Medco Health Solutions, Inc. v. Super Privacy Service c/o Dynadot
Claim Number: FA1612001709763
Complainant is Medco Health Solutions, Inc. (“Complainant”), represented by Linghan Ji of HUSCH BLACKWELL LLP, Missouri, USA. Respondent is Super Privacy Service c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <membersmedco.com>, registered with Dynadot, LLC.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 28, 2016; the Forum received payment on December 28, 2016.
On January 1, 2017, Dynadot, LLC confirmed by e-mail to the Forum that the <membersmedco.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 January 3, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 23, 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@membersmedco.com. Also on January 3, 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 February 2, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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, Medco Health Solutions, Inc., is a wholly owned subsidiary of Express Scripts Holding Company, one of the largest pharmacy benefit managers in North America. In connection with this business, Complainant uses the MEDCO mark to provide pharmacy benefit and pharmacy services. Complainant has rights in the MEDCO mark based upon numerous registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,116,225, registered Mar. 20, 2012). Respondent’s <membersmedco.com> is confusingly similar to the MEDCO mark, as it incorporates the mark in its entirety, merely differing through the addition of the descriptive term “members.”
Respondent has no rights or legitimate interests in the <membersmedco.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant granted Respondent any license, permission, or authorization to use the MEDCO mark in any way. Respondent’s use of the disputed domain does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name resolves to a website featuring sponsored ads, some of which incorporate Complainant’s marks and relate to Complainant’s business.
Respondent has registered and used <membersmedco.com> in bad faith. Respondent uses the disputed domain name to host a commercial web directory featuring sponsored ads and other links, presumably receiving click-through fees from said links. Additionally, Respondent had actual knowledge of Complainant’s rights in the MEDCO mark at the time it registered and subsequently used the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel notes that <membersmedco.com> was created September 13, 2016.
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 claims rights in the MEDCO mark based upon registration of the mark with the USPTO (e.g., Reg. No. 4,116,225, registered Mar. 20, 2012). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel therefore holds that Complainant’s registration of the MEDCO mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next claims Respondent’s <membersmedco.com> is confusingly similar to the MEDCO mark, as the disputed domain name contains the mark in its entirety, merely differing through the addition of the descriptive term “members.” Complainant contends, and this Panel agrees, that the word “members” is descriptive of Complainant’s business because in Complainant’s industry, its customers are referred to as “members.” Accordingly, the Panel finds that Respondent’s <membersmedco.com> domain name is confusingly similar to Complainant’s MEDCO mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in <membersmedco.com> as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the MEDCO mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Kohler Co. v. Privacy Service, FA 1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “Super Privacy Service c/o Dynadot.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain names is evinced by their failure to use the names for a bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent’s <membersmedco.com> resolves to a parked website consisting of sponsored advertisements, and other links. Use of a disputed domain name to host sponsored advertisements and links related to a complainant’s business is not a use that evidences rights under Policy ¶¶ 4(c)(i) or (iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Meyerson v. Speedy Web, FA 960409 (Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with 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)). The Panel agrees and hold that Respondent’s use of <membersmedco.com> is evidence of its lack or rights or legitimate interests in the disputed domain name and failure to make a bona fide offer of goods or services or a legitimate non-commercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s use of <membersmedco.com> to resolve to a parked page containing sponsored advertisements and links both related and unrelated to Complainant’s business is evidence of Respondent’s bad faith. Use of a disputed domain name to host sponsored advertisements and other links can be evidence of Policy ¶ 4(b)(iv) bad faith. See Vivint, Inc. v. Online Management, FA1549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links). The disputed domain name resolves to a parked page with little to no content other than sponsored advertisements and links. Complainant presumes Respondent receives commercial benefit from the advertisements as well as click-through fees when an Internet user clicks one of the links. The Panel agrees, and finds that Respondent’s registration of the domain name and use of the website shows bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant also contends that in light of the fame of Complainant's MEDCO mark, it is inconceivable that Respondent could have registered the <membersmedco.com> domain name without knowledge of Complainant's rights in the mark. The Panel agrees with Complainant, in light of the notoriety of Complainant’s mark and the incorporation of the MEDCO term in its entirety in Respondent’s domain name. The Panel therefore finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name, which constitutes adequate evidence of bad faith registration under Policy ¶ 4(a)(iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <membersmedco.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: February 16, 2017
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