URS DEFAULT DETERMINATION

Express Scripts, Inc. v. nashan
Claim Number: FA1706001735618

DOMAIN NAME

<express-scripts.xyz>

PARTIES

	Complainant: Express Scripts, Inc. of St. Louis, MO, United States of America
	Complainant Representative: Express Scripts, Inc. Arkadia Olson of St. Louis, MO, United States of America

	Respondent: nashan nashan nashan of Shen Yang Shi, II, CN

REGISTRIES and REGISTRARS

	Registries: XYZ.COM LLC
	Registrars: Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn)

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.
	Mr. Tomáš Abelovský, as Examiner

PROCEDURAL HISTORY

	Complainant Submitted: June 13, 2017
	Commencement: June 14, 2017
	Default Date: June 29, 2017
	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: Complainant has provided the following initial explanatory text, in his Complaint: “Express Scripts, Inc. (“Complainant”) offers a broad range of services for patients, physicians, health plan sponsors, and pharmaceutical manufacturers, and is one of the nation’s largest pharmacy benefit managers. Complainant owns the mark EXPRESS SCRIPTS (“Mark”) in various countries worldwide, and owns numerous U.S. registrations therefor. See Exhibit 1. Complainant has registered the Mark with Trademark Clearinghouse (“TMCH”). Complainant or its predecessor uses and has used the Mark to identify and promote its health- and pharmacy- related goods and services in the U.S. since 1986, and the Mark is in current use, as required by URS 1.2.6.1(i). See Exhibit 2 (Proof of Use). On April 1, 2016, TMCH notified Complainant that the Mark was included in expressscripts.xyz (the “Domain”). TMCH presumably notified Respondent that the domain contained Complainant’s Mark, but Respondent proceeded to register the Domain. See Exhibit 3 (WHOIS information). Accordingly, Complainant submits that the Domain should be suspended for the life of the registration for the following reasons: 1. The Domain is identical or confusingly similar to Complainant’s Mark (URS 1.2.6.1). The Domain contain the entire Mark, and the addition of the gTLD “.xyz” does not sufficiently distinguish the Domains. 2. Registrant has no legitimate right or interest to the Domain, as set forth in URS 1.2.6.2. Respondent is not authorized by Complainant, and there is no indication from WHOIS or otherwise that Respondent is commonly known as EXPRESS SCRIPTS. Currently, the Domain is associated with an inactive site. Previous panels have found that passive holding of a domain does not constitute a bona fide offering of goods or service or a legitimate noncommercial or fair use of the disputed domain name. See Bloomberg Finance L.P. v. henrylau / jiatong, FA 1657447 (Nat. Arb. Forum March 3, 2016). 3. The Domains was registered and is being used in bad faith, as set forth in URS 1.2.6.3. The use of the “.xyz” gTLD in connection with Complainant’s wellknown Mark falsely suggests that Respondent is associated with Complainant. Moreover, Complainant previously sent Respondent a cease and desist letter regarding the Domain. In a later email, Complainant offered to reimburse Respondent’s registration cost, in exchange for the Domain. Respondent declined to provide cost information for the Domain, and did not offer its plans for use of the Domain. Instead, Complainant asked for “compensation” of $500 to transfer the domain. Based on Complainant’s research, the cost would have been closer to $25. Moreover, Respondent has a history of filing multiple infringing domain names, evidence of a pattern of bad faith registration. See Morgan Stanley v. nashan, FA 1703414 (FORUM December 14, 2016) (finding same respondent had exhibited pattern of bad faith in domain name registrations).” Complainant has provided supporting evidences. Respondent has not provided its Response to the Complaint.

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:
  (i) for which the Complainant holds a valid national or regional registration and that is in current use; or
  (ii) that has been validated through court proceedings; or
  (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

Determined: Finding for Complainant

Complainant owns the trademark “EXPRESS SCRIPTS” (USPTO). The Domain Name “EXPRESS-SCRIPTS.xyz” reproduces his trademark and is identical. Moreover, the new gTLD “.XYZ” does not reduce the similarity with the trademark. Therefore, the registered Domain Name is identical or confusingly similar to a word mark for which the Complainant holds valid registration/rights, which is in current use.

[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant

Complainant has proven that Respondent has no rights or legitimate interests in the Domain Names. Furthermore, the Complainant has not authorized the Respondent to use his trademark.

[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
  a. Registrant 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 documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site 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 Registrant’s web site or location or of a product or service on that web site or location.

Respondent has registered and used the Domain Name in bad faith. Complainant has thus satisfied paragraph 1.2.6.3 of the URS Procedure. Passive possession of identical Domain Name consisting of protected word marks and without any manifest proof of purpose towards commercial benefit, can't represent a good faith use under overall circumstances presented in this case. Moreover, Respondent has a history of registering infringing domain names.

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:

The Complaint was neither abusive nor contained material falsehoods.

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:

express-scripts.xyz

Mr. Tomáš Abelovský
Examiner
Dated: July 1, 2017

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