Express Scripts Strategic Development, Inc. v. CONNER EXPRESS SCRIPTS HOLDING COMPANY / CLIFFTON
Claim Number: FA1712001761597
Complainant is Express Scripts Strategic Development, Inc. (“Complainant”), represented by Caroline Chicoine of HUSCH BLACKWELL LLP, Missouri, USA. Respondent is CONNER EXPRESS SCRIPTS HOLDING COMPANY / CLIFFTON (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <express-scripts1.com>, registered with DomainPeople, Inc.
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on December 6, 2017; the Forum received payment on December 6, 2017.
On December 8, 2017, DomainPeople, Inc. confirmed by e-mail to the Forum that the <express-scripts1.com> domain name is registered with DomainPeople, Inc. and that Respondent is the current registrant of the name. DomainPeople, Inc. has verified that Respondent is bound by the DomainPeople, 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 December 11, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 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@express-scripts1.com. Also on December 11, 2017, 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 January 5, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 is a wholly owned subsidiary of Express Scripts Holding Company, a Fortune 25 company with revenues of over $100 billion in 2016. Complainant is one of the largest pharmacy benefit managers in North America and uses its EXPRESS SCRIPTS mark to promote and market its products and services. Complainant established rights in the mark through its use of the mark EXPRESS SCRIPTS in commerce since 1986, and through its registration of that mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,809,555) on December 7, 1993. Respondent’s <express-scripts1.com> Domain Name is confusingly similar to Complainant’s mark because it incorporates the mark entirely, merely adding a hyphen between “EXPRESS” and “SCRIPTS,” the number “1,” and the generic top-level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the <express-scripts1.com> Domain Name. Complainant has not licensed or otherwise authorized Respondent to use its EXPRESS SCRIPTS mark in any fashion. Respondent is not commonly known by the Domain Name as the WHOIS information of record lists “CONNER EXPRESS SCRIPTS HOLDING COMPANY / CLIFFTON” as the registrant. Respondent is not using the Domain Name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent is not making any active use of the Domain Name. It resolves to a website that is under construction.
Respondent is using the Domain Name in bad faith. He is using it to disrupt Complainant’s business and intentionally to attract for commercial gain Internet users to his web site by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement thereof. Also, Respondent had knowledge of Complainant’s rights in the EXPRESS SCRIPTS mark when he registered it on November 7, 2017.
B. Respondent
Respondent did not submit a Response.
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 will 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.”).
The Panel makes the findings and determinations set forth below with respect to the Domain Name.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interest. If, though, the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0 at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven to exist can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers of to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Respondent is not commonly known by the Domain Name, (ii) Complainant has not authorized Respondent to use its EXPRESS SCRIPTS mark, and (iii) Respondent is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because the web site resolving from the Domain Name is inactive, and this use, or non-use, cannot constitute a bona fide offering of goods and services, or a legitimate noncommercial or fair use of the Domain Name. These allegations are supported by competent evidence. The WHOIS record associated with this case identifies the registrant as “Conner Express Scripts Holding Company/Cliffton.” See, Complaint Annex A. The fact that the name of the registrant contains the words “Express Scripts” suggests that the Respondent may be commonly known by the Domain Name (<express-scripts1.com>). It might also, however, suggest an opportunistic registration in a form calculated to gain advantage for the registrant in any potential infringement dispute. In the absence of evidence showing that the Respondent actually engages in some business or other activity under that name, its registration of the Domain Name in the name “Conner Express Scripts Holding Company/Cliffton,” standing alone, is not sufficient to fit this Respondent within the circumstance articulated by Policy ¶ 4(c)(ii). Further, Complainant states that it has never authorized Respondent to use its EXPRESS SCRIPTS mark in any domain name registration. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel.
Annex I to the Complaint is a screenshot of the web page found at the Domain Name, which contains no substantive content. A domain name resolving to an inactive and/or parked webpage is evidence that a respondent has no rights or legitimate interests in that name under Policy ¶¶ 4(c)(i) and (iii). Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii)”).
Complainant has made its prima facie case. On the evidence presented, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Annex I to the Complaint is a screen shot of the web site resolving from the Domain Name. It shows only the words “Under Construction” and other words to that same effect. This is clearly an inactive web site. The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and using a domain name for an inactive web a site has often been held to be evidence of bad faith under the Policy. Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith), VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”), Wells Fargo & Co. v. WhoisGuard c/o WhoisGuard Protected, FA 1103650 (Forum December 13,2007) (“The failure to make an active use of the disputed domain name also evidences bad faith registration and use under Policy ¶ 4(a)(iii)”).
Further, Respondent registered the Domain Name on November 7, 2017. At that time it had already been involved with Complainant in two other UDRP proceedings, Express Scripts, Inc. v. DeAndre Carter/Express Scripts Holding, FA1679949 (Forum July 29 2016), and Express Scripts, Inc. v. Cliffton Conner/Reytheon International, FA 1715325 (Forum March 6, 2017). Respondent was ordered to transfer the domain names in both those cases to Complainant. It is true that the respondents in those cases did not have exactly the same name as the Respondent here, but all three names contain common elements (Conner, Cliffton, Express Scripts Holdings) that are sufficiently unique to demonstrate that the respondent in those cases is the same entity or person as the Respondent in this case. It is clear that Respondent had full knowledge of Complainant’s rights in the EXPRESS SCRIPTS mark at the time it registered the Domain Name. Actual knowledge of a complainant’s rights in a mark is evidence of bad faith. Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
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 <express-scripts1.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: January 8, 2018
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