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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Express Scripts, Inc. v. Bella Gia

Case No. D2006-0310

 

1. The Parties

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

The Respondent is Bella Gia, Antigua, Antigua and Barbuda.

 

2. The Domain Name and Registrar

The disputed domain name <express-scrips.com> (herein the “domain name in dispute”) is registered with CADiware AG.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2006. On March 13, 2006, the Center transmitted by email to CADiware AG a request for registrar verification in connection with the domain name at issue. On March 16, 2006, CADiware AG 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. The Center verified that 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 March 20, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 10, 2006.

The Center appointed J. Nelson Landry, Lynda J. Zadra-Symes and Lone Prehn as panelists in this matter on May 16, 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 a pharmacy benefit management company in North America which has for the past 20 years provided pharmacy home delivery and mail order services to over 50 million members in eight states and Canada. The Complainant has been engaged in the provision of pharmacy services under its EXPRESS SCRIPTS trademark registered in the United States of America in 1993 (herein the “Trademark”).

The Complainant also operates and maintains the “www.express-scripts.com” website along with at least 25 other domain names, each comprised of a written variation of express-script alone or in combination with pharmacy as in expresscriptspharmacy.com.

The Complainant has successfully engaged two previous recourses under UDRP proceedings in which the panels have found that Complainant had legitimate rights in its Trademark. See Express Scripts, Inc. v. Roy Duke et. al, WIPO Case No. D2003-0829 and Express Scripts, Inc. v. Kal Kuchora, WIPO Case No. D2005-1164.

The domain name in dispute was registered by Respondent on July 1, 2005. The Complainant recently discovered that Respondent registered and was using the domain name in dispute. After investigating, the Complainant realized that Respondent was using the domain name in dispute to redirect Internet users on Respondent’s website, at the domain name in dispute, to other parties who offer directly competing pharmacy related goods and services through search category headings containing various links to said parties. Several of these links, designated under headings such as “Sponsored Links”, sell and offer for sale products and services that directly compete with those of Complainant.

Respondent’s website provides additional links to websites for third party providers of various other services along with the activation of different “pop-up” advertisements. Furthermore Respondent’s site contains a prominent “Search” box on the home page so that if a consumer goes directly to Respondent’s search mechanism and enters a specific brand designation, Respondent’s site will immediately display links to the expected product, its pricing and availability of the third party, not that of the Complainant.

 

5. Parties’ Contentions

A. Complainant

The Complainant represents that for over twenty years it has expended, and continues to expend a substantial amount of resources, money, time and effort promoting, marketing, advertising and building its registered Trademark brand services and contends that with consumer recognition and goodwill it has become extremely valuable and famous.

The Complainant submits that the domain name in dispute is both virtually identical and confusingly similar to its registered Trademark and relies on two decisions which support his contention, OBH, Inc. v. Spotlight Magazine, Inc., 86 F. Supp.2d 176, 187 (W.D.N.Y. 2000) (“intentional copying of the trademark gives rise to a presumption of a likelihood of confusion”); Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. Complainant further adds that the omission of the letter “t” in the said domain name does not distinguish it from the Trademark and is irrelevant, as found in UDRP decisions which qualified such practice as “typo-squatting” or “typo-piracy,” and does not create a new or different mark; see Hobson, Inc. v. Carrington, WIPO Case No. D2003-0317, Six Continents Hotels, Inc. v. John Zuccarini, WIPO Case No. D2003-0161; Dell Computer Corp. v. Clinical Evaluations, WIPO Case No. D2002-0423.

The Complainant contends that Respondent is using this similar domain name in dispute to exploit a common typing mistake on the part of Internet users again relying on UDRP precedent which have recognized this ease of confusion as satisfying a requirement of the Policy. See American Home Products Corporation v. Privateer Ltd., WIPO Case No. D2000-0455; ESPN v. West Coast Entertainment, Inc., NAF Case No. FA95047; Gorstew Ltd. & Unique Vacations, Inc. v. JJ Domains, NAF Case No. FA 96872 and CEC Entertainment, Inc. v. Momm Amed la, NAF Case No. FA95740.

