CVS Pharmacy, Inc. v. Shop Admin / CVS Online Pharmacy
Claim Number: FA1609001694890
Complainant is CVS Pharmacy, Inc. (“Complainant”), represented by Sarah J. Schneider of Sheridan Ross P.C., Colorado, USA. Respondent is Shop Admin / CVS Online Pharmacy (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cvsonlinepharmacy.com>, registered with OnlineNIC, Inc..
The undersigned certifies that he 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 22, 2016; the Forum received payment on September 22, 2016.
On September 23, 2016, OnlineNIC, Inc. confirmed by e-mail to the Forum that the <cvsonlinepharmacy.com> domain name is registered with OnlineNIC, Inc. and that Respondent is the current registrant of the name. OnlineNIC, Inc. has verified that Respondent is bound by the OnlineNIC, Inc. 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 26, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 17, 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@cvsonlinepharmacy.com. Also on September 26, 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.
Respondent sent E-Mails to the Forum on September 27, 28, and 29, 2016, but it did not submit a formal Response. Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 24, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is a corporation offering retail services, personal and home healthcare products, grocery products, and other products and services. Complainant uses the CVS marks in connection with its products and services and has rights in the CVS marks based on registration of the marks in the United States in 1971.
Complainant alleges that the disputed domain name is confusingly similar to its CVS trademarks as the domain includes the entire CVS mark and merely adds the descriptive words “online,” “pharmacy,” and the generic top-level domain (“gTLD”) “.com.” Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name although Respondent misleadingly identifies itself as “Shop Admin, CVS Online Pharmacy.” Respondent’s use of the domain name, to resolve to a website offering illegal pharmacy services and attempting to pass itself off as Complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent has registered and is using the disputed domain name in bad faith. Respondent’s bad faith is evident through its refusal to transfer the domain name without compensation. Respondent intentionally attempted to confuse and attract internet users for commercial gain through using a confusingly similar domain name to sell pharmaceutical products and pass off as Complainant. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, in its E-Mails to the Forum, Respondent states (verbatim):
“How many times I have to told that I have spent thousands on this project? Pay the price and take the domain. There's no other solution.”
Complainant owns rights in the mark CVS dating back to 1971.
The disputed domain name was registered in 2016.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain name to resolve to a web site that features products and services that compete with those of Complainant and that may be illegal. Further, it offered to sell the disputed 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.”).
The disputed domain name is confusingly similar to the CVS marks for purposes of Policy ¶ 4(a)(i). Respondent’s domain includes the entire CVS mark and adds the words “online,” “pharmacy,” and the gTLD “.com.” Panels routinely find that adding a generic term and gTLD does not distinguish a domain name from the mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Thus the Panel finds that the disputed domain name is confusingly similar to the CVS marks pursuant to Policy ¶ 4(a)(i).
Respondent is not commonly known by the disputed domain name despite WHOIS information identifying Respondent as, “Shop Admin,” of the organization, “CVS Online Pharmacy”, because it is not related to Complainant. Panels have held that a respondent is not commonly known by a disputed domain name despite WHOIS information to the contrary, where the panel determines that there is no other information to corroborate the WHOIS information. See The Toronto-Dominion Bank v. RD BANK /-, FA1404001554468 (Forum May 13, 2014) (“WHOIS information for the <rdbank.com> domain name lists ‘RD BANK /-‘ as the domain name’s registrant. However, there is nothing in the record that corroborates the WHOIS data’s suggestion that Respondent may be commonly known by the <rdbank.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).”). Thus Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
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. The disputed domain name resolves to a website displaying the CVS mark and appearing to sell various pharmaceutical drugs such as, “Xanax,” “Valium,” and “Cialis,” among others. Respondent’s attempt to sell pharmaceutical products using the CVS mark is an attempt to pass itself off as Complainant. Panels have held that using another’s mark to operate a commercial website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Accordingly, the Panel finds that Respondent’s use of the disputed domain name does not fall within a permitted use under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, Respondent has attempted to confuse and attract internet users for commercial gain through its use of the disputed domain name and does so in bad faith. As stated above, the disputed domain name resolves to a website using the CVS mark and purporting to offer for sale pharmaceutical products. Panels have held that a respondent attempting to pass itself off as another through use of another’s mark demonstrates bad faith under Policy 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”); see also Emissary Technologies, LLC v. Careright Healthcare, Inc., FA 1451502 (Forum Aug. 8, 2016) (Panel holds that, with no evidence submitted by Respondent to the contrary, Complainant’s contentions that the disputed domain name resolves to a website that appears to offer a legitimate healthcare business but is actually “scam” and to cover up illegal activity constitutes use of the disputed domain name for an illegal purpose, in bad faith according to Policy ¶ 4(a)(iii).); Minn. State Lottery v. Mendes, FA 96701 (Forum Apr. 2, 2001) (finding bad faith because it would be illegal for the respondent to use the domain name <mnlottery.com> without government approval). Thus the Panel finds that Respondent’s use of the domain name demonstrates bad faith under Policy ¶ 4(a)(iii) and ¶ 4(b)(iv).
In addition, Respondent has attempted to sell the disputed domain name to Complainant. Complainant points to emails between the parties where Respondent stated, “We have spent so much money effort and time to build and promote CVSonlinepharmacy.com. I am not going to give it to you for free. If you really want to take this down then buy it so I can build a new affiliate model with a different name. Else Keep trying to take it down. Every time you try to take it down I will transfer this to new host. I have already removed it from previous hosting.” This exchange shows that Respondent intended to sell the disputed domain name for an amount in excess of out of pocket costs. Thus the Panel finds that Respondent has acted in bad faith. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); S. Co. v. Doms, D2000-0184 (WIPO May 8, 2000) (finding that the respondent violated Policy ¶ 4(b)(i), by indicating to the complainant that he “would consider a cash offer” for the sale of the disputed domain name registration while inviting the complainant to “submit an opening cash or stock offer”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cvsonlinepharmacy.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: October 25, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page