Express Scripts, Inc. v. I S / ICS INC
Claim Number: FA1611001701714
Complainant is Express Scripts, Inc. (“Complainant”), represented by Arkadia Olson of HUSCH BLACKWELL LLP, Missouri, USA. Respondent is I S / ICS INC (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eexpressscripts.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 7, 2016; the Forum received payment on November 7, 2016.
On November 8, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <eexpressscripts.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 14, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 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@eexpressscripts.com. Also on November 14, 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 December 12, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 uses the EXPRESS SCRIPTS mark to identify and promote its patient consultation and patient care management services, benefits and other health- and pharmacy-related goods and services.
Complainant holds a registration for the EXPRESS SCRIPTS service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) Registry No. 1,809,555, registered December 7, 1993.
Respondent registered the domain name <eexpressscripts.com> on or about May 31, 2016.
The domain name is confusingly similar to Complainant’s EXPRESS SCRIPTS service mark.
Complainant has no relationship with Respondent.
Complainant has not given Respondent any license or other authorization to use its EXPRESS SCRIPTS mark in any way.
Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name.
Respondent uses the domain name to link to third party websites, some of which appear to contain malware and other harmful software.
Respondent is attempting to confuse and attract Internet users away from Complainant, and presumably earns money from each “click-thru” from its website to one of the linked third party websites listed on the resolving website.
Respondent has no rights to or legitimate interests in the domain name.
Respondent was aware of Complainant and its rights in the EXPRESS SCRIPTS mark when it registered the domain name.
Respondent’s registration and use of the domain name are in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the EXPRESS SCRIPTS service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum August 3, 2015) (finding that a UDRP complainant’s registration with the USPTO adequately proved its rights in a mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its EXPRESS SCRIPTS mark arise from its registration in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Cayman Islands). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <eexpressscripts.com> domain name is confusingly similar to Complainant’s EXPRESS SCRIPTS mark. The domain name contains the mark in its entirety, differing only by the omission of the space between its terms and the addition of the letter “e” and of the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Wyndham Hotels and Resorts, LLC v. James VanBuren, FA 1624028 (Forum July 10, 2015):
The disputed domain name … [was formed by] omitting the space [between the terms of a UDRP complainant’s mark] and adding the ".com" top-level domain name. These alterations do not diminish the similarity between the domain name and Complainant's marks.
See also BuySeasons, Inc. v. David Hulbert, FA 1349620 (Forum November 5, 2010) (finding a respondent’s <ebuycostumes.com> domain name confusingly similar to a UDRP complainant’s BUYCOSTUMES.COM mark under Policy ¶ 4(a)(i), because the domain name contained that complainant’s entire mark, differing only by the addition of the letter “e”).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has no rights to or legitimate interests in the contested <eexpressscripts.com> domain name in that Complainant has no relationship with Respondent, and that Complainant has not given Respondent any license or other authorization to use its EXPRESS SCRIPTS mark in any way. Moreover, there is no evidence in the record suggesting that Respondent has been commonly known by the domain name, and the pertinent WHOIS information identifies the registrant of the domain name only as “Registration Private” and as “I S” with “ICS INC,” neither of which resembles the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that a respondent was not commonly known by the <chevron-europe.com> domain name so as to have demonstrated rights to or legitimate interests in it under Policy ¶ 4(c)(ii) where the relevant WHOIS information identified the registrant of the domain name only as “Fred Wallace”). See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had never authorized that respondent to incorporate its NAVISTAR mark in a domain name registration).
We next observe that Complainant asserts, without objection from Respondent, that the <eexpressscripts.com> domain name resolves to a website linking to various third-party websites, some of which appear to contain malware and other harmful software. This is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) so as to show rights to or legitimate interests in the domain name within the meaning of either of those provisions of the Policy. See SimScale GmbH v. Oliver Sharp, FA1401001537384 (Forum Feb. 3, 2014) (finding that a respondent’s “use of the disputed domain name to promote links to unrelated third parties is not protected as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
See also Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a UDRP respondent’s use of a domain name to direct Internet users to a website that attempted to download computer viruses to the machines of unsuspecting Internet users “failed to create any semblance of 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)”).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent uses the contested <eexpressscripts.com> domain name, which is confusingly similar to Complainant’s EXPRESS SCRIPTS service mark, to profit financially by creating confusion among Internet users as to the possibility of Complainant’s affiliation with the domain name. Under Policy 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where a respondent diverted to its own website Internet users searching for the legitimate website of a UDRP complainant, likely profiting in the process). Similarly, see Google, Inc. v. Petrovich, FA 1339345 (Forum Sept. 23, 2010) (the panel there finding that disputed domain names that distributed malware to Internet users’ computers demonstrated Respondent’s bad faith registration and use of those domain names under Policy ¶ 4(b)(iv)).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the EXPRESS SCRIPTS mark when it registered the <eexpressscripts.com> domain name. This too is proof of Respondent’s registration of the domain name in bad faith. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith under Policy ¶ 4(a)(iii) where a panel found that that respondent knew of a UDRP complainant's rights in its mark when it registered a confusingly similar domain name).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <eexpressscripts.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 13, 2016
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