WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CVS Pharmacy, Inc. (“CVS”) v. Whois Privacy, Private by Design, LLC / Rosie White

Case No. D2020-1928

1. The Parties

The Complainant is CVS Pharmacy, Inc. (“CVS”), United States of America (“United States”), represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, United States.

The Respondent is Whois Privacy, Private by Design, LLC, United States / Rosie White, India.

2. The Domain Name and Registrar

The disputed domain name <cvscharityclassic.com> is registered with Porkbun LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2020. On July 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 25, 2020, 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 28, 2020 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 28, 2020.

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 August 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 31, 2020. On August 30, 2020, the Respondent sent an email communication to the Center regarding possible settlement. The Respondent did not submit a formal response. On September 3, 2020, the Complainant sent an email communication to the Center informing that it wishes to proceed with the case. Accordingly, the Center notified the parties that it would proceed to panel appointment on September 8, 2020.

The Center appointed Daniel Peña as the sole panelist in this matter on September 21, 2020. 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 Complainant is the principal operating company of CVS Health Corporation (“CVS Health”), a publicly traded corporation (NYSE: CVS) with annual revenue in 2019 of USD 256.8 billion.

The Complainant is a direct, wholly owned subsidiary of CVS Health and holds many assets directly, including most of the relevant intellectual property interests, including the CVS Trademark (as defined below) and domain names containing the CVS Trademark.

The Complainant has approximately 300,000 workers in more than 9,900 retail locations and approximately 1,100 walk-in medical clinics in 49 states, the District of Columbia and Puerto Rico serving 4.5 million customers daily.

The Complainant is the owner of at least 520 trademark registrations in at least 27 countries or jurisdictions worldwide for marks that consist of or contain the term “CVS.”

The Complainant’s trademarks registrations for CVS (the “CVS Trademark”) include the following in the United States (among many others):

- Reg. No. 919,941 for CVS (first used May 9, 1963; registered September 7, 1971)
- Reg. No. 1,698,636 for CVS (first used 1974; registered July 7, 1992)
- Reg. No. 1,904,058 for CVS (first used April 28, 1992; registered July 11, 1995)

The Complainant uses the CVS Trademark in connection with a golf tournament known as the “CVS Health Charity Classic”, one of Rhode Island’s largest charitable event series, including a golf tournament featuring some of the world’s top professional golfers and a two-day food festival highlighting local restaurants, breweries, and vineyards. Since its inception in 1999, the “CVS Health Charity Classic” has donated more than USD 23 million for Southern New England nonprofit organizations that provide vital funding to a range of programs serving children and families. In connection with the “CVS Health Charity Classic”, the Complainant is the registrant of the domain name <cvshealthcharityclassic.com>, which was created on March 12, 2015.

The disputed domain name was registered on July 10, 2020. The Respondent redirects the disputed domain name to a website called “Return Policy Pro” (the “Website”) that includes blog-like content about return policies at various stores, which website contains numerous advertisements for various products and services as well as advertisements under the label of “sponsored searches”.

The Complainant is the registrant of and uses the domain names <cvs.com> (created January 30, 1996) and <cvshealth.com> (created May 9, 2012).

5. Parties’ Contentions

A. Complainant

The disputed domain name contains the CVS Trademark in its entirety. Therefore, the addition of the terms “charity” and “classic” in the disputed domain name does not prevent a finding that it is confusingly similar to the CVS Trademark.

Additionally, because the CVS Trademark appears at the beginning of the disputed domain name, “the dominant portion” of the disputed domain name contains the CVS Trademark and the addition of the words “charity” and “classic” are insufficient “to create a distinct domain name capable of overcoming a proper claim of confusingly similar”.

Accordingly, the disputed domain name is identical or confusingly similar to the CVS Trademark.

The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the CVS Trademark in any manner. “Th[is] fact, on its own, can be sufficient to prove the second criterion [of the Policy].”

The Respondent’s inclusion of blog-like content on the website associated with the disputed domain name is nothing more than a pretext for serving ads, and this type of website has been referred to as a “splog” – that is, “[a] spam blog… which the author uses to promote affiliated websites, to increase the search engine rankings of associated sites or to simply sell links/ads”.

By using the disputed domain name in this manner, the Respondent has failed to create a bona fide offering of goods or services under the Policy – and, therefore, the Respondent cannot demonstrate rights or legitimate interests under paragraph 4(c)(i) of the Policy.

To the Complainant’s knowledge, the Respondent has never been commonly known by the disputed domain name and has never acquired any trademark or service mark rights in the disputed domain name. Therefore, the Respondent cannot establish rights or legitimate interests pursuant to paragraph 4(c)(ii) of the Policy. The WhoIs record identifies the registrant of the disputed domain name as “Whois Privacy / Private by Design, LLC” – not as “CVS” or “CVS Charity Classic” or anything similar thereto. “This fact, combined with the lack of evidence in the record to suggest otherwise, allows the Panel to rule that the Respondent is not commonly known by the disputed domain name or any variation thereof pursuant to Policy, paragraph 4(c)(ii).”

