Express Scripts, Inc. v. VistaPrint Technologies Ltd
Claim Number: FA1601001656487
Complainant is Express Scripts, Inc. (“Complainant”), represented by Arkadia Olson of HUSCH BLACKWELL LLP, Missouri, USA. Respondent is VistaPrint Technologies Ltd (“Respondent”), Bermuda.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <express-scriptts.com>, <express-scriptusa.com>, <express-scripits.co>, <express-scrripts.com>, <myexpresscarepharmacy.com>, and <expriess-scripts.com>, registered with Tucows Domains 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 14, 2016; the Forum received payment on January 14, 2016.
On January 14, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the<express-scriptts.com>, <express-scriptusa.com>, <express-scripits.co>, <express-scrripts.com>, <myexpresscarepharmacy.com>, and <expriess-scripts.com>, domain names are registered with Tucows Domains Inc. and that Respondent is the current registrant of the names. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 February 26, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 17, 2016 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-scriptts.com, postmaster@express-scriptusa.com, postmaster@express-scripits.co, postmaster@express-scrripts.com, postmaster@myexpresscarepharmacy.com, and postmaster@expriess-scripts.com. Also on February 26, 2016, 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 March 22, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in EXPRESS SCRIPTS and alleges that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant has provided pharmacy services by reference to the trademark EXPRESS SCRIPTS since 1986;
2. the trademark is registered with the United States Patent and Trademark Office (“USPTO”) as Reg. No. 1,809,555, registered December 7, 1993;
3. the disputed domain names were registered between November 2014 and September 2015;
4. the domain names resolve to websites showing the trademark of a third party as later described; and
5. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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 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); 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.”).
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its USPTO trademark registration for EXPRESS SCRIPTS, the Panel is satisfied that it has trademark rights in that expression (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
For the purposes of comparing the domain names with the trademark Panel finds in this case that the appended gTLD or ccTLD is non-distinctive and can be disregarded (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; Wicked Weasel Pty Ltd v. Kulich / GS, FA 1604785 (Nat. Arb. Forum April 23, 2015) finding, “The addition of a ccTLD to a registered trademark is not sufficient to overcome a finding of confusing similarity under a Policy ¶4(a)(i) analysis.”)
The comparisons then resolve to the trademark, EXPRESS SCRIPTS, with the following terms:
express-scriptts
express-scriptusa
express-scripits
express-scrripts
expriess-scripts
myexpresscarepharmacy
In all but the last case the term is a trivial misspelling of the mark, hyphenates the words of the trademark, and in one case also adds the abbreviation for the United States of America, “usa”. In all but the last case the trademark is immediately recognizable in spite of those minor alterations and Panel finds that those domain names are confusingly similar to the trademark.
See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). Panels have also held that misspelling a mark does not prevent a finding of confusing similarity. See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)). Geographic terms have also not been seen as differentiating a domain from a mark. See Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). Taken together, this Panel finds that Respondent’s <express-scriptts.com>, <express-scriptusa.com>, <express-scripits.co>, <express-scrripts.com>, and <expriess-scripts.com> domains are confusingly similar to the EXPRESS SCRIPTS mark.
Panel does not find the term “myexpresscarepharmacy” to be confusingly similar to the trademark. The only common element is the word “express” which is laudatory for any services. The total impression created by the compared expressions is not one of confusing similarity.
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy with respect to the <express-scriptts.com>, <express-scriptusa.com>, <express-scripits.co>, <express-scrripts.com> and <expriess-scripts.com> domain names.
Panel finds that Complainant has not established the requirements of paragraph 4(a)(i) of the Policy with respect to <myexpresscarepharmacy.com> and accordingly the Complaint fails as against that domain name. For that reason, it has no part in the ongoing analysis and further reference to “the domain names” is a reference to those names listed in the preceding paragraph.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The publicly available WHOIS information identifies Respondent as “VistaPrint Technologies Ltd.” Accordingly there is no suggestion that Respondent might be commonly known by any of the domain names. There is no evidence that Respondent has any relevant trademark rights and Complainant has stated that Respondent has no permission to use its trademark or incorporate the trademark into any domain name.
Complainant provides evidence that the domain names resolve in each case to a landing page displaying the trademark “vistaprint” and advertising website creation services. Further, there is evidence that some of the domain names have been used to send potentially fraudulent emails. Neither use is a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names.
Panel finds that Complainant has established a prima facie case in respect of each of the domain names. Absent a Response that prima facie case is not met and therefore Respondent has no rights or interests.
Complainant has satisfied the second element of the Policy.
Complainant must prove on the balance of probabilities both that the domain names were registered in bad faith and that they are being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.’
Panel finds that Respondent’s conduct is caught by paragraph 4(b)(iv). Panel has already found the domain names to be confusingly similar to the trademark. The requisite likelihood of confusion follows from that finding. As noted, the evidence is that the domain names resolve to websites which feature a trademark and services unconnected with Complainant’s business and are also used to send fraudulent emails. Panel finds that this use of the domain names somehow benefits Respondent commercially.
Panel finds registration and use of the domain names in bad faith and so Complainant has therefore satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED in relation to the <express-scriptts.com>, <express-scriptusa.com>, <express-scripits.co>, <express-scrripts.com> and <expriess-scripts.com> domain names. Accordingly, it is Ordered that those domain names be TRANSFERRED from Respondent to Complainant.
Having not established all three elements required under the ICANN Policy in relation to the <myexpresscarepharmacy.com> domain name, the Panel concludes that relief shall be DENIED. Accordingly, it is Ordered that this domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: April 1, 2016
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