WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CVS Pharmacy, Inc. v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / best man
Case No. D2021-1404
1. The Parties
Complainant is CVS Pharmacy, Inc., United States of America (“United States”), represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, United States.
Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / best man, United States.
2. The Domain Name and Registrar
The disputed domain name <cvsonlinepharmacys.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2021. On May 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 6, 2021, 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 Complainant on May 7, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on May 7, 2021.
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 Respondent of the Complaint, and the proceedings commenced on May 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 30, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 6, 2021.
The Center appointed Scott R. Austin as the sole panelist in this matter on June 14, 2021. 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.
In an email on June 20, 2021, after the Complaint was filed and after the Center notified Respondent of its default, the Center received a submission from an unidentified person at an email address (“[...]@gmail.com”) associated with co-Respondent “best man” in the WhoIs details revealed by the involved Registrar for the disputed domain name. The email incorporated the following statement: “domain name has been shutdown already.”
The following day the Center received a further submission from Complainant in response to Respondent email. Complainant’s email attached a web page printout from the landing page of Respondent’s website accessed through the disputed domain name and provided the following statements: “Despite the email below [from Respondent on June 20, 2021], the disputed domain name has not been ‘shutdown’, as you can see from the attached printout captured after receiving the email below. Accordingly, on behalf of complainant, I request that you inform the panel upon appointment of this false statement, which is further evidence of bad faith.”
The admissibility of the unsolicited supplemental filings is addressed below.
4. Factual Background
Complainant states in its Complaint (as amended) and provides evidence in the respective annexes sufficient to support that Complainant CVS Pharmacy, Inc. is the principal operating company and wholly owned subsidiary of CVS Health Corporation (“CVS Health”), a publicly traded corporation (NYSE: CVS) with annual revenue in 2020 of USD 268.7 billion (collectively with CVS Pharmacy, Inc. “Complainant”) that provides retail drugs, beauty aids and sundry goods store services under trademarks that consist of or contain CVS or CVS PHARMACY (each a “CVS Mark” and collectively, the “CVS Marks”). Complainant ranks as number five on the “Fortune 500” list of America’s largest corporations, with 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.
Complainant is the owner of at least 520 trademark registrations in at least 27 countries or jurisdictions worldwide, including the United States, for marks that consist of or contain “CVS” or “CVS PHARMACY” including but not limited to, the following:
United States Trademark Registration No. 0,919,941, CVS, registered on September 7, 1971, for retail drugs, beauty aids and sundry goods store services in international class 35, and claiming a first use date of May 9, 1963.
United States Trademark Registration No. 1,698,636, CVS, registered on July 7, 1992, covering a range of goods in international classes 1, 3, 5, 8, 9, 10, 16, 21 and 25, including baby lotions, vitamin supplements, toothpaste, razors, thermometers and elastic bandages, and claiming a range of first use dates from 1972 to 1984.
United States Trademark Registration No. 2,048,916, CVS/PHARMACY, registered on April 1, 1997, for retail store services for prescription drugs, healthcare and beauty products in international class 42, and claiming a first use date of January 1, 1983
Complainant is the registrant of and uses the domain names, among others <cvspharmacy.com> (created December 11, 1995), <cvs.com> (created January 30, 1996) from which Complainant operates its official CVS website at “www.cvs.com” (“Official CVS Website”), offering detailed information about Complainant including its history and the goods and services provided under the CVS Marks.
The disputed domain name was registered on July 23, 2020, and resolves to a copycat website where Respondent displays not only the CVS Mark and CVS logo, but also photos of pharmacists and prescription drug products; and text that says, “Buy medications Online Without Prescription”, as shown in screenshots submitted as evidence in the Annexes attached to the Complaint.
On April 21, 2021, Complainant sent a demand letter to Respondent regarding the disputed domain name, to which Respondent did not reply.
5. Parties’ Contentions
Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the disputed domain name, namely, that the disputed domain name is identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
Respondent did not file a timely Response in reply to Complainant’s contentions. On June 20, 2021, the Center received a communication from an email address identical to the one identified by the Registrar as belonging to Respondent “best man”. The email incorporated the following statement: “domain name has been shutdown already.”