The Complainant alleges that the Respondent has no legitimate rights or interest whatsoever in the domain name in dispute. By choosing to register a domain name that is virtually identical to Complainant’s Trademark Respondent has intentionally sought to confuse consumers, knowing full well that these actions would mislead and divert a large number of consumers seeking Complainant and its authentic website. Such actions by Respondent preclude a finding of a bona fide offering of goods and/or services or a legitimate non-commercial or fair use.

The Complainant represents that the Respondent has never sought nor received authorization or a license to use its valuable, famous and distinctive Trademark and cannot demonstrate that it has ever made any legitimate offering of goods or services under Complainant’s Trademark. On the contrary the domain name in dispute simply diverts Internet users to a web page with links directly competing with the Complainant’s activities in respect of pharmacy related goods and services. The absence of a disclaimer shows that Respondent is clearly trading on the fame and notoriety of the Trademark and such use cannot constitute a bona fide offering of goods and/or services. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi, WIPO Case No. D2000-0847.

According to Complainant, Respondent has no means to establish that it is or ever has been commonly known as “Express Scrips”, nor sought any registrations for any trade names, corporations, or trademarks and has no rights of any kind in the Trademark because Respondent has wrongfully misappropriated and infringed upon Complainant’s Trademark and goodwill and unlawfully generated commercial traffic and economic benefit to itself.

As it appears from the above, the Complainant submits that the Respondent is not making any legitimate non-commercial use of the domain name in dispute.

The Complainant contends that Respondent registered and is using the domain name in dispute in bad faith which bad faith conduct is thus substantiated in the following five grounds:

First, the Respondent is intentionally attempting to divert, for commercial gain, Internet users to one or more competing websites and the Complainant contends that such act of typo-squatting presents evidence of bad faith. See Dell Computer Corp. v. Clinical Evaluations, WIPO Case No. D2002-0423; Briefing.com Inc. v. Cost New Domain Manager, WIPO Case No. D2001-0970. Furthermore the diversion of users to Respondent’s website to generate traffic and sales commissions for its own commercial benefit, amounts to a conduct uniformly recognized by earlier UDRP panel decisions to be in bad faith. See Gow-Mac Instrument. Co. v. Gow Mac Instrument Co., FA 95166 (Nat. Arb. Forum); Labrada Bodybuilding Nutrition, Inc. v. Bob Garrett, FA 94293 (Nat. Arb. Forum ); Wellness Int’l Networkv. Appostolics.com, FA 96189 (Nat. Arb. Forum ); and Net2phone v. Dynasty System Sdn Bhn, WIPO Case No. D2000-0679.

Second, Respondent’s use of a virtually identical domain name is designed to disrupt and harm Complainant’s business in diverting potential users away from Complainant’s authentic website and improperly reaping commercial profit for him or herself. This conduct has caused and will continue to cause Complainant commercial damage.

Third, the Respondent has no rights whatsoever in or to the domain name in dispute, and bad faith is further demonstrated by Respondent’s unauthorized adoption and use of the domain name in dispute. See Veuve Clicquot Ponsardin, Maison Fondйe en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226.

Fourth, Respondent’s knowledge of Complainant’s long and continuous use of its Trade-mark at the time of registration of the domain name in dispute, on July 1, 2005, nearly twenty years after the adoption by Complainant of its Trademark in 1986 and after Complainant’s services began to receive numerous endorsements and consumer and industry popularity and recognition, falsely imply to prospective consumers that Complainant owns, operates the website or sponsors or endorses activities under the domain name in dispute.

Fifth, it appears from a Reverse Whois search for Respondent’s name, “Bella Gia,” that Respondent has registered in excess of 30 domain names incorporating well-known trademarks of various companies, thus engaging in a pattern of bad faith activities.

