WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CVS Pharmacy, Inc. v. Whois Privacy Protection Service / Jasna Knezevic

Case No. D2013-0564

1. The Parties

Complainant is CVS Pharmacy, Inc. of Woonsocket, Rhode Island, United States of America (“US”), represented by Edwards Wildman Palmer LLP, US.

Respondent is Whois Privacy Protection Service of Istanbul, Turkey / Jasna Knezevic of Dubrovnik, Croatia.

2. The Domain Name and Registrar

The disputed domain name <cvsonlinepharmacystore.com> is registered with Nics Telekomünikasyon Ticaret Ltd. Şti. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2013. On March 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 17, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 22, 2013.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 16, 2013.

The Center appointed Roberto Bianchi as the sole panelist in this matter on May 29, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is a leader in the retail drug store industry and has operated more than 7,400 retail drug stores in 42 states in the United States, Puerto Rico and the District of Columbia under the CVS and CVS/PHARMACY marks.

Via its websites, Complainant permits customers to reﬁll prescriptions and sells a wide assortment of general merchandise, including over-the-counter drugs, greeting cards, ﬁlm and photo-phinishing services, beauty products, cosmetics, seasonal merchandise, and convenience foods, much like the offerings available to customers in its retail stores.

According to the Interbrand’s “Best Retail Brands” 2012 report, CVS is the fourth most valuable brand in the United States, with a value of USD17.343 billion.

Complainant owns the following trademark registrations:

- CVS, U.S. Trademark Reg. No. 919,941 in Class 35, registered on September 7, 1971;

- CVS, U.S. Trademark Reg. No. 1,928,435 in Classes 3, 5, and 28, registered on October 17, 1995;

- CVS, U.S. Trademark Reg. No. 1,698,636 in Classes 1, 3, 8, 9, 10, 16, 21, 25, 30, 34 and 40, registered on July 7, 1992;

- CVS, U.S. Trademark Reg. No. 1,876,306 in Class 5, registered on January 31, 1995;

- CVS, U.S. Trademark Reg. No. 1,904,058 in Classes 5 and 25, registered on July 11, 1995;

- CVS, U.S. Trademark Reg. No. 1,869,196 in Classes 5 and 16, registered on December 27, 1994;

- CVS/PHARMACY, U.S. Trademark Reg. No. 2,048,916 in Class 42, registered on April 1, 1997;

- CVS/PHARMACY, U.S. Trademark Reg. No. 2,573,942 in Class 10, registered on May 28, 2002;

- CVS/PHARMACY, U.S. Trademark Reg. No. 2,662,956 in Class 10, registered on December 17, 2002;

- CVS/PHARMACY, U.S. Trademark Reg. No. 3,211,443 in Class 35, registered on February 20, 2007;

- CAREPLUS CVS/PHARMACY, CTM Trademark Reg. No. 6,895,981 in Classes 35 and 44 registered on May 27, 2009;

- CVS CAREMARK, CTM Trademark Reg. No. 7,393,283 in Classes 35, 38 and 41 registered on July 3, 2010;

- CVS CAREMARK, Mexican Trademark Reg. No. 1,131,988 in Class 35, registered on November 14, 2008;

- CVS, Chinese Trademark, Reg. No. 8,120,315 in Class 16 registered on March 21, 2012;

- CVS, Chinese Trademark, Reg. No. 8,120,317 in Class 10 registered on May 21, 2011.

According to a report dated March 20, 2013, from Alexa, an independent third party specializing in website traffic information, Complainant’s “www.cvs.com” is ranked as the 302nd most visited website in the United States. Furthermore, the independent third party Compete, lnc. suggests that “www.cvs.com” received an average of over 10,274,440 unique visitors per month for the twelve months prior to January 2013.

The disputed domain name was registered on December 12, 2011.

As shown by a printout submitted with the Complaint, on March 20, 2013, numerous popular medicine products such as “generic Viagra”, “generic Cialis”, “generic Levitra”, etcetera, were offered online for sale on the website at the disputed domain name.

5. Parties’ Contentions

A. Complainant

In its Complaint, Complainant contends as follows:

As a result of this extensive use of the CVS mark, almost all customers in the United States will readily associate the terms CVS and CVS/PHARMACY with Complainant. In the disputed domain name Respondent has combined “cvs” with terms that are generic and merely describe CVS pharmacy services. In addition, Respondent has merely inserted the word “online” between the two terms in Complainant’s mark CVS/PHARMACY. Therefore, the disputed domain name is confusingly similar to trademarks in which Complainant has rights.

Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent is not a licensee of Complainant and has never been authorized by Complainant to use any of the CVS marks or any mark confusingly similar thereto as a mark or as part of a domain name. This fact gives rise to a presumption that Respondent cannot establish that it has rights or legitimate interests in the disputed domain name. Respondent cannot establish rights in the disputed domain name under paragraph 4(c)(i) of the Policy as it has never made any use of, or demonstrable preparations to use, the disputed domain name or any name corresponding to the disputed domain name in connection with a bona ﬁde offering of goods or services because Respondent is not making a bona ﬁde offering of goods. A party that uses a domain name containing a trademark to sell the products of the trademark owner and those of its competitors has no legitimate interest in the domain name. It is also well established that a respondent cannot be considered to have any rights or a bona ﬁde interest in a domain name if it mischaracterizes its relationship with the complainant. Here, by stating that the website offers “CVS Generic Pharmaceuticals,” Respondent is falsely implying that it purchases its pharmaceutical products directly from CVS. Moreover, Respondent clearly knew of the CVS marks because it registered the disputed domain name and is using it to sell goods under the CVS mark. Such a knowing adoption of an infringing domain name does not constitute a bona ﬁde offering and cannot establish legitimate interests in the disputed domain name. For these reasons, Respondent cannot establish rights in the disputed domain name under paragraph 4(c)(i) of the Policy because it cannot show that it used or demonstrably prepared to use the disputed domain name in connection with a bona ﬁde offering of goods or services prior to notice of this dispute.

Neither Respondent’s WhoIs information nor any other known information suggests that Respondent is commonly known by the disputed domain name. Thus, it must be presumed that Respondent has never been commonly known by the disputed domain name.

Respondent’s use of the disputed domain name misdirects potential visitors seeking Complainant‘s website to the website at the disputed domain name, which offers for sale discounted generic pharmaceuticals, manifestly for profit. Therefore, Respondent’s use of the disputed domain name does not constitute a legitimate noncommercial or fair use of the disputed domain name. For these reasons, Respondent cannot establish that it has any rights or legitimate interests under paragraph 4(c)(iii) of the Policy.

Respondent registered the disputed domain name in an intentional attempt to attract for commercial gain Internet users to the CVS Online Pharmacy Store website by creating a likelihood of confusion with Complainant’s CVS marks. The only evident reason for Respondent to have registered the disputed domain name for its website was to attract users interested in Complainant’s CVS products for Respondent’s commercial gain by passing off the content associated with the disputed domain name as content originating from CVS. Under paragraph 4(b)(iv) of the Policy, registration and use of a domain name in order to misdirect potential visitors to a complainant’s website is evidence of bad faith. Complainant in fact dispenses generic drugs routinely, thus the “generic” aspect of Respondent‘s service is not distinguishing but increases the likelihood of consumer deception. Respondent registered and is using the disputed domain name in order to sell generic pharmaceuticals under the CVS marks, purportedly originating from or sponsored by CVS. Such activities by providers who shelter behind a mask of anonymity and largely beyond the control of governmental regulators such as the United States Food and Drug Administration can potentially cause immense damage to the owners of trademarks. Such activity is strong evidence that Respondent registered and is using the disputed domain name in bad faith. In light of Complainant’s well established rights in the CVS marks, throughout the world and as cited herein, there is no conceivable way that Respondent could use the disputed domain name in good faith. The letters “cvs” by themselves have no speciﬁc meaning and it is improbable that Respondent could independently come up with the letters in conjunction with the word “pharmacy”.

The selection of the disputed domain name to sell generic pharmaceuticals evidences that, prior to registration of the disputed domain name Respondent had knowledge of Complainant’s rights in its CVS marks. Further, Complainant’s numerous registrations of the CVS marks for retail store services and related goods provided Respondent with constructive notice of Complainant’s rights in its marks prior to the registration of the disputed domain name. Respondent’s registration of the disputed domain name in spite of its actual or constructive knowledge of Complainant’s rights shows bad faith under paragraph 4(b)(iv) of the Policy. The gap of over forty years between the initial registration of the CVS marks and Respondent’s registration of the disputed domain name is also an indication of bad faith. Upon information and belief Respondent resides outside the United States, yet the currency for the products offered at the “www.cvsonlinepharmacystore.com” defaults to United States dollars. Respondent’s publishing the website in English with the products listed in United States dollar amounts, and thereby targeting consumers in the jurisdiction in which Complainant has headquarters and is best known, evidences bad faith.

Complainant attempted to forward a copy of the Complaint as ﬁled to the email address available in the public WhoIs, but Complainant’s email was returned as undeliverable because the email address was not valid. Respondent’s use of inaccurate contact information further illustrates Respondent's registration and use of the disputed domain name in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions, and is in default.

6. Discussion and Findings

Under Policy, paragraph 4(a), a complainant must make out its case that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the 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.

A. Preliminary Issue: Identity of Respondent

Taking into account the Registrar’s email communications dated March 29, 2013, and April 2 and 12, 2013, in reply to various email communications sent by the Center, and considering the publicly available WhoIs information on April 17, 2013, the underlying registrant of the disputed domain name is Jasna Knezevic of Dubrovnik, Croatia. Since the Center has exhausted all available means to determine the true identity of Respondent, including repeatedly requesting such details from the Registrar, the Panel determines that the Respondent in the present administrative proceeding is both Whois Privacy Protection Service and Jasna Knezevic, and expects that the Registrar will implement any decision rendered.

