WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Medco Health Solutions, Inc. v. LaPorte Holdings, Inc.
Case No. D2004-0800
1. The Parties
The Complainant is Medco Health Solutions, Inc., Franklin Lakes, New Jersey, United States of America, represented by Margery F. Nathanson, United States of America.
The Respondent is LaPorte Holdings, Inc., Los Angeles, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <medcoheath.com> is registered with NameKing.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2004. On October 4, 2004, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain name at issue. On October 19 and 20, 2004, NameKing.com 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. The Center verified that 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 October 27, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was November 16, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2004.
The Center appointed Kevin C. Trock as the Sole Panelist in this matter on November 30, 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
The domain name at issue is <medcoheath.com>. The domain name is registered to LaPorte Holdings, Inc. The Complainant is Medco Health Solutions, Inc. The Complainant has registered the term MEDCOHEALTH.COM in the United States, Reg. No. 2,755,838, for use with on line pharmacy benefit management services and online information services in the filed of health care. The Complainant also owns U.S. trademark registrations for MEDCOHEALTHCONSULTANT.COM, Reg. No. 2,736,401 and MEDCOHEALTH, Reg. No. 2,744,576.
5. Parties’ Contentions
Complainant is one of the leading providers of pharmacy benefit management services in the United States and its mail order business is one of the nation’s largest mail order pharmacy operations. Complainant is retained by sponsors of pharmacy benefit plans to manage the pharmacy benefits for their plan members. It assists its customers to moderate the cost and enhance the quality of prescription drug benefits provided to their members nationwide. Its PBM customers include medical insurance plans such as Blue Cross/Blue Shield; managed care organizations; large U.S. corporate employers, including many Fortune 500 companies; federal, state and local government agencies; third-party benefit plan administrators and labor unions. In 2003, Complainant’s net revenues were $34 billion. Complainant managed 532 million prescriptions, including 78 million prescriptions in its mail order pharmacies, during 2003. Complainant is responsible for providing pharmaceutical healthcare services to approximately 60 million Americans.
Complainant has been using MEDCO in its name and marks since 1984. MEDCO has been a predominant part of Complainant’s company and trade names since this time. Additionally, Complainant has used the MEDCO Marks in connection with its online pharmacy, drug utilization review, disease management and health care and pharmaceutical information services, as well as in connection with various publications in these fields.
Complainant has also registered various domain names incorporating the MEDCO mark, including <medco.com>, <medcohealth.com>, <medcorx.com> and <medcoprescriptionplans.com>. Complainant maintains an active website for the use of the millions of members of its clients (and which the general public can view as well), which provides a broad set of features and capabilities, including the ability to handle first-fill prescriptions, refills and renewals by mail order, as well as transfers from retail pharmacies to mail order.
Complainant contends that the disputed domain name <medcoheath.com> is confusingly similar to Complainant’s family of MEDCO Marks because it is an obvious misspelling of the dominant portion of those marks, simply deleting the “l” in health. Complainant also contends that Respondent does not own a trademark or service mark registration that is identical, similar or in any way related to the <medcoheath.com> domain name or Complainant’s MEDCO Marks.
Complainant further contends that Respondent is not and has not been using the disputed domain name <medcoheath.com> in connection with any bona fide offering of goods or services. Rather, Complainant contends that Respondent is using the disputed domain name in an attempt to trade on Complainant’s reputation and goodwill by offering competing online pharmacy services.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to prevail, the Complainant must prove the following three elements: (i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) Respondent has no rights or legitimate interests in the domain name; and (iii) Respondent has registered the domain name and is using it in bad faith. (Policy, Paragraph 4(a)).
The Respondent has not filed a response to the Complaint. Pursuant to the Rules, Paragraph 5(ix)(e), the Panel will decide the dispute based on the Complaint.
A. Identical or Confusingly Similar
Complainant has been using the term MEDCO in connection with its business since 1984. Complainant is one of the leading providers of pharmacy benefit management services in the United States and operates one of the largest mail order pharmacy operations in that country, having net revenues of $34 billion in 2003. Complainant also uses the term MEDCO in connection with its online pharmacy services.
Complainant has registered and is using the domain names <medco.com> and <medcohealth.com> in connection with its online pharmacy services, which include first-fill prescriptions, refills and renewals for mail order as well as transfers from retail pharmacies to mail order.