6. Discussion and Findings
There are no exceptional circumstances within paragraph 5(e) of the Rules to prevent this Panel from determining the present dispute based upon the Complaint (as amended to add the newly disclosed underlying registrant, “best man”, as a co-respondent in addition to the original Respondent, “Withheld for Privacy Purposes / Privacy service provided by Withheld for Privacy ehf”), notwithstanding the failure of any person to lodge a substantive formal Response in compliance with the Rules. Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
Where no substantive Response is filed, however, Complainant must still make out its case in all respects under paragraph 4(a) of the Policy. To succeed, Complainant must demonstrate that all 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 Complainant has rights; (ii) 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.
The Panel will address each of these requirements in turn.
The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.
A. Procedural Matters: Unsolicited Additional Submissions
Consideration of the Parties’ Unsolicited Supplemental Filings
The Panel has reviewed the Parties’ respective supplemental filings in this proceeding, along with the admissibility of such unsolicited additional filings in this proceeding. As for the email submission received from Respondent after the deadline for a Response had passed, and Complainant’s reply to it, paragraph 12 of the Rules provides that the Panel may request, in its sole discretion, further statements or documents from either of the Parties. There is no provision in the Rules, however, for a party to file an additional submission without leave of the Panel. This is because, under the expedited process provided under the Policy and Rules, each party is given one opportunity to put forward all the material on which it wishes to rely and is expected to do so. See, Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner WIPO Case No. D2001-1447.
Under the Rules, each Party is entitled as of right to submit only one single pleading. Paragraphs 10 and 12 of the Rules grant the Panel discretion to determine the admissibility of supplemental filings, including further statements or documents.
The Panel is of the view that while late, Respondent’s filing presented information relevant to the disposition of this case, and that Complainant’s supplemental pleading consists of a response to Respondent’s late email submission.
Disregarding for a moment the lateness of Respondent’s submission, the Panel notes that the content thereof raises exceptional circumstances, new developments, arguments or evidence not available to Complainant at the time of filing its Complaint (as is made clear from Complainant’s reaction set out above). The Panel also notes that these two submissions thereby raise competing versions of the facts and are in that respect germane to the credibility of Respondent’s claim, and if untrue, then germane to the issue of Respondent’s bad faith. Noting that the Panel would be fully within its discretion to disregard both submissions, since they arrived before the decision date they are exceptionally taken into account.
B. Identical or Confusingly Similar
Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has demonstrated its rights because it has shown that it is the holder of numerous valid and subsisting trademark registrations for its famous CVS Marks. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657; see also Aetna Inc., CVS Pharmacy, Inc. v. Chang Jiang Li, Li Chang Jiang, WIPO Case No. D2018-0795 (referring to “the reputation and fame” of the CVS Trademark).
With Complainant’s rights in the CVS Marks established, the remaining question under the first element of the Policy is whether the disputed domain name (disregarding the Top-Level Domain (“TLD”) “.com” in which the domain name is registered) is identical or confusingly similar to Complainant’s CVS Marks. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, sections 1.11.1 and 1.7.
Prior UDRP panels have held “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; see also CVS Pharmacy, Inc. v. WhoisGuard Protected / Andrey Molodavkin, WIPO Case No. D2009-1604(<cvspharmacyonline.org> found confusingly similar to CVS Marks): Facebook, Inc. v. Daniel Khrayzat, WIPO Case No. D2019-2813 (<facebookglobalpay.com> and <facebookglobalpayment.com> found confusingly similar to FACEBOOK mark).
The disputed domain name incorporates each of Complainant’s CVS Mark and CVSPHARMACY Mark in their entirety with the addition of the term “online” and thereby adds a term related to Complainant’s services under Complainant’s CVS Marks, as well as adding a trailing letter “s”. The added letter “s” does not significantly affect the appearance or pronunciation of the disputed domain name and could be easily overlooked or considered a “typo” by consumers. See Six Continents Hotels, Inc. v. WhoisSecure / Yung mon, WIPO Case No. D2018-2544 (“[t]he addition of the letter ‘s’… does not avoid confusing similarity between the disputed domain name and the Complainant’s trademark”).
