Express Scripts, Inc. v. Bao Renjun
Claim Number: FA1607001684985
Complainant is Express Scripts, Inc. (“Complainant”), represented by Arkadia Olson of HUSCH BLACKWELL LLP, Missouri, USA. Respondent is Bao Renjun (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <expressscriptsholding.com>, registered with HiChina Zhicheng Technology Limited.
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 22, 2016; the Forum received payment on July 22, 2016. The Complaint was submitted in both Chinese and English.
On July 26, 2016, HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <expressscriptsholding.com> domain name is registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the name. HiChina Zhicheng Technology Limited has verified that Respondent is bound by the HiChina Zhicheng Technology 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 July 29, 2016, the Forum served the Complaint and all Annexes in the Chinese language, including a Chinese language Written Notice of the Complaint, setting a deadline of August 18, 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@expressscriptsholding.com. Also on July 29, 2016, the Chinese language 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 29, 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 uses the EXPRESS SCRIPTS mark in connection with its business of providing a broad range of services for patients, physicians, health plan sponsors, and pharmaceutical manufacturers. To protect its trademark rights, 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). Respondent’s <expressscriptsholding.com> domain name is confusingly similar to the EXPRESS SCRIPTS mark as it includes the mark while removing the space between the words of the mark and adding the generic term “holding” and the “.com” generic top level domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in the <expressscriptsholding.com> domain name. Respondent is not commonly known by the disputed domain names, nor has Complainant given Respondent any license, permission, or authorization to use the EXPRESS SCRIPTS mark in any way. Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <expressscriptsholding.com> domain name. Rather, the <expressscriptsholding.com> domain name resolves to an inactive webpage.
iii) Respondent has registered and is using the <expressscriptsholding.com> domain name in bad faith. Respondent is inactively holding the disputed domain name. Respondent had actual knowledge of the EXPRESS SCRIPTS mark and Complainant’s rights therein because of the mark’s fame, notoriety, and trademark registrations.
B. Respondent
Respondent did not submit a response for consideration in this proceeding. The Panel notes the <expressscriptsholding.com> domain name was registered on April 11, 2014.
Complainant established that it had rights in the mark contained in the disputed domain name. The 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.
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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 uses the EXPRESS SCRIPTS mark in connection with its business of providing a broad range of services for patients, physicians, health plan sponsors, and pharmaceutical manufacturers. Complainant has provided evidence that it has registered the EXPRESS SCRIPTS mark with the USPTO (Reg. No. 1,809,555, registered Dec. 7, 1993), and argues that its demonstration of a trademark registration is sufficient in establishing Policy ¶ 4(a)(i) rights in the EXPRESS SCRIPTS mark. Panels have found that a complainant’s valid USPTO registration is sufficient in establishing rights in a mark per Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Therefore, this Panel finds that Complainant has established Policy ¶ 4(a)(i) rights in the EXPRESS SCRIPTS mark.
Complainant argues that the <expressscriptsholding.com> domain is confusingly similar to Complainant’s mark as it includes the mark while removing the space between the words of the mark and adding the generic term “holding” and the “.com” generic top level domain (“gTLD”). Panels have held that the addition of a gTLD and the removal of space in the mark, does not serve to adequately distinguish a respondent’s domain from a complainant’s mark under Policy ¶ 4(a)(i). See 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.”). Panels have also held that the addition of a generic term to a mark is insufficient to differentiate a domain under Policy ¶ 4(a)(i) analysis. See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.). 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 <expressscriptsholding.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name, nor has Complainant given Respondent any license, permission, or authorization to use the EXPRESS SCRIPTS mark in any way. The Panel notes the WHOIS information regarding the disputed domain name, listing “Bao Renjun” as registrant of record. Based on the available WHOIS information, the Panel agrees that there is no basis to find Respondent commonly known by the disputed domain name per 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).
Further, Complainant argues that Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <expressscriptsholding.com> domain name. Rather, the <expressscriptsholding.com> domain name resolves to an inactive website. Panels have found such inactive use by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for 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)). Therefore, the Panel holds that Respondent’s <expressscriptsholding.com> domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel agrees that while Complainant has not made arguments under Policy ¶ 4(b), such arguments are not mandatory under the Policy—so long as Complainant shows bad faith use and registration in some manner. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant contends that Respondent is inactively holding the <expressscriptsholding.com> domain name. Panels have held that failure to use a disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.). The particular circumstances of this case that the Panel has considered are:
i) the Complainant’s mark EXPRESS SCRITPS is considered as being a well-known and reputable trademark; and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name <expressscriptsholding.com>.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name <expressscriptsholding.com> constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith.
Complainant argues that Respondent had actual knowledge of Complainant's rights in the EXPRESS SCRIPTS mark. Complainant argues that the significant resources devoted to the mark, as well as, the fame and recognition of the mark evinces Respondent having actual knowledge of Complainant’s rights. The Panel infers, due to the notoriety of Complainant's mark that Respondent had actual knowledge of Complainant's mark and rights and determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent’s "actual knowledge of Complainant's mark when registering 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 <expressscriptsholding.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: September 6, 2016
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