WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Express Scripts, Inc. v. Roy Duke, Apex Domains aka John Barry aka Domains for Sale and Churchill Club aka Shep Dog
Case No. D2003-0829
1. The Parties
The Complainant is Express Scripts, Inc., of Missouri, United States of America, represented by Bryan Cave, LLP, United States of America.
The Respondents are Roy Duke, of Larchmont, New York 10538; Apex Domains a/k/a John Barry a/k/a Domains For Sale, Inc., of the Bronx, New York; and Churchill Club a/k/a Shep Dog, of the Bronx, New York 10463, United States of America.
2. The Domain Names and Registrars
The disputed domain names
are registered with Intercosmos Media Group d/b/a directNIC.com.
The disputed domain names;
registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 15, 2003. The Center transmitted by email to the registrars a request for registrar verification in connection with the domain names at issue. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 4, 2003. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on November 6, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 26, 2003. The Respondents did not submit any response. Accordingly, the Center issued a notice of the Respondentsí default on November 27, 2003.
The Center appointed Mark Partridge, Andrew Bridges and Lynda J. Zadra-Symes as panelists in this matter on February 12, 2004. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is a pharmacy benefit management company. It has used the mark EXPRESS SCRIPTS in connection with its business since at least as early as 1986 and is the owner of a federal registration for the mark issued on December 7, 1993, in connection with "administering a pharmacy reimbursement program, pharmacy home delivery services and pharmacy services and pharmacy mail order services," Registration Number 1,809,555.
Complainant also operates a website at "www.express-scripts.com," and several related domain names (<express-scripts.com>, <expresscripts.net>, <expressscripts.org>, <expresscriptspharmacy.com>, <expressscripts.com>, <expressscriptspharmacy.com> and <xpressscripts.com>).
The named Respondents appear to be acting in concert with one another. The domain names at issue automatically link Internet users to home pages having similar contact information and page design, including identical contact information, billing information, toll free telephone numbers, "about us" information, FAQ pages and graphics. Respondentsí websites located at "www.americanpharmacy.com," "www.healthydrugs.com" and "www.e-prescribe.com" offer pharmacy related goods and services in competition with Complainant.
5. Partiesí Contentions
Complainant contends that the Respondents are acting in active concert and participation with one another. Complainant contends that it has prior rights in the mark EXPRESS SCRIPTS for pharmaceutical services and that the Domain Names are confusingly similar to its mark. Complainant contends that Respondents have no legitimate reason for using the Domain Names, and instead use them in bad faith to mislead Internet users and to compete unfairly with Complainant.
The Respondents did not reply to the Complainantís contentions.
6. Discussion and Findings
Paragraph 10(e) of the Rules grants the Panel the power "to consolidate multiple domain name disputes."
In this action, it appears that the Respondents are alter egos of the same entity and we conclude that it is appropriate to consolidate multiple domain disputes in a single action.
Paragraph 14 of the Rules provides that in the event of default the Panel "may draw such inferences therefrom as it considers appropriate."
Paragraph 15(a) of the Rules instructs the Panel that "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules or principles of law that it deems applicable."
Where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts. Mondich v. Brown, WIPO Case No. D2000-0004 (February 16, 2000).
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Here, since Respondents have defaulted, it is therefore appropriate to accept the facts asserted by Complainant and to draw adverse inferences of fact against Respondents where the Panel deems appropriate.
A. Identical or Confusingly Similar
Complainant has established that it has prior rights in the mark EXPRESS SCRIPTS for pharmacy services.
Complainant takes the position that the Domain Names are instances of "typosquatting" or domain names derived from anotherís mark based on common typographical mistakes. Indeed, most of the Domain Names are variations on Complainantís mark that are likely to be the result of typing errors by Internet users seeking to locate Complainantís website. With the exceptions noted below, all appear calculated to take advantage of Internet user confusion or error and none of the changes is sufficiently distinctive to avoid the likelihood confusion. Therefore, we find that the Domain Names are confusingly similar to Complainantís mark.
The exceptions are <express-pharmacy-script.com>, <expresspharmacyscript.com> and <expressperscriptions.com>. These do not appear to be instances of typosquatting and Complainant has not specifically explained why they are confusingly similar to its mark EXPRESS SCRIPTS. Because the sole basis argued in the complaint for confusion is typosquatting, we conclude that Complainant has not established its claim against these domain names. In addition, because of this finding, it is unnecessary to make further findings with respect to these three domain names.
B. Rights or Legitimate Interests
Complainant has made a prima facie showing that Respondents lack any rights or legitimate interest in the Domain Names. The Domain Names are not in use as the domain names of an active website. Instead, the Domain Names are used to redirect Internet users to websites operated under completely different domain names. There is no indication that Respondents are known by any of the Domain Names. Finally, the Domain Names are not used for a non-commercial purpose. Since Respondents have presented no evidence to the contrary and we find none in the record, we conclude that Respondents lack any right or legitimate interest in the Domain Names.
C. Registered and Used in Bad Faith
Complainant has also made a prima facie showing of bad faith registration and use in several respects.
First, Respondents appear to be engaged in a pattern of conduct involving the registration of domain names that interfere with the Complainantís use of its mark on the Internet. Second, Respondentsí conduct appears to be intended to interfere with the business of a competitor. Finally, it appears that the Domain Names were registered and used to misdirect Internet users to Respondentsí sites for commercial gain based on confusion with Complainantís mark.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the following domain names be transferred to the Complainant:
The Complaint is denied, however, with respect to the following domain names:
Lynda J. Zadra-Symes
Dated: February 26, 2004