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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Medco Health Solutions, Inc. v. Digi Real Estate Foundation

Case No. D2006-0472

 

1. The Parties

The Complainant is Medco Health Solutions, Inc., New Jersey, United States of America, represented by an internal authorized Representative.

The Respondent is Digi Real Estate Foundation, Panama City, Panama.

 

2. The Domain Name and Registrar

The disputed domain name <medcohalth.com> is registered with Gunga Galunga, Incorporated (an eNom owned registry credential).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2006. On April 13, 2006, the Center transmitted by email to Gunga Galunga, Incorporated a request for registrar verification in connection with the domain name at issue. On April 28, 2006, eNom, Inc. transmitted by email to the Center on behalf of Gunga Galunga, Incorporated its verification response informing that Gunga Galunga is “an eNom owned registry credential” and 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 April 28 , 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2006.

The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on June 6, 2006. 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 leading provider of pharmacy benefit management services in the United States, where it operates one of that country’s largest mail order pharmacy operations. Complainant’s clients are sponsors of pharmacy benefit plans and Complainant assist its clients to moderate the cost and enhance the quality of prescription drug benefits provided to the customers of Complainant’s clients. In 2004, Complainant managed 503 million prescriptions through both its mail service pharmacies and its nationwide network of approximately 60,000 participating retail pharmacies. Complainant’s Internet pharmacy website processed nearly 17 million prescriptions. Complainant is responsible for providing pharmaceutical healthcare services to approximately 60 million Americans.

Complainant has been using the term MEDCO in its name and trademarks since 1984 in connection with its pharmacy benefit management services, online pharmacy, drug utilization review, disease management and health care and pharmaceutical information services, as well as in connection with various publications in these fields.

Complainant owns several registrations and applications in the United States for trademarks containing the term “Medco” and “Medcohealth”, as follows:

Registration No. 2,894,558 for MEDCO;

Registration No. 2,755,838 for MEDCOHEALTH.COM;

Registration No. 2,736,401 for MEDCOHEALTHCONSULTANT.COM;

Registration No. 2,744,576 for MEDCOHEALTH;

Registration No. 2,948,760 for MEDCO.COM;

Registration No. 2,888270 for MEDCOHEALTH LIVE LIFE WELL (and Design);

Registration No. 3,061,048 for MEDCO (Stylized);

Registration No. 3,051,314 for MEDCO HEALTH SOLUTIONS;

Application No. 78/336,898 for MEDCO PRESCRIPTION PLANS;

Application No. 78/637,912 for MEDCO ADVANTAGE RETAIL;

Application No. 78/646,498 for MEDCO PRESCRIPTION SAVINGS PLAN;

Application No. 78/730,865 for MEDCO RX DISOUNT PROGRAM.

Complainant also owns various domain names incorporating the MEDCO trademark, including <medco.com>, <medcohealth.com>, <medcorx.com/.net/.org/.info/.biz> and <medcoprescriptionplans.com/.net/.org/.info/.biz>. Complainant maintains an active website for the use of the customers of its clients (and which the general public can view as well).This website provides a set of features and capabilities, including the ability to handle first-fill prescriptions, refills and renewals for mail order, as well as transfers from retail pharmacies to mail order.

Complainant put Respondent on notice of Complainant’s claim by virtue of a demand letter dated November 15, 2005, which was sent via e-mail, regular mail, and CMRRR. The demand letters, sent CMRRR, have been returned due to an unknown address. Such demand letter was also sent to Registrar via e-mail to Gunga Galungo, Inc., mail to: c/o%20info@enom.com, c/o info@enom.com on November 23, 2005.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that Respondent does not own a trademark or service mark registration that is identical, similar or in any way related to the <medcohalth.com> domain name or Complainant’s MEDCO trademarks. Upon information and belief, Medcohalth is not Respondent’s personal name, and Respondent is not known to the public under the name Medcohalth.

Complainant also contends that Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to use any of the MEDCO Marks or to register the <medcohalth.com> domain name.

