WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CVS Pharmacy, Inc. v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Domain Admin, Domain Privacy Guard Sociedad Anónima Ltd
Case No. D2019-1739
1. The Parties
The Complainant is CVS Pharmacy, Inc. (hereinafter called “CVS”), United States of America (“USA” or “United States”), represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States / Domain Admin, Domain Privacy Guard Sociedad Anónima Ltd, Panama.
2. The Domain Name and Registrar
The disputed domain name <myhrcvs.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2019. On July 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 24, 2019, 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 July 25, 2019 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 amendment to the Complaint on July 26, 2019.
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” 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 31, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 20, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 21, 2019.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on August 28, 2019. 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
According to the Complainant, CVS, as can be seen from Annex 4 to the Complaint, is the principal operating company of CVS Health Corporation (“CVS Health”), a publicly traded corporation with in 2018 annual revenue of USD 194.6 billion. A copy of its 2018 annual report is exhibited as Annex 5.
CVS is a direct, wholly owned subsidiary of CVS Health and holds many assets directly, including most of the relevant intellectual property interests, including the trade mark CVS and domain names containing the mark CVS. For the purposes of this decision CVS and CVS Health are referred to interchangeably as the Complainant.
The Complainant is the premier health innovation company in the USA, with more than 9,900 retail locations, approximately 1,100 walk-in clinics, a leading benefits manager with approximately 94 million plan members, a dedicated senior pharmacy care business serving more than 1 million patients per year, expanding speciality pharmacy services and a leading stand-alone Medicare Part D prescription drug plan. The Complainant also serves an estimated 38 million customers through traditional, voluntary and
consumer-directed health insurance products and related services, including rapidly expanding Medicare Advantage offerings.
More detailed information about the Complainant is available on its websites at “www.cvs.com” and “www.cvshealth.com”.
The Complainant is the registrant of and uses the domain names <cvs.com> (created January 30,1996) and <cvshealth.com> (created April 15, 2005). Copies of the relevant WhoIs printouts are set out at Annex 7.
The Complainant is the owner of at least 520 trade mark registrations worldwide consisting of or containing “CVS”. A schedule of these is attached at Annex 9. These include US registrations No. 919,941 registered on September 7, 1971, No. 1,698,636 registered on July 7,1992, and No. 1,904,058 registered on July 11,1995, all for the mark CVS. Print-outs from the USPTO database are set out at Annex 10.
The Complainant expressly refers to a number of previous UDRP panel decisions which have found that the Complainant has rights in and to the CVS trade mark.
The Complainant exhibits at Annex 1 a printout of the disputed domain name showing that it was registered by the Respondent on May 26, 2011.
The Complainant also exhibits at Annex 8 evidence that the Respondent is using the disputed domain name in connection with a monetized parking page that contains pay-per-click links for goods and services related to those associated with the Complainant’s CVS trade mark including links labelled “Prescription Cost” and “Prescription Drug Prices”.
In the absence of a Response and evidence to the contrary the Panel finds the evidence adduced by the Complainant to be true and proceeds to determine the Complainant on that basis.
5. Parties’ Contentions
The Complainant submits:
i. The disputed domain name is confusingly similar to the trade mark CVS in which the Complainant has rights.
ii. The Respondent has no rights or legitimate interests in respect of the domain name. The Respondent has not been granted rights by the Complainant. The Respondent has failed to show a bona fide offering of goods or services. The Respondent has never been commonly known by the disputed domain name.
iii. The disputed domain name was registered and used in bad faith by the Respondent. The Respondent was aware of the Complainant’s rights when registering the disputed domain name. The Respondent’s use of the domain name in connection with a monetized parking page is evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
As set out in section 4 above the Panel finds that the Complainant has registered trade mark rights in the mark CVS which pre-date registration of the disputed domain name.
The disputed domain name <myhrcvs.com> contains the mark CVS in its entirety. The domain name additionally consists of the word “my” and the letters “hr”.
In respect of “my” the Complainant submits that this “additional word” is irrelevant and does nothing to alleviate confusing similarity. It relies upon earlier UDRP panel decisions including Delta Air Lines Inc v myself, WIPO Case No. D2013-0752, which have found that the addition of “my” to a complainant’s trade mark does nothing to diminish confusing similarity. It also relies upon TTS Tooltechnic Systems AG & Co KG v LAWRENCE RAY, THIS DOMAIN IS FOR SALE, WIPO Case No. D2019-0588, in which it was accepted that the term “my” is a common marketing supplement in ecommerce. This Panel follows these authorities and finds that the use of “my” is no more than a descriptive term which does not diminish the confusing similarity between the disputed domain name and the Complainant’s CVS mark.
The Complainant submits that the use of the letters “hr” is an abbreviation for “human resources”. It relies upon earlier UDRP panel decisions to support this submission including Wim Bosman Holding BV v Ipower, Inc., WIPO Case No. D2014-0556, where it was held that the use of the prefix “hr” conveyed the idea that the domain name emanated from the Complainant’s HR department. The Panel accepts this reasoning and finds that the use of “hr” within the disputed domain name refers to human resources and that the disputed domain name emanates from the CVS human resources department.
The Panel therefore finds, in the absence of a Response, that the disputed domain name is identical or confusingly similar to the trade mark CVS in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel accepts the Complainant’s evidence that it has never assigned, granted, licensed, sold, transferred or in any way authorized to use the CVS trade mark. There is no evidence of any commercial relationship between the Complainant and the Respondent.
The Complainant relies upon the evidence set out in Annex 8 that the Respondent includes commercial links with the Complainant on its website which do not constitute a bona fide offering of goods or services. It submits that as a consequence the Respondent cannot show rights or interests within paragraph 4 (c)(i) of the Policy. The Panel accepts this submission in the absence of contrary evidence.
The Panel also finds on the evidence that the Respondent has never been commonly known by the disputed domain name and has not acquired rights in the domain name even though the “overall impression” of the disputed domain name is one of being connected to the trade mark of the Complainant.
In the absence of a Response and contrary evidence the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name within paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant submits that on the evidence the mark CVS is well known both in the USA and worldwide given that it is protected by at least 520 registrations worldwide. In particular it relies upon previous UDRP panel decisions which have found that the mark is “famous and/or widely known”. The consequence of this is that the mere registration of a domain name identical or confusingly similar to a famous or widely-known trade mark can create a presumption of bad faith. Given the global reach and popularity of the Complainant’s services under the trade mark CVS as well as the similarity between the parties’ domain names and the use of the domain name means that it is “inconceivable that the Respondent chose to register the disputed domain name without knowledge of the Complainant’s activities and trade mark rights”. In the absence of evidence to the contrary the Panel accepts this submission.
The Panel also takes into account the evidence, set out in Annex 8 to the Complaint, of the use of the disputed domain name in connection with the monetized parking page. In the Panel’s view this establishes that the Respondent without consent capitalized upon the Complainant’s trading goodwill in the mark CVS.
The Panel therefore finds that the disputed domain name was registered and used 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 disputed domain name <myhrcvs.com> be transferred to the Complainant.
Clive Duncan Thorne
Date: September 9, 2019