Complainant is Express Scripts, Inc., St. Louis, Missouri, United States of America represented by Bryan Cave, LLP, United States of America.
Respondent is Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, New York, New York, United States of America.
The disputed domain name <expresscripts.com> (the “Domain Name”) is registered with eNom, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2008. On August 28, 2008, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed Domain Name. On August 28, 2008, eNom, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 3, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 4, 2008. The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on September 9, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 30, 2008.
The Center appointed Harrie R. Samaras, John Swinson and Steven L. Snyder as panelists in this matter on November 18, 2008. 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.
Complainant is one of the largest pharmacy benefit management companies in North America. It provides pharmacy services to over 50 million members through facilities in eight states and Canada. Since at least as early as 1986, Complainant has continuously provided pharmacy services under and in connection with the EXPRESS SCRIPTS mark (the “Mark”). It owns the following registrations for the Mark and variations thereof: U.S. Registration No. 1,809,555 (EXPRESS SCRIPTS); U.S. Registration No. 3,442,764 (EXPRESS SCRIPTS CHOICEMATTERS); and U.S. Registration No. 3,048,473 (EXPRESS SCRIPTS TREND CENTRAL). Complainant also operates and maintains the “www.express-scripts.com” website. In addition to the <express-script.com> domain name, Complainant owns at least 20 domain names incorporating the Mark and slight variations on those words.
Respondent's website, at <expresscripts.com>, offers directly competing pharmacy related goods and services through search category headings containing links to various third party vendors. At the top of the home page in a prominent place Respondent states: “Presented by <expresscripts.com>”.
Complainant contends that is has rights in the Mark and cites the Panel to decisions from other UDRP panels finding Complainant has rights to the Mark. See Express Scripts, Inc. v. Roy Duke et. al., WIPO Case No. D2003-0829 (February 26, 2004) (“Complainant has established that it has prior rights in the mark EXPRESS SCRIPTS for pharmacy services”); Express Scripts, Inc. v. Kal Kuchora, WIPO Case No. D2005-1164 (February 15, 2006) (“Complainant has established registered and unregistered trademark rights in the term EXPRESS SCRIPTS”); Express Scripts, Inc. v. Bella Gia, WIPO Case No. D2006-0310 (March 10, 2006); Express Scripts, Inc. v. Kal, WIPO Case No. D2006-0301 (May 12, 2006); and Express Scripts, Inc. v. Windgather Investments Ltd./Mr. Cartwright, WIPO Case No. D2007-0267 (April 26, 2007). Complainant also contends that the Domain Name is confusingly similar to the Mark, Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has not licensed or provided any other permission to use the Mark. Complainant alleges Respondent registered and is using the Domain Name in bad faith.
Respondent did not reply to the Complaint.
Where a party fails to present evidence in its control, the Panel may draw such inferences as it considers appropriate. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-0004. 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 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.
This element consists of two parts: First, does Complainant have rights in a relevant mark; and, second, is the Domain Name identical or confusingly similar to that mark.
The Panel finds Complainant has established rights in the Mark based on Complainant's long-standing use of it in relation to pharmacy services as well as U.S. trademark registrations such as U.S. Registration No. 1,809,555 for EXPRESS SCRIPTS.
The Panel further finds that the Domain Name <expresscripts.com> is confusingly similar to the Mark (EXPRESS SCRIPTS). The Domain Name incorporates the entirety of the Mark, with only two minor distinctions the omission of an “s” in the “Express” portion of the Domain Name (alternatively, the distinction could be viewed as the omission of the “s” in “Scripts”) and the addition of the generic top-level domain (“gTLD”) “.com”. When a domain name wholly incorporates a complainant's registered mark that is sufficient to establish identity or confusing similarity for purposes of the Policy. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 (January 29, 2001). Furthermore, the addition of the gTLD “.com” is of no legal significance from the standpoint of comparing the Domain Name to the Mark because use of a gTLD is required of domain name registrants, “.com” is one of only a few such gTLD's, and “.com” does not serve to identify a specific enterprise as a source of goods or services. See SBC Communications v. Fred Bell aka Bell Internet, WIPO Case No. D2001-0602 (July 8, 2001). Similarly, UDRP panels have consistently held that “a mere addition or a minor misspelling of Complainant's trademark does not create a new or different mark in which Respondent has legitimate rights.” See Hobson, Inc. v. Peter Carrington a/k/a Party Night Inc, WIPO Case No. D2003-0317 (July 14, 2003). Such insignificant modifications to trademarks is commonly referred to as “typosquatting” or “typo-piracy,” as such conduct seeks to wrongfully take advantage of errors by users in typing domain names into their web browser's location bar. See Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk, WIPO Case No. D2003-0161 (April 17, 2003). “Domain names which constitute typo-squatting are confusingly similar by definition; it is this similarity which makes them attractive.” See Dell Computer Corp. v. Clinical Evaluations, WIPO Case No. D2002-0423 (June 30, 2002); see also American Home Products Corporation v. Privateer Ltd., WIPO Case No. D2000-0455 (August 25, 2000) (ADDVIL.com held confusingly similar to ADVIL); ESPN, Inc. v. West Coast Entertainment, Inc., Nat. Arb. Forum Case No. FA95047 (July 21, 2000) (ESPNS.com held confusingly similar to ESPN).
