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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Express Scripts, Inc. v. Kal Kuchora

Case No. D2005-1164

 

1. The Parties

The Complainant is Express Scripts, Inc., of Missouri, United States of America, represented by Bryan Cave, LLP, United States of America.

The Respondent is Kal Kuchora, of Rawalpindi, Pakistan.

 

2. The Domain Name and Registrar

The disputed domain name <experss-scripts.com> is registered with Intercosmos Media Group d/b/a directNIC.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2005. On November 9, 2005, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On November 9, 2005, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 16, 2005. 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”), 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 the Respondent of the Complaint, and the proceedings commenced on November 21, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 15, 2005.

The Center appointed Adam Taylor, Debra J. Stanek and Keiji Kondo as panelists in this matter on February 3, 2006. The Panel finds that it was properly constituted. Each member of 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

The Complainant is one of the largest pharmacy benefit management companies in North America. Since 1986 it has provided pharmacy services under the mark EXPRESS SCRIPTS to over 50 million members through facilities in eight US states and in Canada.

The Complainant owns US registered trademark No. 1,809,555 for EXPRESS SCRIPTS filed September 1, 1992, in respect of pharmacy home delivery services, pharmacy services and pharmacy mail order services and administering a pharmacy reimbursement program.

The Complainant’s main website is at “www.express-scripts.com” where users can, among other things, order prescription drug products online for home delivery, receive health and drug information and obtain benefit details and prescription histories.

The Respondent registered the disputed domain name on July 27, 2003.

As of September 19, 2005, there was a website at the disputed domain name comprising a directory of affiliate links to various websites including a number of websites purporting to offer online prescription drug products for various conditions. The domain name appeared prominently at the top of the website.

The Respondent has been a respondent in another UDRP case: Longs Drug Stores California, Inc. v. Kuchora, WIPO Case No. D2005-0428 (<longs-drugs.com> and <longspharmacy.com>), transfer.

 

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

For almost twenty years, the Complainant has expended a substantial amount of resources, money, time and effort promoting its EXPRESS SCRIPTS mark, which has gained secondary meaning and consumer recognition as identifying the Complainant’s services. The Complainant has rights in the name EXPRESS SCRIPTS deriving from common law rights and its federal registration.

The disputed domain name is virtually identical and confusingly similar to the Complainant’s EXPRESS SCRIPTS mark. It incorporates the mark both in appearance and phonetics. By design, the Respondent registered an insignificant variation of the Complainant’s mark to misdirect Internet users who mistype the “r” and “e” in the word “express”. A mere addition or a minor misspelling of the Complainant’s trademark does not create a new or different mark in which the Respondent has legitimate rights. UDRP precedent has consistently held that a domain name that is identical to another’s mark in all respects but a minor misspelling will almost always satisfy the “confusingly similar” requirement of the Policy.

Rights or Legitimate Interests

The Respondent has no legitimate rights or interest whatsoever in the disputed domain name. The Respondent intentionally and wrongfully chose to register a domain name having a trivial variation from the Complainant’s well-known mark and domain name with a view to misleading and diverting a large number of consumers to a webpage offering competing pharmacy related goods and services. Such intent precludes a finding of a bona fide offering of goods and/or services.

The Respondent is not in anyway associated with the Complainant and has never sought nor received authorization or a license to use the Complainant’s EXPRESS SCRIPTS mark.

The Respondent cannot establish that he is or has ever been commonly known as “EXPRESS SCRIPTS” - because he has not. So far as the Complainant is aware, the Respondent has not sought nor procured any registrations for any tradenames, corporations, or trademarks with any Secretary of State, the U.S. Patent & Trademark Office nor any other trademark authority for EXPRESS SCRIPTS. The Respondent has no legitimate trademark, service mark or other intellectual property rights in or to the EXPRESS SCRIPTS mark.

The Respondent is not making any legitimate non-commercial use of the disputed domain name. The Respondent used and continues to use the disputed domain name for the improper commercial purposes of: (i) illegally trading upon the Complainant’s goodwill to confuse, mislead, deceive, and divert consumers; (ii) misdirecting the Complainant’s customers to websites that offer directly competing goods and services; and (iii) intentionally tarnishing and diluting the Complainant’s valuable and well-known EXPRESS SCRIPTS mark.

Registered and Used in Bad Faith

The Respondent registered and is using the disputed domain name in bad faith.

The Respondent is intentionally diverting, for commercial gain, Internet users to a competing website. The Respondent’s mere act of typo-squatting presents ample evidence of bad faith. The Respondent attracts Internet users looking for the Complainant’s authentic “www.express-scripts.com” website, and then automatically forwards the unsuspecting Internet users to the Respondent’s wholly unrelated commercial pharmacy website.

The Respondent’s bad faith conduct is designed to disrupt and harm the Complainant’s business by diverting unsuspecting Internet users away from the Complainant’s website. Such conduct has caused the Complainant commercial detriment, in terms of lost sales, goodwill, and the general ability to communicate and transact with existing and potential customers.

The Respondent has no legitimate trademark, service mark or other intellectual property rights in or to the disputed domain name or any similar marks or names. This further demonstrates bad faith.

The Respondent plainly knew of the Complainant’s long and continuous use of the EXPRESS SCRIPTS mark or at least had constructive notice thereof as result of the Complainant’s registered trademark.

The case of Longs Drug Stores California, Inc. v. Kuchora, WIPO Case No. D2005-0428 shows that the Respondent is engaged in a pattern of bad faith registration and use of domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established registered and unregistered trademark rights in the term EXPRESS SCRIPTS.

The disputed domain name differs from the trademark only by the switching of the “r” and second “e” in the word “express”, the addition of a hyphen and of the suffix “.com”. These differences are insignificant and the disputed domain name still has the obvious potential to cause confusion with the Complainant’s trademark.

The Panel concludes that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070.

The Complainant has not licensed or otherwise authorized the Respondent to use its trademark.

As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant. Such use of the Domain could not be said to be bona fide.

There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply.

The Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

It is difficult to conceive of any genuine reason why the Respondent would wish to register a domain name consisting of the misspelling “experss” in conjunction with the word “scripts”. The Panel considers that the disputed domain name is intended to be a misspelling of the Complainant’s trademark in order to attract internet users who mistype the Complainant’s trademark into their web browsers. This is the practice known as “typo-squatting”. Such users are diverted to a website with affiliate links to other websites including those providing services related to those of the Complainant. Furthermore, the site at the disputed domain name is prominently branded with the disputed domain name, thereby compounding the likelihood of confusion.

The Respondent has not come forward to deny that the Complainant’s assertions of bad faith let alone offer any explanation for its registration and use of the disputed domain name.

The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark.

 

7. Decision

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


Adam Taylor
Presiding Panelist

Debra J. Stanek
Panelist

Keiji Kondo
Panelist

Date: February 15, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-1164.html

 

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