Complainant has registered the term MEDCOHEALTH.COM in the United States, Reg. No. 2,755,838, for use with online pharmacy benefit management services and online information services in the filed of health care and the term MEDCOHEALTH, Reg. No. 2,744,576, for use with drug utilization review services, mail order and online pharmacy services, among other things.
Based on this record, the Panel determines that the Complainant has legitimate rights in the trademarks MEDCO, MEDCOHEALTH and MEDCOHEALTH.COM.
The disputed domain name <medcoheath.com> is identical to the MEDCOHEALTH.COM trademark in which the Complainant has rights, but for the absence of the letter “l”. Such near identity is sufficient to show that the disputed domain name is confusingly similar to Complainant’s trademark. See, e.g., Eddie Bauer, Inc. v. John Zuccarini aka Cupcake Party, WIPO Case No. D2001-0224 (<eddiebaurer.com> and <eddiebaur.com> v. EDDIE BAUER); Playboy Enterprises International Inc. v. SAND Web Names - For Sale, WIPO Case No. D2001-0094 (<plaboy.com> v. PLAYBOY); Google, Inc. v. Namerental.com and Leonard Bensonoff, WIPO Case No. D2001-0060; News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623 (<pag3.com> v. PAGE3.COM); AT&T Corp. v. Global Net 2000, Inc., WIPO Case No. D2000-1447 (<attt.net> v. ATT.NET).
B. Rights or Legitimate Interests
Because Respondent has not filed a response, the Panel only has the Complaint by which to address the issue of Respondent’s rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent does not own a trademark or service mark that is identical to or similar in any way to the <medcoheath.com> domain name. The Complainant also alleges that MEDCOHEATH is not the Respondent’s personal name nor is the Respondent’s business known to the public as MEDCOHEATH. The Complainant further alleges that the Respondent is not a licensee of Complainant nor has Respondent ever been authorized by Complainant to use any of the MEDCO trademarks or to register the <medcoheath.com> domain name.
However, the disputed domain name was registered on September 17, 2002, approximately two years prior to Complainant’s registrations of the marks MEDCOHEALTH and MEDCOHEALTH.COM in the United States. Moreover, a page from the Respondent’s website appears to indicate that the business operating at that website is presenting itself to the public as MEDCOHEATH.COM and that it is promoting mail order pharmacy services.
Despite the registration of the disputed domain name <medcoheath.com> before the U.S. registrations of the trademarks MEDCOHEALTH and MEDCOHEALTH.COM, the obvious misspelling of the term MEDCOHEALTH as “medcoheath” strongly suggests that Respondent knew of the Complainant’s use of the term MEDCOHEALTH with its business before it registered the disputed domain <medcoheath.com>, and that such misspelling was intentional.
On balance, there is sufficient evidence in the record to persuade the Panel that the Respondent does not have a right or a legitimate interest in the disputed domain name <medcoheath.com>.
C. Registered and Used in Bad Faith
Evidence of bad faith includes, among other things, registering and using an identical or confusingly similar domain name to intentionally attract, for commercial gain, Internet users to the Respondent’s website. (the Policy, paragraph 4(b)(iv))
The record provides sufficient evidence for this Panel to conclude that the registration and use of the confusingly similar domain name <medcoheath.com> is being used by Respondent to divert traffic from Complainant’s website. The fact that Respondent registered and used a domain name that incorporates a common typing mistake shows an intent to deceive the public and constitutes bad faith. Courts have described this conduct as “typosquatting” and deemed it “a classic example” of a bad faith domain name registration. Shields v. Zuccarini, 254 F. 3d 476, 484 (3d Cir. 2001). See also Victoria’s Cyber Secret Limited v. V Secret Catalogue, Inc., 161 F. Supp. 2d 1339, 1351 (S.D. Fla. 2001); Porsche Cars North America, Inc. v. Spencer, 55 U.S.P.Q. 2d 1026, 1031 (E.D. Cal. 2000).
Respondent’s apparent operation of an online pharmaceutical business resolving to the disputed domain name <medcoheath.com> further exacerbates the harm to the public and to Complainant caused by registering a domain name with a deliberate misspelling. Such conduct is further evidence that Respondent is intentionally manipulating the domain name registration system and engaging in a bad faith scheme to divert traffic from Complainant’s website in order to obtain an improper commercial benefit.
Accordingly, the record contains ample evidence for this Panel to conclude that the Respondent has registered and is using the disputed domain name <medcoheath.com> in bad faith.
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 <medcoheath.com> be transferred to the Complainant.
Kevin C. Trock
Dated: December 22, 2004