national arbitration forum

 

DECISION

 

Medical Security Card Company, LLC v. Tanya Young

Claim Number: FA1405001559190

 

PARTIES

Complainant is Medical Security Card Company, LLC (“Complainant”), represented by Cameron E. Robinson of Quarles & Brady LLP, Illinois, USA.  Respondent is Tanya Young (“Respondent”), South Carolina, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <scriptsave.us>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 13, 2014; the National Arbitration Forum received payment on May 14, 2014.

 

On May 14, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <scriptsave.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On May 14, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 2014 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to POSTMASTER@ scriptsave.us. Also on May 14, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On June 9, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 to the usTLD Dispute Resolution Policy (“Rules”).  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant has used the SCRIPTSAVE mark since at least as early as April 30, 1998, in connection with Complainant’s discount pharmaceutical program. Complainant also owns the domain name <scriptsave.com>, where it operates a website offering information relating to Complainant’s discount pharmaceutical program. Complainant has rights in the SCRIPTSAVE mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,162,377 registered October 24, 2006). Respondent’s <scriptsave.us> domain name is identical to Complainant’s SCRIPTSAVE mark. Respondent merely adds the country-code top-level domain (“ccTLD”) “.us.”

 

Respondent has no rights or legitimate interests in the <scriptsave.us> domain name. Respondent has never been known as “Scriptsave” nor has Respondent ever been licensed or given permission to use Complainant’s mark. Respondent has no trade or service mark rights in the disputed domain name. The WHOIS information for the disputed domain name lists Respondent as “Tanya Young.” Respondent uses the <scriptsave.us> domain name as a portal to automatically direct Internet users to the website <caprxprogram.org>, which is a competitor of Complainant.

 

Respondent registered or is using the <scriptsave.us> domain name in bad faith. Respondent’s disputed domain name resolves to a website that offers nearly identical services to Complainant’s website, and allows Internet users the ability to print a pharmaceutical discount card, which is also the main feature on Complainant’s website. Respondent’s use of the disputed domain name shows that Respondent is attempting to attract Internet users for commercial gain to Respondent’s website by creating a likelihood of confusion with Complainant’s SCRIPTSAVE mark and Respondent’s disputed domain name. Respondent had knowledge of Complainant and Complainant’s rights in the SCRIPTSAVE mark based on the similarity between Respondent’s domain name and Complainant’s mark, as well as Respondent’s competing use of the disputed domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Medical Security Card Company, LLC, has used the SCRIPTSAVE mark since at least as early as April 30, 1998, in connection with Complainant’s discount pharmaceutical program. Complainant has rights in the SCRIPTSAVE mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,162,377 registered October 24, 2006).

 

Respondent, Tanya Young, registered the <scriptsave.us> domain name on September 29, 2012. Respondent’s disputed domain name resolves to a website that offers nearly identical services to Complainant’s website, and allows Internet users the ability to print a pharmaceutical discount card, which is also the main feature on Complainant’s website.

 

DISCUSSION

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 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.

 

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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Identical and/or Confusingly Similar

 

Complainant has rights in the SCRIPTSAVE mark under Policy ¶ 4(a)(i) through registrations with the USPTO. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006)(registration with the USPTO is sufficient to establish the complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).

 

Respondent’s <scriptsave.us> domain name is identical to Complainant’s SCRIPTSAVE mark under Policy ¶ 4(a)(i). Respondent merely adds the ccTLD “.us” to Complainant’s SCRIPTSAVE mark. See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (the addition of the country-code “.us” failed to add any distinguishing characteristic to the domain name, and thus the <tropar.us> domain name was identical to the complainant’s TROPAR mark).

 

Rights or Legitimate Interests

 

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), 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).

 

There is no evidence in the record indicating that Respondent owns any service marks or trademarks that reflect the <scriptsave.us> domain name. Therefore, the Panel finds that Respondent does not have rights or legitimate interests under to Policy ¶ 4(c)(i). See Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the 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)); see also  Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name).

 

Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under the Policy based on the WHOIS information and other evidence in the record). Respondent has never been known as “Scriptsave” nor has Respondent ever been licensed or given permission to use Complainant’s mark. The WHOIS information for the disputed domain name lists the registrant as “Tanya Young,” the same individual who is listed on the competitor’s website as “Regional Outreach Coordinator.”

  

Respondent uses the <scriptsave.us> domain name as a portal to automatically direct Internet users to the website <caprxprogram.org>, which is a competitor of Complainant’s. The heading of the resolving website reads, “Community Assistance Program Helping the uninsured and the underinsured in your neighborhood.” Respondent provides a link allowing Internet users to “Print my free CAP card.”  Complainant claims that a large part of its business includes the use of a printable insurance card. Complainant contends that Respondent uses the disputed domain name to compete with Complainant for commercial gain. See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003)(the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use). Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <scriptsave.us> domain name under Policy ¶ 4(c)(ii) or ¶ 4(c)(iv).

 

Registration or Use in Bad Faith

 

Complainant contends that Respondent registered or is using the <scriptsave.us> domain name in bad faith. Respondent’s disputed domain name resolves to a website that offers nearly identical services to Complainant’s website, and allows Internet users the ability to print a pharmaceutical discount card, which is also the main feature on Complainant’s website. Respondent’s use of a confusingly similar domain name to resolve to a competing website, thereby disrupting complainant’s business, is evidence of bad faith. Therefore, Respondent registered and uses the <scriptsave.us> domain name in bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complaint to a competitor’s website in violation of Policy 4(b)(iii)).

 

Respondent’s use of the disputed domain name shows that Respondent is attempting to attract Internet users for commercial gain to Respondent’s website by creating a likelihood of confusion of Respondent’s <scriptsave.us> domain name with Complainant’s SCRIPTSAVE mark. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000)(bad faith found where the respondent's use of the disputed domain name to resolve to a website where similar services were offered to Internet users was likely to confuse the user as to the source or sponsor). Respondent’s use of the confusingly similar disputed domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).

 

Respondent had actual knowledge of Complainant’s rights in the SCRIPTSAVE mark given Respondent’s incorporation of Complainant’s entire mark in the domain name and the inclusion of competing services on the resolving page. Therefore, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <scriptsave.us> domain name be TRANSFERRED from Respondent to Complainant.

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  June 23, 2004