Express Scripts, Inc. v. DeAndre Carter / Express Scripts Holding
Claim Number: FA1606001679940
Complainant is Express Scripts, Inc. (“Complainant”), represented by Arkadia Olson of HUSCH BLACKWELL LLP, Missouri, United States. Respondent is DeAndre Carter / Express Scripts Holding (“Respondent”), North Carolina, United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue is <expressscripts-us.com>, and <expressscripts-us.net>, are registered with Tucows Domains Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 17, 2016; the Forum received payment on June 17, 2016.
On June 17, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the <expressscripts-us.com>, and <expressscripts-us.net> 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 June 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 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@expressscripts-us.com, and postmaster@expressscripts-us.net. Also on June 22, 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 July 21, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 uses the EXPRESS SCRIPTS mark in connection with its business of providing a broad range of services for patients, physicians, health plan sponsors, and pharmaceutical manufacturers. Complainant has registered the EXPRESS SCRIPTS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,809,555, registered Dec. 7, 1993), which establishes rights in the mark. Respondent’s <expressscripts-us.com>, and <expressscripts-us.net> domain names are confusingly similar to the EXPRESS SCRIPTS mark as it includes the mark in its entirety while adding a hyphen, the geographic abbreviation “us,” and the generic top-level domain (“gTLD”) “.com,” or “.net” respectively.
Respondent has no rights or legitimate interests in the <expressscripts-us.com>, and <expressscripts-us.net> domain names. Respondent is not commonly known by the disputed domain names, other than the Registrant Company, nor has Complainant given Respondent any license, permission, or authorization to use the EXPRESS SCRIPTS mark in any way. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <expressscripts-us.com>, and <expressscripts-us.net> domain names. Rather, the <expressscripts-us.com> domain name previously redirected to Complainant’s website. Now, the <expressscripts-us.com>, and <expressscripts-us.net> domain names both resolve to inactive webpages.
Respondent is using the <expressscripts-us.com>, and <expressscripts-us.net> domain names in bad faith. First, Respondent’s use of the websites serves as a disruption of Complainant’s legitimate business purposes. Second, Respondent is inactively holding the disputed domain names. Lastly, Respondent had actual knowledge of the EXPRESS SCRIPTS mark and Complainant’s rights therein because of the mark’s fame, notoriety, and trademark registrations.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 (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.”).
Complainant uses the EXPRESS SCRIPTS mark in connection with its business of providing a broad range of services for patients, physicians, health plan sponsors, and pharmaceutical manufacturers. Complainant registered the EXPRESS SCRIPTS mark with the USPTO (Reg. No. 1,809,555, registered Dec. 7, 1993). Such a trademark registration is sufficient to establish Policy ¶ 4(a)(i) rights in the EXPRESS SCRIPTS mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶4(a)(i).”). Complainant has adequately established Policy ¶4(a)(i) rights in the EXPRESS SCRIPTS mark.
Complainant claims Respondent’s <expressscripts-us.com>, and <expressscripts-us.net> domain names are confusingly similar to the EXPRESS SCRIPTS mark because it includes the mark in its entirety while adding a hyphen, the geographic abbreviation “us,” and the gTLD “.com” and “.net” respectively. The disputed domain names also eliminate spacing between the words of the mark. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶4(a)(i) analysis because domain name syntax prohibits them. See Black Hills Ammunition, Inc. v. ICS INC, FA 1541572 (Forum Mar. 4, 2014) (finding that the <black-hillsammo.com> domain name is confusingly similar to the BLACK HILLS AMMUNITION mark under Policy ¶4(a)(i).); see also Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) (finding that the <wllsfago.com> domain name is confusingly similar to the WELLS FARGO mark as the domain name merely omits the “e” and “r” from the mark while adding the “.com” gTLD suffix.); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)), Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶4(a)(i) confusingly similar analysis.”); see also Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”); see also AOL Inc. v. Morgan, FA 1349260 (Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”). Respondent’s <expressscripts-us.com>, and <expressscripts-us.net> domain names are confusingly similar to the EXPRESS SCRIPTS mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). 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 (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 (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.”).
Complainant claims Respondent has no rights or legitimate interests in the <expressscripts-us.com>, and <expressscripts-us.net> domain names. Complainant has not given Respondent any license, permission, or authorization to use its registered EXPRESS SCRIPTS mark in any way. The WHOIS information for disputed domain names lists “DeAndre Carter / Express Scripts Holding” as registrant of record. Although the WHOIS information suggests Respondent is commonly known by the domain names, nothing else in the record supports a finding Respondent is commonly known by the disputed domain names. It is perfectly possible Respondent created the North Carolina corporation for the sole purpose of purchasing the disputed domains (and that is perfectly legal). The corporation remains in good standing with the state of North Carolina. Certainty, Respondent has apparently done nothing with the domain names since purchasing them on March 18, 2015. It is perfectly possible for a corporation to be unable to trade under its own name because that would infringe upon another’s trademark. Respondent has failed to submit a response in this proceeding. In light of the available evidence, this Panel determines there is an insufficient basis to find Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Google Inc. v. S S / Google International, FA1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”); Yoga Works, Inc. v. Arpita, FA 155461 (Forum June 17, 2003).
Complainant claims Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <expressscripts-us.com>, and <expressscripts-us.net> domain names. The <expressscripts-us.com> used to resolve to Complainant’s website. Now, the <expressscripts-us.com> and <expressscripts-us.net> domain names both resolve to inactive websites. Such an inactive use by a respondent is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)); see also Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶4(c)(i) or ¶4(c)(iii) . . .”). Respondent’s <expressscripts-us.com>, and <expressscripts-us.net> domain names constitute neither (i) a bona fide offering of goods or services, nor (ii) a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and (iii).
The Panel finds Policy ¶ 4(a)(ii) satisfied.
Complainant claims Respondent is inactively holding the <expressscripts-us.com>, and <expressscripts-us.net> domain names. Respondent has not claimed otherwise. Failing to use a disputed domain name constitutes bad faith registration and use under Policy ¶4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). Respondent’s inactive holding of the disputed domain names constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant claims Respondent had actual knowledge of Complainant's rights in the EXPRESS SCRIPTS mark. This seems obvious because one of the disputed domain names originally forwarded to Complainant’s own web site. Respondent used the mark in its entirety in the disputed domain names. All of this suggests Respondent had actual knowledge of Complainant's mark. Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent had actual knowledge of Complainant’s mark. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds Policy ¶ 4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <expressscripts-us.com> and <expressscripts-us.net> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, July 29, 2016
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