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
It is uncontested that Complainant has not licensed or otherwise authorized Respondent to use the Mark, e.g., in a domain name. Insofar as Complainant has made a prima facie showing, this shifts the burden to Respondent to show evidence that it has rights or legitimate interests in the Domain Name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 (June 6, 2000). Such facts, without contrary evidence from Respondent, are sufficient to permit a finding in Complainant's favor on this issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007 (March 6, 2000).
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
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 complainant's 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 Respondent acted in bad faith where other circumstances reveal the bad faith nature of the registration and use of the disputed domain name.
The Panel concludes, on the evidence submitted by Complainant, that Respondent has registered and used the Domain Name in bad faith. As an initial matter, Respondent's mere act of typosquatting presents ample evidence of bad faith in the circumstances of this case. Briefing.com Inc. v. Cost New Domain Manager, WIPO Case No. D2001-0970 (September 12, 2001) (finding that “Respondent has demonstrated bad faith by engaging in ‘typo-piracy' to confuse Internet users and draw them away from Complainant's web site”). Notwithstanding that, Respondent's bad faith in registering the Domain Name is supported by the following undisputed facts: (1) Respondent registered a domain name for use with pharmacy-related products and services that is confusingly similar to the Mark which Complainant has been using for over twenty years and which has been registered with the U.S. Patent and Trademark Office since 1993 for use with pharmacy-related services; (2) there is no relationship between Respondent and Complainant and Complainant has not given Respondent permission to use the Mark for any purpose, including in a domain name or for use on Respondent's website; and (3) Respondent was likely aware of the Mark and yet adopted it for use in the Domain Name and on its website (Respondent's home page states prominently: “Presented by <expresscripts.com>”) to divert Internet users to its website. See America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004 (February 22, 2001). Furthermore, the fact that Respondent also uses on its home page the logo: “Pills pedia.com” indicates that Respondent could have used that or another noninfringing domain name but chose not to.
Respondent is using the Domain Name in bad faith because its use of the Domain Name is to intentionally attempt to divert, for commercial gain, Internet users to one or more competing websites (some of which are third party “sponsors” and many of which presumably compensate Respondent for driving Internet traffic to their sites) in an effort to confuse and mislead consumers. Net2phone Inc. v. Dynasty System Sdn Bhd, WIPO Case No. D2000-0679 (September 19, 2000). Furthermore, Respondent's bad faith use of the Domain Name is also evidenced by the fact that Respondent has provided false contact information to the Registrar. Maintaining that false contact information in the WHOIS records after registration constitutes bad faith use of the Domain Name because it prevents a putative complainant from identifying the registrant and investigating the legitimacy of the registration. For example, permitting registrants to mask their identity makes it difficult for trademark owners to determine whether the registrant “registered the domain name primarily for the purpose of disrupting the business of a competitor,” Policy paragraph 4(b)(iii), or whether the registrant “engaged in a pattern” of registering domain names “in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name,” Policy paragraph 4(b)(ii). Under the U.S. Anticybersquatting Consumer Protection Act, moreover, ‘provision of material and misleading false contact information when applying for the registration of the domain name' is itself evidence of bad faith. 15 U.S.C. §1125(d)(1)(B)(VII). See also Molinari Int'l S.p.A. v. Lasambucamolinari.com, WIPO Case No. D2000-1169 (October 18, 2000) (Respondent's provision of untruthful information about itself demonstrates “its resolve to maintain the domain name and making it impossible for the Complainant to get the domain name back”).
Lastly, while Respondent's use of a privacy service will not in itself constitute bad faith under the Policy, the Panel may still take it into account and draw adverse inferences in appropriate cases (see Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc., WIPO Case No. D2004-0453; Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei, WIPO Case No. D2005-0642; CCM IP S.A. v. Traverito Traverito, WIPO Case No. D2007-0542). Here, the Panel finds that Respondent's use of a privacy shield supports its finding of bad faith registration. Although privacy shields might be legitimate in some cases such as protecting the identity of a critic against reprisal it is difficult to see why this Respondent needs to protect its identity except to frustrate the purposes of the Policy or make it difficult for a brand owner to protect its trademarks against infringement and cybersquatting. In circumstances like this, the privacy shield may also allow registrants to transfer domain name registrations amongst themselves without any public record that there has been a transfer, thus allowing them to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced under the Policy (see Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647, holding that use of privacy shield can be “treated as evidence of bad faith when serial registrants use privacy shields to mask each registrant's actual date of registration”). Such use defies the Policy's overriding objectives to preserve accountability for unlawful acts on the Internet and to curb the abusive registration of domain names and cybersquatting (see, e.g., Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062).
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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 <expresscripts.com> be transferred to Complainant.
Harrie R. Samaras
Steven L. Snyder
Dated: December 1, 2008