B. Identical or Confusingly Similar

By submitting printouts of various trademark registrations, Complainant has shown that it has rights in the CVS and CVS/PHARMACY trademarks. See section 4 above.

Since the disputed domain name incorporates the CVS and the CVS/PHARMACY trademarks in their entirety, adding the generic terms “online” and “store”, and the generic top-level domain (gTLD) “.com”, the Panel finds that the disputed domain name is confusingly similar to Complainant’s CVS and CVS/PHARMACY marks. See Sanofi-Aventis, Aventis Inc. v. Searchology, Domain Registrant, WIPO Case No. D2007-0889 (“Concerning domain names composed of a trademark, and generic words such as “online”, “order”, “prescription” or “purchase”, the Panelist ordered the transfer of these domain names to the Complainant […]”. See also Hoffmann-La Roche Inc. v. Alexei Golubev, Alex S&A, WIPO Case No. D2009-0451 (“The Panel finds that the words “buy” and “online” do not detract from the confusing similarity between the Disputed Domain Names <buy-xenical.biz> and <buy-xenical-online.biz> and the Complainant’s XENICAL mark.)”

C. Rights or Legitimate Interests

Complainant contends that Respondent is not a licensee of Complainant and has never been authorized by Complainant to use any of its marks as a mark or as part of a domain name, that Respondent has never made any use of, or demonstrable preparations to use, the disputed domain name or any name corresponding to the disputed domain name in connection with a bona ﬁde offering of goods or services. By stating that the website at the disputed domain name offers “CVS Generic Pharmaceuticals”, Respondent is falsely implying that its pharmaceutical products are related or similar to those of Complainant. Respondent clearly knew of the CVS marks because it registered the disputed domain name and is using it to sell goods under the CVS mark. Such a knowing adoption of an infringing domain name does not constitute a bona ﬁde offering and cannot establish legitimate interests in the disputed domain name. Further, Respondent has never been commonly known by the disputed domain name. Respondent misdirects potential visitors seeking Complainant’s website to the website at the disputed domain name, which offers for sale discounted generic pharmaceuticals, manifestly for profit. Therefore, Respondent's use of the disputed domain name does not constitute a legitimate noncommercial or fair use of the disputed domain name.

Taken together, these contentions and supporting evidence from Complainant amount to a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. For its part Respondent failed to submit any allegation or evidence whatsoever. It is the consensus view that a complainant is required to make out an initial prima facie case that a respondent lacks rights or legitimate interests, and that once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

Further, considering that Respondent is using Complainant’s CVS and CVS/PHARMACY marks to market generic medicine products in competition with pharmaceutical products marketed by Complainant at its own “www.cvs.com” website and absent from the record any allegation or evidence in Respondent’s favor, the Panel cannot but conclude that Respondent lacks rights or legitimate interests in the disputed domain name.

D. Registered and Used in Bad Faith

Complainant’s CVS mark was registered in September 1971 and, according to Complainant’s statement at the time of filing the trademark application, Complainant has used this mark in commerce since October 1964. Also, as shown by Complainant by citing the Interbrand’s “Best Retail Brands” report for 2012, its CVS brand is one of the most valuable retail brands in the United States. Further, Respondent’s own use of the website at the disputed domain name shows that it is marketing generic products under the CVS mark that compete with pharmaceutical products marketed by Complainant. This means that Respondent knew very well of, and targeted Complainant’s marks, products and services when it registered the disputed domain name, i.e., the domain name registration was in bad faith.

Complainant has also shown that on the website at the disputed domain name Respondent has been using the CVS mark of Complainant to offer and sell online “generic” pharmaceuticals in competition with Complainant, and falsely inducing Internet users to believe that Complainant is the source of Respondent’s products, and/or that Respondent is somehow affiliated with Complainant or that Complainant has somehow authorized Respondent’s commercial activities. See section 4 above.

Under these circumstances, the Panel cannot but conclude that Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant’s CVS mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location, which is a circumstance of registration and use in bad faith under the Policy, paragraph 4(b)(iv). This conclusion is reinforced by the fact that Respondent Jasna Knezevic has provided inaccurate or false contact information for its physical and email addresses, so that the package with the Complaint and the emails communications from the Center could not be delivered. Also, Respondent’s use of inaccurate and/or false contact information suggests in the present case that the registration and use of the disputed domain name was in bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107 (“The Panel agrees that Respondent’s purposefully using false contact information in registering the domain name to conceal its identity may be an additional proof of Respondent’s bad faith.”).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <cvsonlinepharmacystore.com> be transferred to Complainant.

Roberto Bianchi
Sole Panelist
Date: June 11, 2013