WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CVS Pharmacy, Inc. v. Linyanxiao

Case No. D2015-1839

1. The Parties

The Complainant is CVS Pharmacy, Inc. of Woonsocket, Rhode Island, United States of America ("US"), represented by Partridge Snow & Hahn LLP, US.

The Respondent is Linyanxiao of Guangzhou, Guangdong, China.

2. The Domain Names and Registrar

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 14, 2015. On October 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 16, 2015, 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.

On October 19, 2015, the Center transmitted an email to the Parties in English and Chinese regarding the language of the proceeding. On October 19, 2015, the Complainant submitted its confirmation that English be the language of the proceeding. The Respondent did not submit any comments on the language of the proceeding within the specified due date.

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 in English and Chinese, and the proceeding commenced on October 29, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 19, 2015.

The Center appointed Douglas Clark as the sole panelist in this matter on November 28, 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

The Complainant is an American corporation which runs retail drug stores and an online retail website "cvs.com". It is the owner of the trademark CVS, CVS/PHARMACY and CVS HEALTH registered in the US. CVS and CVS/PHARMACY are both also registered in China. It is also the registrant of the domain names <cvs.com> and <cvshealth.com>.

The disputed domain names were all registered on September 24, 2014.

The Respondent is an individual based in China.

5. Parties' Contentions

A. Complainant

Identical or confusingly similar

The Complainant argues that the disputed domain names <cvsheal.com>, <cvshealthcareers.com>, <cvshealthclinic.com>, <cvshealthpharmacy.com>, <cvshealthrewards.com>, <cvshealths.com> and <mycvshealth.com> are made entirely up of the registered trademarks CVS, CVS PHARMACY and/or CVS HEALTH with the addition of generic words and the generic Top-Level Domain ("gTLD") ".com". They are therefore confusingly similar to the Complainant's registered trademarks CVS, CVS PHARMACY and/or CVS HEALTH.

No rights or legitimate interests

The Complainant submits that the Respondent has not been known by the disputed domain names and the Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for CVS or similar marks. The Respondent is operating pay for click sites under the disputed domain names, this however, does not establish rights or legitimate interests.

Registered and used in bad faith

The Complainant submits that there is no doubt that before registration of the disputed domain names the Respondent knew of the Complainant's rights in the CVS, CVS/PHARMACY and CVS HEALTH trademarks and registered the disputed domain names to attract business to its website. Further, the Complainant alleges that the Respondent registered the disputed domain names to prevent the Complainant from reflecting the names CVS and CVS HEALTH in corresponding domain names and that the Respondent had engaged in a pattern of such conduct. As such, the Complainant alleged registration and use of the disputed domain names were in bad faith.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the Registration Agreement is in Chinese. Paragraph 11(a) of the Rules provides that:

"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."

The Complainant requested the language of the proceeding to be English on grounds that included that the websites under the disputed domain names were written in English or in English and Chinese. The Complainant submitted that this showed the Respondent could understand English and it would be costly and inconvenient to translate the Complaint.

The Center made a preliminary determination to:

1) accept the Complaint as filed in English;

2) accept a Response in either English or Chinese;

3) appoint a Panel familiar with both languages mentioned above, if available.

The final determination of the language of the proceeding lies with this Panel. The fact that the website under the disputed domain names are written in English is a relevant factor. The Respondent is seeking to attract business in English.

The Respondent did not respond to the Center's preliminary determination. This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent's failure to respond to a preliminary determination by the Center as to the language of the proceeding "should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint".

The websites under the disputed domain names were written in English or in English and Chinese. Further, as set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delay in this matter.

These factors lead the Panel to determine to follow the Center's preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English.

6.2. Substantive Issues

A. Identical or Confusingly Similar

The disputed domain names <cvsheal.com>, <cvshealthcareers.com>, <cvshealthclinic.com>, <cvshealthpharmacy.com>, <cvshealthrewards.com>, <cvshealths.com> and <mycvshealth.com> are made entirely up of the registered trademarks CVS and CVS HEALTH with the addition of generic words and the generic Top-Level Domain ("gTLD") ".com". They are therefore confusingly similar to the Complainant's registered trademarks CVS and CVS HEALTH.

The first part of paragraph 4(a) of the Policy is therefore satisfied.

B. Rights or Legitimate Interests

The Respondent has not responded to the Complaint to assert any rights or legitimate interests. Paragraph 2.1 of the WIPO Overview of WIPO Panel views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") provides:

"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP."

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.

The second part of paragraph 4(a) of the Policy is therefore satisfied.

C. Registered and Used in Bad Faith

The Panel has no hesitation in finding that the disputed domain names were registered in bad faith and are being used in bad faith.

This case falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:

"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

The evidence filed by the Complainant shows that the websites under the disputed domain names were clearly being used to generate pay-per-click revenue.

Moreover, the Panel notes that the Respondent registered seven domain names incorporating the trademark CVS on the same day. This indicates a pattern of registering marks to stop a trademark owner from reflecting their name in a domain name. There can be no doubt that the disputed domain names were registered and are being used in bad faith.

The third part of the paragraph 4(a) of the Policy is therefore satisfied.

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 names <cvsheal.com>, <cvshealthcareers.com>, <cvshealthclinic.com>, <cvshealthpharmacy.com>, <cvshealthrewards.com>, <cvshealths.com> and <mycvshealth.com> be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: December 13, 2015