In addition, given the Complainant’s use of the CVS Trademark for 57 years and the Complainant’s 520 trademark registrations for the CVS Trademark (Annex 10 and Annex 11 to the Complaint), it is practically impossible that the Respondent is commonly known by this trademark. See Six Continents Hotels, Inc. v. Trasporto di Networ and Pro Intel, WIPO Case No. D2004-0246 (“given the Complainant’s established use of its… marks, it is unlikely that the Respondents are commonly known by any of these marks”).

The Respondent’s creation of a “splog” on the website using the disputed domain name “provides strong prima facie evidence of a bad faith attempt by the Respondent to create the false impression that the Respondent’s website[s] [are] somehow associated with the Complainant[]” – and, therefore, the Respondent cannot establish any rights or legitimate interests. By using the disputed domain names in connection with websites that provide advertising or information about services competitive with the Complainant, the Respondent cannot establish rights or legitimate interests pursuant to paragraph 4(c)(iii) of the Policy.

Accordingly, the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The disputed domain name should be considered as having been registered and used in bad faith by the Respondent.

“[T]he mere registration of a domain name that is identical or confusingly similar… to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.1.4. The CVS Trademark is famous and/or widely known, as previous UDRP panels have said. Specifically, a previous panel said the CVS Trademark “is a well-known retail brand in the United States”, CVS Pharmacy, Inc. v. Registration Private, Domains By Proxy, LLC / CVS Health, WIPO Case No. D2015-1876, and, in fact, the CVS Trademark is well known worldwide, given that it is protected by at least 520 trademark registrations in more than 27 countries or jurisdictions worldwide, and the Complainant had net revenue of USD 256.8 billion in 2018.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions.

On September 22, 2020, the Respondent sent an email indicating in general terms as follows: “Sorry we deleted the domain now its not with us. We dont want any kind of disputes and also this domain Thanks.”

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Considering these requirements, the Panel rules as follows:

A. Identical or Confusingly Similar

The Panel holds that the disputed domain name is confusingly similar to the Complainant’s trademarks. The Respondent’s incorporation of the Complainant’s trademark in full in the disputed domain name is sufficient to establish that the disputed domain name is confusingly similar to the Complainant’s marks.

The addition of other terms (whether descriptive, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element. The nature of such terms may however bear on assessment of the second and third elements. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). This Panel finds, similarly to other UDRP panels, that the addition of the generic Top-Level Domain (“gTLD”) “.com” to the disputed domain name is generally disregarded for purposes of the first element under the Policy (see Carlsberg A/S v. Xu Guo Xing, WIPO Case No. D2017-0301; Philip Morris USA Inc. v. Shimei Wang, WIPO Case No. D2016‑2517; Livelle v. Martijn Noordermer, WIPO Case No. D2016-2524; Virgin Enterprises Limited v. Zhuhai Yingxun Keji Limited / John Riley, WIPO Case No. D2018-0197).

The Panel is satisfied that the disputed domain name is confusingly similar to the Complainant’s mark and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant bears the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent will lead to this ground being set forth.

Refraining from submitting a formal Response, the Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that the Respondent has rights or legitimate interests in the disputed domain name.

The Panel will now examine the Complainant’s arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain name.

The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner.

The Respondent did not submit a formal Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

Furthermore, the Respondent’s email on September 22, 2020, strengthens the fact that it did not have a right over the disputed domain name by indicating “Sorry we deleted the domain now its not with us. We don’t want any kind of disputes and also this domain Thanks”.

The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith:

(i) the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct;

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

In the Panel’s view, a finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the disputed domain name. In this case, the widespread commercial recognition of the trademark CVS is such that the Respondent must have had knowledge of the Complainant’s trademark before registering the disputed domain name. The Panel also notes the similarity of the disputed domain name with the Complainant’s domain name <cvshealthcharityclassic.com>.

The Respondent appears to have chosen the disputed domain name in order to deliberately attract Internet users to the Website in the mistaken belief that it would be the website of the Complainant, or otherwise linked to or authorized by the Complainant. That impression is only reinforced by the content of the Website whereby reference is made to the provision “sponsored searches” (advertisements) for goods and services related to those associated with Complainant’s CVS Trademark.

As such, the Panel is satisfied that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Website or of the products on the Website. Under paragraph 4(b)(iv) of the Policy, this circumstance shall be evidence of the registration and use of a domain name in bad faith.

The Panel concludes that the disputed domain name was registered and is being used in bad faith.

7. Decision

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 <cvscharityclassic.com> be transferred to the Complainant.

Daniel Peña
Sole Panelist
Date: October 2, 2020