URS DEFAULT DETERMINATION
Express Scripts, Inc. v. Dave Chandler
Claim Number: FA1611001703916
DOMAIN NAME
<expressscripts.club>
<express-scripts.club>
PARTIES
| Complainant: Express Scripts, Inc. of St. Louis, MO, United States of America | |
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Complainant Representative: HUSCH BLACKWELL LLP
Hannah Ji of St. Louis, MO, USA
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| Respondent: Dave Chandler of Halifax, NS, CA | |
REGISTRIES and REGISTRARS
| Registries: .CLUB DOMAINS, LLC | |
| Registrars: NameCheap, Inc. |
EXAMINER
| The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding. | |
| Richard W. Hill, as Examiner |
PROCEDURAL HISTORY
| Complainant Submitted: November 21, 2016 | |
| Commencement: November 22, 2016 | |
| Default Date: December 7, 2016 | |
| Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules"). |
RELIEF SOUGHT
| Complainant requests that the domain name be suspended for the life of the registration. |
STANDARD OF REVIEW
| Clear and convincing evidence. |
FINDINGS and DISCUSSION
| Findings of Fact: Express Scripts, Inc. (“Complainant”) offers a broad range of services for patients, physicians, health plan sponsors, and pharmaceutical manufacturers. Complainant is a wholly owned subsidiary of Express Scripts Holding Company, one of the largest pharmacy benefit managers in the world. Complainant owns the mark EXPRESS SCRIPTS (“Mark”), in various countries worldwide, and owns numerous U.S. registrations therefor. See Exhibit 1. Complainant previously registered the Mark with Trademark Clearinghouse (“TMCH”). Complainant or its predecessor has continuously used the Mark to identify and promote its pharmacy benefits and other health- and pharmacy- related goods and services in the United States, since at least as early as 1986. See Exhibit 2 (Proof of Use). Complainant holds numerous valid national and regional registrations for its Mark and the Mark is in its current use, as required by URS 1.2.6.1(i). On April 1, 2016, TMCH notified Complainant that the Mark was included in the expressscripts.club and expressscripts. club domain (“Domains”). TMCH, pursuant to its guidelines, presumably notified Respondent that the domain contained Complainant’s Mark. Yet, Respondent proceeded to register the domain names. The Domains were used to host clickthrough advertisements to various sponsored content such as “Health Insurance Medicare” and “Medicare Supplement Rates”. |
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Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar
to a word mark: Determined: Finding for Complainant The Disputed Domain Names contain the entire Mark, and the addition of the gTLD “.club” does not sufficiently distinguish the Domains. [URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name. Determined: Finding for Complainant Respondent is not authorized by and has no connection with Complainant, and there is no indication from WHOIS or otherwise that Respondent is commonly known as EXPRESS SCRIPTS. The Domains directed Internet users to websites that contain a variety of different links, some of which are in competition with Complainant.
[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
Determined: Finding for Complainant The use of the “.club” gTLD in connection with Complainant’s EXPRESS SCRIPTS mark falsely suggests that Respondent is associated with Complainant. Further, that Respondent previously used these Domains to promote sponsored advertisement content illustrates a bad faith attempt to create the likelihood that Internet users will mistake Complainant as the source or origin of the Domains. FINDING OF ABUSE or MATERIAL FALSEHOOD The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods. The Examiner finds as follows:
DETERMINATION
After reviewing the parties’ submissions, the Examiner determines that the Complainant
has demonstrated all three elements of the URS by a standard of clear and convincing
evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for
the duration of the registration:
|
Richard W. Hill Examiner
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