Express Scripts, Inc. v. John
Claim Number: FA1607001682585
Complainant is Express Scripts, Inc. (“Complainant”), represented by Arkadia Olson of HUSCH BLACKWELL LLP, Missouri, United States. Respondent is John (“Respondent”), Nevada, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <express-scrlpts.com>, registered with NetEarth One Inc. d/b/a NetEarth.
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 8, 2016, NetEarth One Inc. d/b/a NetEarth confirmed by e-mail to the Forum that the <express-scrlpts.com> domain name is registered with NetEarth One Inc. d/b/a NetEarth and that Respondent is the current registrant of the name. NetEarth One Inc. d/b/a NetEarth has verified that Respondent is bound by the NetEarth One Inc. d/b/a NetEarth 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@express-scrlpts.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 <express-scrlpts.com> domain is confusingly similar to Complainant’s mark as it contains lettering that is confusingly similar to the mark, and merely replaces the letter “i” from the mark with the letter “l” and adds 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 authorized by Complainant 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 uses the domain to phish for Internet users’ personal and financial information; Respondent also uses the domain to send e-mails claiming to come from Complainant, and requesting a wire transfer in the amount of $60,370.00 for “capital expenditure.”
iii) Respondent registered and is using the domain in bad faith. First, Respondent uses the disputed domain to operate a phishing scheme. Second, Respondent provided incomplete and/or inaccurate information in the WHOIS directory when it registered the domain. Third, Respondent has failed to respond to Complainant’s cease and desist letter. Fourth, Respondent has engaged in the tactic of typosquatting. 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 Respondent registered the domain on October 14, 2015.
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). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Accordingly, the Panel finds that Complainant has demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <express-scrlpts.com> domain is confusingly similar to Complainant’s mark as it contains lettering that is confusingly similar to the mark, and merely replaces the letter “i” from the mark with the letter “l” and adds the gTLD “.com.” The Panel notes that the domain also includes a hyphen. Panels have held that neither the replacement of one letter with another, nor the addition of a hyphen, serves to adequately distinguish a respondent’s domain from a complainant’s mark under Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"). Panels have also held that the affixation of the “.com” gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See 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). Thus, the Panel finds that Respondent’s domain is confusingly similar to Complainant’s mark.
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 argues that Respondent has no rights or legitimate interests in the domain. Complainant contends that Respondent is not commonly known by the terms of the domain, and that Respondent is not authorized by Complainant to use the EXPRESS SCRIPTS mark. The Panel notes that the WHOIS information merely lists “John” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name 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 asserts 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. Rather, Complainant argues that Respondent uses the domain to phish for Internet users’ personal and financial information; Complainant further argues that Respondent uses the domain to send e-mails claiming to come from Complainant, and requesting a wire transfer in the amount of $60,370.00 for “capital expenditure.” With regard to Complainant’s phishing allegation, Complainant claims that Respondent’s domain resolves to a webpage displaying links named “investment.zip,” “investment,” “shared-wealthmanagement-pdfd(1).zip,” and “shared-wealthmanagement-pdfd/.,” and that when Internet users click on these links, they are directed to two Google drive login pages that redirect them to non-existent files when data is entered. Panels have held that a respondent lacks rights and legitimate interests where it either uses a domain to operate a phishing scheme, or to impersonate a complainant. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Church Mutual Insurance Company v. Paul Looney, FA 1668317 (Forum May 17, 2016) (finding that the respondent lacked rights and legitimate interests in the disputed domain name because “Respondent registered and uses the disputed domain name and an associated email account to impersonate Complainant and acquire personal or financial information from Complainant or Complainant’s customers.”). 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).
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Complainant alleges that Respondent uses the domain to operate a phishing scheme. Panels have decided that a respondent’s use of a domain to phish for Internet users’ personal and/or financial information is evidence of bad faith registration and use. See Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). Accordingly, the Panel finds that Respondent registered and is using the domain in bad faith.
Complainant argues that Respondent provided incomplete and/or inaccurate information in the WHOIS directory when it registered the domain. Panels have held that a respondent’s providing false or misleading information in connection with the registration of a domain name constitutes bad faith. See Home Dir., Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith). As the Panel agrees with Complainant’s argument here, it finds that Respondent engaged in bad faith registration and use.
Complainant asserts that Respondent has engaged in the tactic of typosquatting by replacing the letter “i” from Complainant’s mark with the letter “l.” Panels have held that a respondent demonstrates bad faith under Policy ¶ 4(a)(iii) where its domain is merely a typosquatted version of a complainant’s mark. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark). As the Panel agrees with Complainant, it finds that Respondent has engaged in typosquatting, thereby violating Policy ¶ 4(a)(iii).
Respondent claims that 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. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel infers 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 finds that Respondent registered the domain in bad faith per 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 <express-scrlpts.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 15, 2016
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