’s domain is a typosquatted version of the EXPRESS SCRIPTS mark, it finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant claims that because of the fame of Complainant’s mark, it is clear that Respondent registered the disputed domain name with at least constructive knowledge of Complainant’s mark and its rights therein. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant’s mark and the manner of use of the disputed domain name by the Respondent, Respondent had actual knowledge of the mark and Complainant’s rights. Thus, the Panel holds that Respondent registered the domain in bad faith under Policy ¶ 4(a)(iii). See Meredith Corp. v. CityHome, Inc., D2000-0223 (WIPO May 18, 2000) (finding that the respondent’s constructive notice of the complainant’s registered mark was insufficient to support a finding of bad faith registration); 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <expresscritps.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 15, 2016
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