WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CVS Pharmacy, Inc. v. Bunty bhai
Case No. D2019-1742
1. The Parties
The Complainant is CVS Pharmacy, Inc., (hereinafter called “CVS”) United States of America (“United States” or “USA”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Bunty bhai, India.
2. The Domain Name and Registrar
The disputed domain name <my-cvs-hr.info> is registered with GoDaddy.com, LLC (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 confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 22, 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 members, a dedicated senior pharmacy care business serving more than 1 million patients per year, an expanding specialty 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 in at least 27 jurisdictions 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 August 22, 2018.
The Complainant exhibits at Annex 8 evidence that the Respondent is using the disputed domain name in connection with a web page that purports to provide information about the Complainant’s own website but instead exists solely to provide “sponsored searches” (advertisements) including for goods and services related to those associated with the Complainant’s trade mark CVS such as advertisements for “medical insurance coverage” and “rx prescription”.
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 identical or 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 disputed 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. The use of the disputed domain name in connection with advertisements for third party websites is not a legitimate use.
iii. The disputed domain name was registered and used in bad faith by the Respondent. The Respondent was aware of the Complainant’s trade mark rights when registering the disputed domain name. The Respondent’s use of the domain name for advertisements for goods and services associated with the mark CVS is also 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 <my-cvs-hr.info> contains the mark CVS in its entirety. The domain name additionally consists of the word “my”, the letters “hr” and the generic Top-Level Domain “gTLD” “.info”.
In respect of “my” the Complainant submits that this “additional word” is irrelevant and does nothing to alleviate confusing similarity. It relies upon earlier 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 panel decisions to support this submission including Wim Bosman Holding B.V. 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 Complainant also submits that the use of the gTLD “.info” is a standard registration requirement and as such should be disregarded under the first element confusing similarity test. It relies upon WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1. The Panel agrees with that submission.
In addition, the Complainant submits that the two hyphens in the disputed domain name are irrelevant for the purposes of the Policy because the presence or absence of punctuation marks cannot on their own avoid a finding of confusing similarity. This is well established in earlier UDRP panel decisions including those cited by the Complainant, which this Panel follows, in finding that the two hyphens should not be taken into account in finding that the disputed domain name is confusingly similar to the mark CVS.
The Panel therefore finds, in the absence of a Response, that the disputed domain name is 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 the Respondent 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 by including “sponsored searches” or advertisements for third-party websites on the website associated with the disputed domain name, including links for goods and services competitive with the Complainant such as links labelled “medical insurance coverage” and “rx prescription”, the Respondent is not exercising a bona fide offering of goods or services under the Policy and therefore cannot demonstrate rights or legitimate interests under 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 disputed domain name even though the “overall impression” of the disputed domain name is one of being connected to the trade mark of the Complainant. The Panel takes into account that the Complainant owns 520 trade mark registrations for CVS and which it has been using for 55 years, many years before registration of the disputed domain name in 2018.
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 and was first used 55 years ago. 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 (as put by the Complainant) 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 “sponsored searches” or advertisements for goods or services associated with the Complainant trading using the trade mark CVS. This is clearly intended to capitalize on the likelihood of confusion with the Complainant’s mark CVS. It is well-established that such use constitutes bad faith within paragraph 4(b)(iv) of the Policy.
The Panel therefore finds in the absence of a Response or contrary evidence that the disputed domain name was registered and is using 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 <my-cvs-hr.info> be transferred to the Complainant.
Clive Duncan Thorne
Date: September 10, 2019