CVS Pharmacy, Inc. v. James Choete
Claim Number: FA0805001191104
Complainant is CVS Pharmacy, Inc., (“Complainant”) represented by John E. Ottaviani of Edwards
Angell Palmer & Dodge, LLP, Rhode
Island, USA. Respondent is James Choete, (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cvsdrugstore.us>, registered with Estdomains, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically May 15, 2008; the Forum received a hard copy of the Complaint May 16, 2008.
On May 16, 2008, Estdomains, Inc. confirmed by e-mail to the Forum that the domain name <cvsdrugstore.us> is registered with Estdomains, Inc. and that Respondent is the current registrant of the name. Estdomains, Inc. verified that Respondent is bound by the Estdomains, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On May 29, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 18, 2008, by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
A timely Response was received and determined to be complete June 16, 2008.
On June 19, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following allegations in this proceeding:
1. Respondent registered a domain name <cvsdrugstore.us> that is identical to or confusingly similar to a mark in which Complainant has exclusive rights.
2. Respondent has no rights to or legitimate interests in the domain name that contains in its entirety Complainant’s protected mark.
3. Respondent registered and used the domain name in bad faith.
B. Respondent makes the following points in response:
1. The individual identified as Respondent urges that Complainant served the wrong person at the wrong address and that he is the victim of identity theft.
2. This individual does not assert any rights to or interests in the disputed domain name.
3. This individual sets out that the alleged Respondent is named “Choete” and that his name is “Choate;” that the alleged Respondent lives at house number “1505,” while he lives at “1604” on the same street. That the alleged Respondent has a similar telephone number save that Respondent's listed phone number ends in “9579” while he has a number that ends in “9879.”
4. This individual claims that someone else “may be practicing a fraud on CVS Pharmacy, Inc. and has attempted to steal my identity incident to said fraud.”
Complainant established rights in the CVS mark through registration with the United States Patent and Trademark Office from the date of registration in 1971.
Respondent concedes that he has no rights to or interests in the disputed domain name.
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 Complainant to 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Identical and/or Confusingly Similar
Complainant established rights in the CVS mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 919,941 issued Sept. 7, 1971). The Panel finds that Complainant’s valid registration of the CVS mark establishes rights under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
The disputed domain name is confusingly similar to Complainant’s CVS mark. The <cvsdrugstore.us> domain name contains the mark in its entirety with the addition of the word “drugstore” and the country-code top-level domain “.us.” Complainant alleges that the addition of the term “drugstore” is not sufficient because the term is related to Complainant’s business. Additionally, based on the fact that all domain names require a top-level domain, the Panel finds that the addition of “.us” is inapplicable. The Panel finds that these additions are insufficient to differentiate the disputed domain name from Complainant’s mark based on Policy ¶ 4(a)(i). See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).
Further, Respondent makes no contentions under Policy ¶ 4(a)(i), other than to deny that Respondent owns the disputed domain name.
The Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
Complainant must make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Once Complainant , and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Respondent does not hold a trademark registration reflecting the <cvsdrugstore.us> domain name. Respondent’s lack of trademark rights in the disputed domain name fails to satisfy Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
The Panel finds no evidence in the record or in the WHOIS registration that Respondent is commonly known by the disputed domain name. Respondent is not commonly known by the <cvsdrugstore.us> domain name under Policy ¶ 4(c)(iii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting UDRP ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Complainant alleges that Respondent used the disputed domain name to pass himself off as Complainant. Such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under [UDRP] ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Further, Respondent makes no contention that he has rights under Policy ¶ 4(a)(ii), and, in fact, denies that he owns the disputed domain name.
The Panel finds that Complainant satisfied usTLD Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant alleges that Respondent has used the <cvsdrugstore.us> domain name to commercially gain by passing himself off as Complainant, which, if supported by the evidence, supports findings of bad faith registration and use under Policy ¶ 4(b)(iii). See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
Complainant also claims that
Respondent’s disputed domain name is likely to confuse Internet users seeking
Complainant and misleading such users into thinking that Complainant is the
source, sponsor, affiliate or endorser of Respondent’s website as set out under
Policy ¶ 4(b)(iv). Presumably, Respondent acts for his
own commercial gain. See Bank of Am. Corp. v.
The Panel notes that although the individual, who contends that he was served in lieu of Respondent, also asserts that he is not the registrant of the disputed domain name and that he bears Complainant no ill-will and would not have willingly or intentionally infringed upon Complainant’s rights, he presented the Panel with no evidence to support his statements in the Response.
Accordingly, the Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cvsdrugstore.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Dated: July 3, 2008.
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