Prior UDRP panels have found registering a domain name that adds a single letter to a complainant’s trademark to be within the conduct commonly referred to as “typosquatting”, prohibited under the Policy, “the practice of misspelling an element of the mark, has consistently been regarded as creating domain names confusingly similar to the relevant mark”. See, Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043 (<edmundss.com>, transferred). Based on the decisions cited above, this Panel finds that the added term “online” and added letter “s” does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s CVS Marks.
Complainant’s CVS Marks are recognizable as incorporated in their entirety into the disputed domain name and for that reason the Panel finds the disputed domain name confusingly similar to the CVS Marks in which Complainant has rights. Complainant has satisfied paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Under the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If a complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally, deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Respondent has not come forward to show any rights or legitimate interests in the disputed domain name under the Policy at paragraph 4(c).
Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name. First, it is clear from the record submitted that Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or use the CVS Marks in any manner.in a domain name or otherwise. Prior UDRP panels have found the fact that a respondent is not authorized to register or use a complainant’s mark, “on its own, can be sufficient to prove the second criterion [of the Policy]”. Six Continents Hotels, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0272.
Complainant has also shown that Respondent is not commonly known by the disputed domain name. The original Respondent listed in the WhoIs record submitted with the initial Complaint is “Withheld for Privacy Purposes / Privacy service provided by Withheld for Privacy ehf”, The Registrar disclosed the underlying registrant, “best man”, which Complainant amended its Complaint to include as a co-Respondent in addition to the original Respondent. Neither Respondent bears any resemblance to the disputed domain name whatsoever. Complainant also points out that given the evidence submitted, Complainant’s registration of the CVS Marks for almost 50 years and Complainant’s 520 trademark registrations in at least 27 jurisdictions worldwide it is practically impossible that Respondent is commonly known by the CVS Marks. Based on these facts combined with the lack of evidence in the record to suggest otherwise, allows this Panel to find that Respondent is not commonly known by the disputed domain name or any variation thereof pursuant to Policy paragraph 4(c)(ii). 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”).
It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to a complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that a complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See, Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857.
Most importantly, Complainant contends Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services because, as Complainant’s Annex evidence of web page printouts shows, the disputed domain name resolves to a website where Respondent is attempting to pass itself off as Complainant. The Panel notes that evidence submitted in the Annexes to the Complaint persuasively supports Complainant’s argument because it shows Respondent’s website prominently features the use of Complainant’s CVS Marks and stylized CVS logo in red, as well as texts, images of pharmacists and pharmaceutical products that suggest an affiliation with or sponsorship by Complainant. Based on these facts the Panel finds Respondent’s actions are clearly not legitimate and clearly are misleading and, therefore, Respondent cannot establish rights or legitimate interests pursuant to paragraph 4(c)(iii) of the Policy. See Six Continents Hotels v. “m on”, WIPO Case No. D2012-2525.
In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any arguments or evidence to rebut Complainant’s prima facie case. In fact, Respondent’s untimely filed email submission perpetrates fraud on the Panel. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the disputed domain name and Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Complainant first contends that Respondent registered the disputed domain name in bad faith because Respondent has created a domain name that is confusingly similar to Complainant’s famous CVS Marks, as found in section 6B above. Prior UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names incorporating the mark plus a descriptive term) to a widely known or famous trademark by an unaffiliated entity can by itself create a presumption of bad faith. See, WIPO Overview 3.0, section 3.1.4.
Prior UDRP panels have considered the CVS Marks to be famous and widely known. See e.g., Aetna Inc., CVS Pharmacy, Inc. v. Chang Jiang Li, Li Chang Jiang, WIPO Case No. D2018-0795 (“Given the reputation and fame of the [CVS] trademarks”), Aetna Inc. and CVS Pharmacy, Inc. v. James, WIPO Case No. D2018-0796 (CVS Marks “widely known in many countries.”).
