WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CVS Pharmacy, Inc. v. Johnny Carpela
Case No. D2004-0038
1. The Parties
The Complainant is CVS Pharmacy, Inc., with corporate headquarters at Woonsocket, Rhode Island, United States of America, represented by Edwards & Angell, LLP, United States of America.
The Respondent is Johnny Carpela, Sumas, Washington, United States of America.
2. The Domain Name and Registrar
The disputed domain name <cvspharmacy.net> (the "Domain Name") is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 16, 2004. On January 19, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. That same day, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center on January 27, 2004, that the Complaint was administratively deficient, the Complainant filed an Amended Complaint on January 27, 2004. 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 Respondent of the Complaint, and the proceedings commenced on February 5, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of his default on February 26, 2004.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on March 18, 2004. The Panel finds that it was properly constituted. 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 operates thousands of retail and specialty stores in 32 states and the District of Columbia. Through a wholly-owned subsidiary, Complainant owns several dozen federal trademark registrations and applications that incorporate "CVS" (the "CVS trademarks"). The CVS trademarks include the following registrations issued by the U.S. Patent and Trademark Office for "CVS/PHARMACY": Nos. 2573942, 2662956, 2774665, and 2048916.
On May 26, 2003, Vertical Markets Online registered the Domain Name. Mark Catroppa was listed as the Administrative and Technical contact. As of early 2004, he was reported to be the Vice President of Marketing and Operations for CanadaPharmacy.com. CanadaPharmacy.com purports to carry over 2000 prescription and non-prescription medications, as well as health and wellness products and specialty items such as vitamins, cosmetics and novelty goods. Until recently, typing in the Domain Name <cvspharmacy.net> would take customers to CanadaPharmacy.comís website. Also, until recently, typing in "www.cvspharmacy.net" would take customers to a website called CVSPharmacy.net which is similar to the CanadaPharmacy.com website.
Sometime after January 13, 2004, Mark Catroppa and Vertical Markets Online transferred the registration and the administrative/technical contact information for the Domain Name to Respondent, Johnny Carpella. The address for Mark Catroppa and Johnny Carpella is the same.
5. Partiesí Contentions
The CVS trademarks are known to the consuming public in connection with Complainantís CVS/pharmacy stores and online services through CVS.com. Both in its stores and online CVS sells prescription drugs and a wide assortment of general merchandise including over-the-counter drugs, greeting cards, film and photofinishing services, beauty products and cosmetics, seasonal merchandise and convenience foods. The Domain Name is confusingly similar to the CVS trademarks. This confusion is exacerbated by the similarity of the products offered for sale at the linked CanadaPharmacy.com website.
Complainant contends that the Domain Name is identical or confusingly similar to its trademarks, Respondent has no rights or legitimate interests in the Domain Name, and Respondent registered and is using the Domain Name in bad faith.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Where a party fails to present evidence in its control, the panel may draw adverse inferences regarding those facts. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddyís Antiques, WIPO Case No. D2000-0004 (February 16, 2000). Insofar as Respondent has defaulted, it is therefore appropriate to accept the facts asserted by Complainant and to draw adverse inferences of fact against Respondent. Nonetheless, 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:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that Complainant has rights in the CVS and CVS/PHARMACY marks. Respondent failed to contest the rights that Complainant asserts to the CVS and CVS/ PHARMACY marks through the long-standing and extensive use of those marks in the United States in conjunction with its products and services, as well as its trademark registrations.
It has been well established by previous panel decisions that the domain name extension - such as .com and, in this case, .net - does not prevent two marks from being considered to be identical. See, e.g., The Little Gym International, Inc. v. Domainstuff.com, WIPO Case No. D2003-0466 (August 21, 2003). For these reasons, the Panel finds that the Domain Name is identical and, at the very least, confusingly similar, to Complainantís trademark.
The Panel therefore holds that Complainant has established element (i) above.
B. Rights or Legitimate Interests
Complainant has alleged facts to establish that Respondent has no rights or legitimate interest in respect of the Domain Name. Such facts, without contrary evidence from Respondent, are sufficient to permit a finding in Complainantís favor on this issue. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-0007 (March 6, 2000).
The Panel notes that Complainantís adoption and use of the CVS trademarks preceded Respondentís registration of the Domain Name by at least several years. In light of all the facts and circumstances, including the extensive publicity and marketing of the CVS trademarks, it can be reasonably inferred that Respondent had knowledge of the Complainantís well-known CVS trademarks before registering the Domain Name.
Furthermore, Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intending to commercially gain by its activities and to misleadingly divert customers. In fact, Respondent chose a domain name that is confusingly similar to the CVS trademarks to intentionally attract Internet users to its web site which offers many of the products Complainant sells in its stores and on-its website, including prescription and nonprescription pharmaceuticals, as well as bath and body, makeup, food, sunglass, and household products.
The Panel therefore holds that Complainant has established element (ii) above.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four criteria that are to be considered as evidence of the registration and use of a domain name in bad faith:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product."
These criteria are not exclusive and the panel may conclude that the Respondent acted in bad faith where other circumstances reveal the bad faith nature of the registration and use of the disputed domain name.
Under paragraph 2 of the Policy, it is clear that when one registers a domain name, one represents and warrants that, to the best of the registrantís knowledge, the registration of the domain name will not infringe on the rights of any third party. Given the facts and circumstances of this case taken together with the absence of any response by Respondent, the Panel concludes that Respondent registered and used the Domain Name while being aware of Complainantís rights in the CVS trademarks. Thus, that registration and use was in bad faith.
The Panel further concludes that Respondent registered the Domain Name primarily for the purpose of diverting potential customers from Complainantís stores and website, thus disrupting Complainantís business. Moreover by using the Domain Name with products and services that are similar to Complainantís, Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainantís mark as to the source, sponsorship, affiliation, or endorsement of its website.
Accordingly, the Panel finds that Respondent has satisfied element (iii) above.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <cvspharmacy.net> be transferred to the Complainant.
Harrie R. Samaras
Dated: March 31, 2004.