B. Respondent

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

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:

(i) The domain name registered by the respondent 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. Identical or Confusingly Similar

Considering that the Complainant has been using the Trademark EXPRESS SCRIPTS in association with pharmacy home delivery and mail order services for 20 years and has sought and obtained registration thereof in the United States, the Complainant has clearly established that it has rights and benefits under the Trademark.

The domain name in dispute differs from the Trademark only in respect of the absence of the “t” in the word scripts and the presence “.com”. As established in the UDRP decisions cited by the Complainant, such typo difference and addition of a top level domain name does not deter from the fact that the domain name in dispute is identical or confusingly similar. This is fully supported by the presumption of likelihood of confusion arising out of Respondent’s intentional copying of the Trademark as it appears from his or her finding of a variation that had not been contemplated by the Complainant in its registration of 25 variations of its domain name.

The first criterion has been met.

B. Rights or Legitimate Interests

Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true.

The Complainant has made a prima facie case that the Respondent lacks right or legitimate interest in the domain name in dispute by showing that the Respondent has never been known by the name “express-scrips” or the domain name in dispute and making any legitimate non-commercial or fair use of the domain name in dispute. Furthermore, Complainant has never given a license nor in any way authorized Respondent to make use of Complainant’s Trademark.

There is no evidence that Respondent has ever engaged in any legitimate business under the Complainant’s Trademark. Upon considering the about 25 variations of Express Scripts registered as domain names by the Complainant, it is the view of this Panel that the Respondent went to the trouble of devising another variation not contemplated by the Complainant and this cannot be a coincidence and is not a bona fide commercial use of a trademark.

The second criterion has been met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.

It should be noted that the circumstances of bad faith are not limited to the above.

The Complainant contends that the domain name was registered and used in bad faith.

The registration of the domain name in dispute took place on July 1, 2005, at a time that the Trademark of Complainant had been extensively used and according to the evidence, has generated substantial goodwill associated therewith, if it has not become famous.

By the similarity of the domain name in dispute with the Trademark, the finding and registration of said domain name by the Respondent notwithstanding the US Trademark registration, extensive use and the numerous variations thereof registered as other domain names, the Panel considers that this registration is not inadvertent nor legitimate but has been done with the knowledge of the Trademark of the Complainant and therefore the Panel concludes that the registration of the domain name in dispute was done in bad faith.

The evidence is abundant in respect of Respondent’s use of the domain name in dispute to divert to one or more competing websites, Internet visitors who presumably were attempting to visit the Complainant’s website. Furthermore, the similarity of the domain name in dispute with the Trademark and several domain names of the Complainant demonstrates a design to disrupt and harm Complainant’s business by the diversion of visitors to Complainant’s website to other competing parties. The opportunistic bad faith resulting from the absence of any right of the Respondent in the Trademark or the domain name in dispute, the absence of any authorization or license from the Complainant to register the domain name demonstrates bad faith by the Respondent in adopting and using the domain name in dispute.

Further evidence of the use of the domain name in dispute in bad faith comes from the fact that the Respondent relies on the continuous and extensive use of the Trademark by the Complainant, the goodwill, endorsement as well as consumer and industry popularity and recognition to falsely imply to visitors attempting to reach Complainant’s website that the Complainant is the source of goods and services offered through the links and sponsors of the Respondent.

Finally, the more than 25 domain names incorporating well-known marks by apparently the same respondent under the name Bella Gia suggests a pattern of bad faith behavior.

This Panel concludes that the domain name in dispute has been registered in bad faith and is used in bad faith by the Respondent.

The third criterion has been met.

 

7. Decision

The Panel concludes that:

(a) the domain name <express-scrips.com> is confusingly similar to the Complainant’s Trademark;

(b) the Respondent has no rights or legitimate interests in the domain name in dispute;

(c) the domain name in dispute has been registered and is being used in bad faith.

Therefore, in accordance with Paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <express-scrips.com> be transferred to the Complainant.

J. Nelson Landry Presiding Panelist
Lynda J. Zadra-Symes Panelist	Lone Prehn Panelist

Dated: May 23, 2006