Express Scripts Strategic Development, Inc. v. kardelen yildirim
Claim Number: FA1811001818982
Complainant is Express Scripts Strategic Development, Inc. (“Complainant”), represented by Caroline Chicoine of HUSCH BLACKWELL LLP, Missouri, USA. Respondent is kardelen yildirim (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <accredostart.com>, registered with NameSilo, LLC.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 30, 2018; the Forum received payment on November 30, 2018.
On December 1, 2018, NameSilo, LLC confirmed by e-mail to the Forum that the <accredostart.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 December 5, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 2018 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@accredostart.com. Also on December 5, 2018, 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 December 30, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (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 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Express Scripts Strategic Development, Inc., has used their mark ACCREDO in connection with pharmacy services as early as 2009. Complainant has rights in the ACCREDO mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,667,385, registered Aug. 11, 2009). Respondent’s <accredostart.com> domain name is confusingly similar to Complainant’s ACCREDO mark, as the domain name wholly incorporates the mark and adds generic top-level domain (“gTLD”) “.com.” Complainant’s application for the mark ACCREDO START (Ser. No. 87956886) was filed on June 11, 2018.
Respondent has no rights or legitimate interests in the <accredostart.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the ACCREDO mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent has offered to sell the disputed domain name for $960.
Respondent registered and is using the <accredostart.com> domain name in bad faith. Respondent attempts to sell the disputed domain name for more than out-of-pocket costs. Further, Respondent attempts to divert users to the disputed domain name for commercial gain. Respondent also registered the disputed domain name three days after Complainant’s USPTO application for the ACCREDO START mark. Finally, Respondent had actual knowledge of Complainant’s rights in the ACCREDO mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <accredostart.com> 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 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 (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 claims rights in the ACCREDO mark based upon registration of the mark with the USPTO (e.g. Reg. No. 3,667,385, registered Aug. 11, 2009). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). The Panel finds that Complainant’s registration of the ACCREDO mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <accredostart.com> domain name is confusingly similar to the ACCREDO mark. Respondent’s disputed domain name incorporates the ACCREDO mark with the term “start” and a “.com” gTLD. The Panel finds these additions are insufficient to overcome any confusing similarity. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)); see also Kurk Wasserman Consulting, L.L.C. v. ming li, FA 1782613 (Forum May 29, 2018) (“Respondent’s <lilashserum.us> domain name is confusingly similar to the LILASH mark as Respondent merely adds the descriptive term “serum” and the “.us” ccTLD to the mark.”). The Panel finds that the disputed domain name is confusingly similar to Complainant’s ACCREDO mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <accredostart.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the ACCREDO mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record identifies the owner of the disputed domain name as “kardelen yildirim” and no information on record indicated Respondent was authorized to register a domain name with Complainant’s mark. The Panel finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <accredostart.com> domain name.
Complainant further argues Respondent’s lack of rights and legitimate interests in the <accredostart.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods and services or for a legitimate or noncommercial or fair use. Complainant instead contends that the domain is offered for sale. Offering a domain name for sale is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). The Panel finds that Respondent does not have rights or legitimate interests in respect of the <accredostart.com> domain name under Policy ¶¶ 4(c)(i) or (iii).
Complainant has proved this element.
Complainant argues that Respondent’s bad faith is indicated by its offer of the <accredostart.com> domain name for sale. A respondent’s offer for sale of a disputed domain name can indicate bad faith per Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). Complainant provides a screenshot of the web page to which the disputed domain name resolves that shows the offer for purchase for $960. The Panel finds that Respondent’s offer for sale of the domain name indicates bad faith per Policy ¶ 4(b)(i).
Complainant further argues Respondent’s bad faith is evidenced by their opportunistic registration of the <accredostart.com> domain name. Opportunistic registration of a disputed domain name can indicate bad faith per Policy ¶ 4(a)(iii). See Arizona Board of Regents, for and on behalf of Arizona State University v. Weiping Zheng, FA1504001613780 (Forum May 28, 2015) (finding that the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the disputed domain name just one week after the complainant filed applications to register the SUB DEVIL LIFE mark, and just days after those applications became public through the USPTO’s website). Complainant contends that Respondent registered the disputed domain name just three days after Complainant filed for trademark protection for the ACCREDO START mark. The Panel agrees and finds Respondent’s registration of the disputed domain name was opportunistic and evidence of bad faith per Policy ¶ 4(a)(iii).
Complainant argues that Respondent’s bad faith is indicated by its actual knowledge of Complainant’s rights in the ACCREDO mark. A respondent’s actual knowledge of a complainant’s rights in a mark indicates bad faith per Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). Complainant asserts that the term ACCREDO in the disputed domain name establishes actual knowledge of their rights to that mark as the term is fanciful and not found in any dictionary. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the ACCREDO mark and finds from Complaint’s uncontested allegations that Respondent registered and uses the domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <accredostart.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: January 8, 2019
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