Complainant further argues that given the CVS Marks are protected by at least 520 trademark registrations in at least 27 jurisdictions worldwide, the oldest of which was registered almost 50 years ago, as well as the disputed domain name’s similarity to Complainant’s own domain names <cvspharmacy.com> (created December 11, 1995), <cvs.com> (created January 30, 1996), and <cvshealthpharmacy.com> (created September 24, 2014) it is implausible to believe that Respondent did not have actual knowledge of Complainant’s famous CVS marks when it registered its confusingly similar domain name.
Prior UDRP panels have held that a respondent’s actual knowledge of a complainant’s mark may serve as a basis for finding bad faith registration. See OSRAM GmbH v. Azarenko Vladimir Alexeevich, Azarenko Group Ltd, WIPO Case No. D2016-1384 (finding bad faith where “Respondent must have been aware of the Complainant and its said trademark when it registered the disputed domain name” and “the Panel cannot conceive of any use that the Respondent could make of the disputed domain name that would not interfere with the Complainant’s long-established trademark rights”). Accordingly, the Panel finds that Respondent had actual knowledge of the CVS Marks when it registered the disputed domain name and such a showing is sufficient to establish bad faith registration of the disputed domain name.
Likewise, there is no doubt that Respondent was aware of Complainant at the time he registered the disputed domain name because Respondent has created a website dedicated to impersonating Complainant’s website and purporting to sell pharmaceutical products. Prior UDRP panels have found bad faith on this basis alone. See Canon Kabushiki Kaisha v. Price-Less Inkjet Cartridge Company, WIPO Case No. D2000-0878.
Further, as discussed in detail in section 6.C and shown in Complainant’s Annex evidence, Respondent’s website accessed at the disputed domain name includes Complainant’s CVS Logo; photos of pharmacists and prescription drug products; and text that says, “Buy medications Online Without Prescription” – the same services with which Complainant uses the CVS Marks. In the circumstances of this case, where Respondent registered the disputed domain name to engage in per se illegitimate activity, the Panel finds such a showing is sufficient to establish bad faith registration. See, WIPO Overview 3.0, section 3.1.4 (redirecting domain name to competitor’s website evidence of bad faith registration).
Bad faith use is also clear because Respondent’s website accessed through the disputed domain name has been created for the purposes of perpetrating fraud to confuse consumers to visit Respondent’s fake site to purchase Respondent’s competing pharmaceutical products by suggesting an affiliation with Complainant. The Panel finds bad faith use, therefore, because the substantial evidence in the record shows Respondent has been and is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s CVS Marks as to the source, sponsorship, affiliation, or endorsement of its misleading website in violation of paragraph 4(b)(iv) of the Policy. See Arla Foods amba v. Jucco Holdings, WIPO Case No. D2006-0409 (“registering a domain name and using it to redirect a user to a website which is used for the sale of competing services constitutes evidence of registering and using a trademark in bad faith”) see also Construction Skills Certification Scheme Limited v. Mara Figueira, WIPO Case No. D2010-0947(finding bad faith where Complainant submitted that “[t]he Respondent’s web site… shows the Complainant’s logo on each page”).
Additionally, as noted above and as shown in Annex evidence attached to the Complaint, Complainant sent a demand letter to Respondent on April 21, 2021, but Respondent did not reply by the deadline of April 28, 2021, or even by the filing date of the Complaint. Prior UDRP panels have held such failure to respond to a demand letter is additional evidence of bad faith. See e.g., Encyclopedia Britannica v. Zucarini, WIPO Case No. D2000-0330; RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242
Finally, the Panel notes that the only communication from Respondent in this case has been a fraudulent one. Contrary to Respondent’s June 20, 2021, email claiming “domain name has been shutdown already”, a review by the Panel of Complainant’s web page printout of Respondent’s copycat website accessed through the disputed domain name the following day proves Respondent’s statement false, showing the website remained fully operational. Willful false statements submitted to the Panel will be treated by the Panel as additional evidence of Respondent’s bad faith.
For these reasons, the Panel finds bad faith registration and use, and Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
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 <cvsonlinepharmacys.com> be transferred to Complainant.
Scott R. Austin
Date: July 1, 2021