WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CVS Pharmacy, Inc. v. Whois Privacy, Private by Design, LLC / Cue Balls

Case No. D2021-3178

1. The Parties

Complainant is CVS Pharmacy, Inc., United States of America, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America (“United States”).

Respondent is Whois Privacy, Private by Design, LLC, United States / Cue Balls, United States.

2. The Domain Name and Registrar

The disputed domain name <cvshealthcompany.com> is registered with Porkbun LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2021. On September 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 28, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 29, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on September 30, 2021.

The Center verified that the Complaint together with the amendment to the 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2021. Respondent did not submit any

response. Accordingly, the Center notified the Parties of Respondent’s default on October 25, 2021. The Center received an unsolicited Supplemental Filing from Complainant on October 8, 2021.

The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on November 3, 2021. 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 major American health services company, operating retail pharmacies and medical clinics across the United States. It is the proprietor of hundreds of registrations for its CVS and CVS HEALTH marks in jurisdictions around the world, including the following:

- United States Trademark Registration No. 0919941 for CVS (word mark), registered on September 7, 1971 for services in class 35, claiming a date of first use of October 19, 1964;

- United States Trademark Registration No. 5055141 for CVS HEALTH (word mark), registered on October 4, 2016 for services related to healthcare in classes 35, 36 and 44.

Complainant operates business websites using the domain names <cvs.com> (registered on January 30, 1996) and <cvshealth.com> (registered on April 15, 2005).

The disputed domain name was registered on January 28, 2021. It redirects to Complainant’s website at “www.cvshealth.com.” The record contains evidence that e-mail servers have been configured for the disputed domain name, and copies of e-mails sent by Respondent using this address.

5. Parties’ Contentions

A. Complainant

Complainant’s contentions may be summarized as follows:

Under the first element, Complainant states that it is the premier health innovation company in the United States. Complainant is the 5th largest company in the United States according to the Fortune 500 ranking of America’s largest corporations. It operates 9,900 retail pharmacies and 1,100 walk-in medical clinics across the United States and has 300,000 workers. Complainant is the proprietor of over 500 trademark registrations in 27 countries for its CVS or CVS HEALTH marks. The disputed domain name contains the CVS and CVS HEALTH marks in their entirety. The term “company” does nothing to diminish confusing similarity.

Under the second element, Complainant states that it has never authorized Respondent to use its CVS or CVS HEALTH marks in any manner. Respondent has never used or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name redirects to Complainant’s official website, which cannot confer rights or legitimate interests. Respondent is not commonly known by the disputed domain name and is not making a legitimate noncommercial use of it.

Under the third element, Complainant states that the disputed domain name is identical to its famous or widely-known CVS and CVS HEALTH marks. The oldest of its marks was registered more than 50 years ago. It is implausible that Respondent was unaware of Complainant. The disputed domain name redirects to Complainant’s website, thereby causing customer confusion and exploiting Complainant’s marks for the benefit of Respondent. Respondent has established MX records for the disputed domain name, which indicates that the disputed domain name could be used for fraudulent e-mail communications. Respondent has lost at least one previous decision under the Policy, demonstrating a pattern of such conduct. Respondent has provided to the Registrar an address mimicking the street name and number of Complainant’s address, which is evidently false contact information.

In its Supplement Filing, Complainant provides additional evidence of bad faith in the form of copies of phishing emails sent using the disputed domain name. Complainant states that these copies were unavailable at the date the Complaint was filed and requests that the evidence be added to the case file.

Complainant requests transfer of the disputed domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1 - Supplemental Filing

The Panel has a duty to “ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case,” Rules, paragraph 10(b). To this end, pursuant to paragraph 12 of the Rules, “the Panel may request, at its sole discretion, further statements or documents from either of the Parties.”

At the same time, however, pursuant to paragraph 10(c) of the Rules, “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition.” Accordingly, unsolicited supplemental filings are generally discouraged. Exceptionally, they may be accepted to consider material new evidence or to provide a fair opportunity to respond to arguments that could not reasonably have been anticipated. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Section 4.6, and cases cited thereunder.

