WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CVS Pharmacy, Inc. and MinuteClinic, LLC v. Transure Enterprise Ltd / Above.com Domain Privacy
Case No. D2015-0260
1. The Parties
The Complainants are CVS Pharmacy, Inc. and MinuteClinic, LLC of Woonsocket, Rhode Island, United States of America, represented by Locke Lord LLP, United States of America.
The Respondent is Transure Enterprise Ltd of Tortola, British Virgin Islands, United Kingdom of Great Britain and Northern Ireland / Above.com Domain Privacy of Beaumaris, VC, Australia.
2. The Domain Name and Registrar
The disputed domain name <cvsminuteclinic.com> (the "Domain Name") is registered with Above.com, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 18, 2015. On February 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 20, 2105, the Registrar 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 the Complainant on February 25, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 27, 2105.
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" or "UDRP"), 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 March 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 24, 2015.
The Center appointed Linda Chang as the sole panelist in this matter on April 2, 2015. 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
Co-Complainant CVS Pharmacy, Inc. is a retail medicine provider and operates more than 7,800 stores in 44 states in the United States, Puerto Rico and the District of Columbia. Co-Complainant MinuteClinic, LLC, a wholly owned subsidiary of CVS Pharmacy, Inc., is a retail medical clinic provider, with more than 900 locations in 31 states in the United States of America and the District of Columbia that are mostly located within CVS retail pharmacy stores.
The Complainants are the owner of a number of CVS and MINUTECLINIC trademarks respectively, and have been providing medicine and medical clinic services under the CVS and MINUTECLINIC trademarks for a long time.
The Domain Name was registered on February 14, 2008. At the time of filing the Complaint, it was used for providing a "Visitor Survey" that requested CVS consumers to rate their experience at CVS retail stores.
5. Parties' Contentions
The Complainants contend that the Domain Name is confusingly similar to their CVS and MINUTECLINIC trademarks. The Domain Name encompasses both the two trademarks in their entirety and consumers are likely to be attracted based on the mistaken belief that it is an authorized website of the Complainants.
The Complainants further contend that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainants claim that the Respondent has never been authorized to use the CVS and MINUTECLINIC marks or any mark confusingly similar thereto, that the Respondent has not engaged in bona fide use of the Domain Name, and that the Respondent has not been commonly known by the Domain Name, and that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name.
The Complainants finally contend that the Domain Name has been registered and is being used in bad faith. The Respondent is using the Domain Name in an intentional attempt to attract Internet users by creating a likelihood of confusion with the Complainants and their CVS and MINUTECLINIC marks. The Respondent has engaged in a pattern of bad faith use and registration of domain names containing well-known third party trademarks.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainants owns numerous CVS and MINUTECLINIC trademarks that predate the registration of the Domain Name, including U.S. Registration No. 919,941 CVS trademark registered as early as on September 7, 1971, and U.S. Registration No. 2,966,381 MINUTECLINIC trademark registered on July 12, 2005. The Panel recognizes that the Complainants have well established rights in the CVS and MINUTECLINIC marks.
The Panel finds that an addition of the suffixes such as ".com" being the generic Top-Level Domain does not typically function as a distinguishing factor, and the Domain Name is a combination of "cvs" and "minuteclinic", which incorporates the Complainants' CVS and MINUTECLINIC trademarks in their entirety.
The Panel accordingly determines that the mere combination of the Complainants' two trademarks compounds the likelihood of confusion, and the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. The Domain Name is confusingly similar to the Complainants' CVS and MINUTECLINIC trademarks.
B. Rights or Legitimate Interests
The Respondent was using the Domain Name to attract Internet users to a survey that requests them to share their experience at the Complainants' retail stores, with links to content offered by potential competitors of the Complainants. The Panel agrees that the Respondent's use of the Domain Name is not a bona fide use within the meaning of paragraph 4(c)(i) of the Policy.
There is no indication that the Respondent has been commonly known by the Domain Name, or that the Respondent is making a legitimate non-commercial or fair use of the Domain Name.
It is well-established by UDRP precedents that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent. In the current case, the Panel determines that contentions and all supporting evidence from the Complainants amount to a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
The Panel thus concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Panel finds it quite unlikely that the Respondent had no actual notice of the Complainants' CVS and MINUTECLINIC trademarks at the time of registering the Domain Name. The combination of "cvs" and "minuteclinic" has no specific meaning and it is improbable that the Respondent could independently come up with such a combination of two registered trademarks of the Complainants. The survey displayed on the website associated with the Domain Name further proves that the Respondent knows of the Complainants and their business. The Panel concludes that the Respondent was well aware of the CVS and MINUTECLINIC trademarks at the time of the registration and such awareness suggests opportunistic bad faith registration.
The Complainants have introduced sufficient evidence to demonstrate that the Respondent is using the Domain Name in bad faith, including using the Domain Name to provide a "Visitor Survey" that requested the Complainants' consumers to rate their experience at CVS retail stores, and using the Domain Name to redirect Internet users to websites operated by potential competitors of the Complainants . See TPI Holdings, Inc. v. Private Registration, WhoisGuardService.com, WIPO Case No. D2014-1544; The Coca-Cola Company v. Andrew Corr, WIPO Case No. D2012-0368. The Panel holds that the Respondent, by using the Domain Name, is trying to profit from the diversion of Internet users by confusion between the Domain Name and the Complainants. The Respondent's purpose of registering the Domain Name is to trade on the fame of the Complainants and their CVS and MINUTECLINIC trademarks, in order to attract, for commercial gain, Internet users to the corresponding website under the Domain Name, by creating a likelihood of confusion with the Complainants and their trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of a product or service on the Respondent's website.
Furthermore, as evidenced by a number of UDRP decisions, the Respondent has engaged in a pattern of bad faith use and registration of domain names containing well-known third party trademarks, which is indicative of bad faith under the Policy.
Based on the above facts and reasons, the Panel finally concludes that the Respondent registered and is using the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <cvsminuteclinic.com>, be transferred to the Complainants.
Date: April 24, 2015