Express Scripts Strategic Development, Inc. v. Oumaimaa Boutriouya
Claim Number: FA1908001858238
Complainant is Express Scripts Strategic Development, Inc. (“Complainant”), represented by Caroline Chicoine of HUSCH BLACKWELL LLP, Missouri, USA. Respondent is Oumaimaa Boutriouya (“Respondent”), Morocco.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <express-scripts.pw> registered with NameCheap, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 20, 2019; the Forum received payment on August 20, 2019.
On August 26, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <express-scripts.pw> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 29, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 18, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@express-scripts.pw. Also on August 29, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 20, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Express Scripts Strategic Development, Inc., provides pharmacy benefit management services. Complainant has rights in the trademark EXPRESS SCRIPTS based upon the registration with the United States Patent Office (“USPTO”) dating back to 1973. It also owns the domain name <express-scripts.com> which it uses for its company website. Respondent’s <express-scripts.pw>, registered on July 8, 2019, is confusingly similar to Complainant’s mark as Respondent incorporates the entire EXPRESS SCRIPTS mark, merely adding a hyphen and the “.pw” top-level domain (“TLD”).
Respondent does not have rights or legitimate interests in the <express-scripts.pw> domain name. Respondent is not licensed or authorized to use Complainant’s EXPRESS SCRIPTS mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the <express-scripts.pw> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent has copied Complainant’s website and created email exchange records for the disputed domain name. As such, Respondent uses the disputed domain name to impersonate Complainant in furtherance of a fraudulent phishing scheme.
Respondent registered and uses the disputed domain name in bad faith. Respondent attempts to disrupt Complainant’s business by impersonating Complainant. Additionally, Respondent fails to make a legitimate noncommercial use of the disputed domain name. Furthermore, Respondent had actual knowledge of Complainant’s mark when it registered the <express-scripts.pw> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the EXPRESS SCRIPTS mark based upon its registration with the USPTO. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i). Complainant provides copies of its’ USPTO registrations for the EXPRESS SCRIPTS mark[i]. Therefore, the Panel finds that Complainant has rights in the EXPRESS SCRIPTS mark per Policy ¶ 4(a)(i).
Next, Complainant asserts that the <express-scripts.pw> domain name is confusingly similar to the EXPRESS SCRIPTS mark as Respondent incorporates the mark in its entirety and adds a hyphen and a “.pw” TLD. Adding a hyphen and a TLD may not sufficiently mitigate any confusing similarity between a disputed domain name and a mark under Policy ¶ 4(a)(i). See Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark); see also Deutsche Lufthansa AG v. Milen Radumilo, FA 1764056 (Forum Jan. 19, 2018) (“No domain name may contain ampersands because ampersands are also prohibited characters in domain names. Therefore, the omission of ampersands is disregarded under a Policy ¶ 4(a)(i) analysis. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). The Panel agrees with Complainant and finds that the <express-scripts.pw> domain name is confusingly similar to Complainant’s EXPRESS SCRIPTS mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in that effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in <express-scripts.pw> domain name. Specifically, Complainant states that Respondent is not licensed or authorized to use the EXPRESS SCRIPTS mark and is not commonly known by the disputed domain name. When considering these issues, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record for the Disputed Domain identifies Respondent as “Oumaimaa Boutriouya” and there is no other evidence to suggest that Respondent is known otherwise or that it was authorized to use the EXPRESS SCRIPTS mark. The Panel therefore finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Moreover, Complainant argues that Respondent is not using the <express-scripts.pw> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the disputed domain name to replicate Complainant’s own website. Using a disputed domain name to replicate a complainant’s website in an attempt to pass oneself off as a complainant does constitute as a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Complainant provides screenshots of the disputed domain name’s resolving website which displays the EXPRESS SCRIPTS mark, pictures from Complainant’s business, and mimics Complainant’s official <www.express-scripts.com> website in an attempt to confuse and mislead consumers. Therefore, the Panel finds that Respondent makes no bona fide offerings or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).
In addition, Complainant claims that Respondent attempts to impersonate Complainant as part of a fraudulent scheme. Use of an email address associated with the disputed domain name to pass oneself off as a complainant in furtherance of phishing is not indicative of rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”). Here, Complainant claims that Respondent configured mail exchange records “indicating an intention to send out emails associated with the Disputed Domain Name, presumably trying to dupe unwary consumers that the emails are originating from Complainant”. However, the Panel notes that Complainant provides no screenshot of the claimed email exchange record or other evidence to support this claim. As such, the Panel is unable to adequately consider it. Nevertheless, based on the content of Respondent’s website, the Panel does find that a preponderance of the evidence presented in this case indicates Respondent’s intention to pass itself off as Complainant. As the Respondent has submitted no Response or made any other submission in this case to refute Complainant’s assertions, the Panel finds that a prima facie case has been made and that Respondent’s use of the disputed domain name indicates that it lacks rights and legitimate interests therein per Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent registered the <express-scripts.pw> domain name with actual knowledge of Complainant’s rights in the EXPRESS SCRIPTS mark. Registering a domain name with knowledge of another’s rights therein may indicate bad faith under Policy ¶4(a)(iii), and can be established through the notoriety of the mark and a respondent’s use of it. See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA 1599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration). Here, Complainant claims that its mark is famous although the only evidence it provides to support this claim are printouts of a few pages from its own website. However, Complainant also provides screenshots of Respondent’s website and a side-by-side comparison with the legitimate <www.express-scripts.com> website to assert that Respondent used the domain name to impersonate Complainant – perhaps as part of a phishing scheme. Therefore, the Panel finds that Respondent must have registered the <express-scripts.pw> domain name with actual knowledge of Complainant’s EXPRESS SCRIPTS mark, thus demonstrating bad faith registration per Policy ¶4(a)(iii).
Complainant next argues that Respondent has registered and uses the <express-scripts.pw> domain name in bad faith. Complainant alleges that Respondent attempts to disrupt Complainant’s business. Specifically, Complainant argues that Respondent is attempting to impersonate Complainant, presumably for commercial gain. Use of a domain name to impersonate a complainant in furtherance of a fraudulent scheme may constitute bad faith pursuant to Policy ¶ 4(b)(iii) and/or (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”); see also Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). Further, use of a complainant’s copyrighted content on a respondent’s website may indicate bad faith. See HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG v. wangxiaonxiaowang, D2016-0805 (WIPO June 17, 2016) (“by copying the look and feel of the Complainants’ website, the Respondent is affirmatively creating the false impression that the website is controlled by or affiliated with the Complainants.”). Complainant provides screenshots of the disputed domain name’s resolving website which displays the EXPRESS SCRIPTS mark and pictures that appear to have been copied from Complainant’s own website, and which, overall, closely mimics Complainant’s official website. Complainant asserts that this has been done in an attempt to confuse and mislead consumers and Respondent has not participated in this case to refute this assertion. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <express-scripts.pw> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: September 24, 2019
[i] The Panel notes that the submitted registration certificate for Trademark Reg. No. 1,809,555 lists the Registrant as “Express Scripts, Inc.” Later registrations list the owner as Express Scripts Strategic Development, Inc. Although the Complainant does not submit into evidence a copy of the assignment agreement for the 1,809,555 Registration, the Panel has reviewed the assignment that was recorded with the USPTO and has confirmed that the current owner of the 1,809,555 Registration is, in fact, the Complainant named in this case, Express Scripts Strategic Development, Inc.
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