Complainant’s supplemental filing constitutes copies of e-mails sent by Respondent using an e-mail address incorporating the disputed domain name. In the e-mails, Respondent impersonates Complainant’s employees in an attempt to extract payment from Complainant’s vendors. Complainant states that this information was not available as of the date of filing of the Complaint. In the view of the Panel, these e-mails constitute relevant new evidence to support the assertions in the Complaint.

The Panel notes that Respondent has been provided a copy of the Supplemental Filing at the email address provided by the Registrar. The Panel therefore shall take into consideration the supplemental filing made by Complainant.

6.2 - Substantive Issues

Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:

(i) the disputed domain name 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 disputed domain name; and

(iii) Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

Complainant has provided evidence establishing that it has trademark rights in the CVS and CVS HEALTH marks through registration in the United States and numerous other jurisdictions. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview 3.0, section 1.2.

In comparing Complainant’s CVS and CVS HEALTH marks with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to Complainant’s marks. The disputed domain name comprises Complainant’s CVS HEALTH mark in its entirety, followed by the dictionary term “company.” It is the consensus view of UDRP panels that, where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark. Moreover, where the relevant trademark is recognizable within the disputed domain names, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. See WIPO Overview 3.0, sections 1.7 and 1.8.

It is the well-established view of UDRP panels that the addition of the generic Top-Level Domain, in this case, “.com”, to a disputed domain name does not prevent the disputed domain name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).

Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not authorized by Complainant and has no rights in the CVS or CVS HEALTH marks. The disputed domain name reflects Complainant’s marks, thereby suggesting sponsorship or endorsement by the trademark owner. Such use cannot confer rights or legitimate interests. See, for example, WIPO Overview 3.0, section 2.5.1.

Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.

Respondent has not proved rights or legitimate interests. There is no evidence that Respondent is commonly known by the disputed domain name, nor that there are any circumstances or activities that would establish Respondent’s rights therein. The disputed domain name redirects to Complainant’s own website. The Panel is satisfied that such redirection has been created with the intention of misleading Internet users. Complainant provides evidence, unchallenged by Respondent, that Respondent has used the disputed domain name to send fraudulent emails to extract payment from Complainant’s vendors. Such use can never confer rights or legitimate interests. See WIPO Overview 3.0, section 2.13.1, and cases cited thereunder.

Therefore, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b) of the Policy, the Panel finds that Complainant has demonstrated Respondent’s bad faith registration and use of the disputed domain name. Complainant’s rights in its CVS and CVS HEALTH marks significantly predate the registration of the disputed domain name. The disputed domain name reflects Complainant’s marks in their entirety, together with the term “company,” which clearly implies a link with Complainant’s business.

Turning to use of the disputed domain name, the Panel finds that Complainant has demonstrated Respondent’s bad faith. The disputed domain name redirects to Complainant’s website. Such conduct is probative of bad faith, as Respondent thereby creates a real or implied ongoing threat to Complainant. See WIPO Overview 3.0 section 3.1.4. Further, Respondent has used the disputed domain name to send fraudulent emails to Complainant’s vendors. This Panel concurs with previous panels that such conduct clearly demonstrates bad faith use of the disputed domain name. See WIPO Overview 3.0 section 3.4. See also Arla Foods Amba v. Michael Guthrie, M. Guthrie Building Solutions, WIPO Case No. D2016-2213.

The Panel has reviewed DaVita, Inc. v. Cue balls, Forum Decision 1959168 of September 7, 2021, a previous UDRP decision, cited by Complainant, in which respondent was found to have engaged in bad faith conduct. In that case, the learned panel found that respondent demonstrated bad faith by using the disputed domain name to impersonate the complainant in a fraudulent email scheme after using disputed domain name to resolve to the complainant’s own website, thereby attempting to mislead Internet users into believing that respondent is connected to complainant. The Panel finds that the fact pattern is indistinguishable from the one in the current proceedings and that Respondent has therefore engaged in a pattern of bad-faith conduct. See WIPO Overview 3.0, section 3.1.2. Further, the Panel concurs with previous UDRP panels that misleading Internet users by using the disputed domain name to redirect to Complainant’s website is probative of bad faith. See, for example, Skyscanner Limited v. Domain Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2019-2974, and WIPO Overview 3.0, section 3.1.4.

The Panel therefore finds that Complainant has established the third element under paragraph 4(a) of the Policy.

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, <cvshealthcompany.com>, be transferred to Complainant.

Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: November 15, 2021