Complainant also contends that Respondent is not using and has not used the contested domain name <medcohalth.com> in connection with any bona fide offering of goods or services. Rather, that Respondent is using the disputed domain name in an attempt to trade on Complainant’s reputation and goodwill by offering competing online pharmacy services through sponsored links on a rotating basis, including ‘Related Categories’ which lists ‘Medco Health Solution’ and ‘Medco Health Solutions’ (not related to Complainant’s site).

Complainant argues that these activities preclude Respondent from claiming that it is making a bona fide offering of goods and services within the meaning of ICANN’s Uniform Domain Name Dispute Resolution Policy and that the use of a domain name in such a way as to create a likelihood of confusion with Complainant’s trademarks is itself evidence of bad faith.

Complainant also argues that because its demand letter to Respondent was returned due to an unknown address, this is evidence of efforts by the Respondent to conceal the true ownership, identity and whereabouts of the registrant of the disputed domain name, something which would constitute further evidence of Respondent’s bad faith.

Complainant requests that the registration of Respondent’s domain name <medcohalth.com> be transferred to Complainant.

B. Respondent

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

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy the Complainant must prove each of the following:

(i) That the domain name registered by the Respondent is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and

(ii) That the Respondent has no rights or no legitimate interests in respect of the domain name; and

(iii) That the domain name has been registered and is used in bad faith.

A. Identical or Confusingly Similar

The Complainant has several registered trademarks containing the terms “Medco” and “Medcohealth” which substantially pre-date the Respondent’s registration of the disputed domain name.

The only difference between the disputed domain name and the Complainant’s trademarks is the deletion of the letter “e” from the word “health”, which is not enough to distinguish the disputed domain name from Complainant’s trademarks.

The Panel finds that the domain name is confusingly similar to Complainant’s registered trademarks MEDCO and MEDCOHEALTH. In this context, the Panel finds that the domain name <medcohalth.com> meets the requirement of the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Panel understands that under paragraph 4(a)(ii) of the Policy the overall burden of proof is on Complainant. However, once the Complainant presents prima facie evidence that the Respondent lacks rights or legitimate interest the burden shifts to the Respondent. See Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121 and Belupo d.d. v. Wachem d.o.o., WIPO Case No. D2004-0110.

Complainant’s registration and use of the trademarks MEDCO and MEDCOHEALTH pre-date the Respondent’s registration of the confusingly similar domain name <medcohalth.com>. The Panel agrees that it was indeed likely that the Respondent was aware of the Complainant’s trademarks at the time of registration and subsequent use of the disputed domain name.

In addition, it has been shown that Respondent appears not to run any business associated with the disputed domain name. Accordingly, the use of the domain name <medcohalth.com> is not considered legitimate use in connection with a bona fide offering of goods and services.

Accordingly, the Panel finds the Complainant has presented prima facie evidence in relation to the second element of the Policy.

Respondent has not filed any Response to the Complaint and thus has not provided any other evidence or elements to justify any rights or legitimate interest in connection with the disputed domain names. Therefore, the Panel has found no indication in the evidence it received that any of the circumstances described in Paragraph 4(c)(i)-(iii) of the Policy could apply to the present matter.

Given the circumstances the Panel finds that Respondent has no right or legitimate interest in respect of the disputed domain name pursuant to Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The suppression of the letter “e” in the word “health” made in Respondent’s domain name created a word (“halth”) without meaning. This is a clear indication that such word was created in order for the Respondent to benefit from people misstyping the Complainant’s domain name <medcohealth.com>. The Panel understands that typosquatting is per se an indication of bad faith, as already decided, in the cases, Bang & Olufsen a/s v. Unasi Inc, WIPO Case No. D2005-0728 and The Nasdaq Stock Market, Inc. v. Act One Internet Soluctions, WIPO Case No. D2003-0103.

Typosquatters can be very creative and Panels have found bad faith where Respondent engaged in several forms of typosquatting : (a) deleting a letter: Playboy Enterprises International Inc v. SAND WebNames-For Sale, WIPO Case No. D2001-0094 <plaboy.com> as opposed to PLAYBOY; News Group Newspapers Limited and News Network Limited v. Mamm Amed la, WIPO Case No. D2000-1623 <pag3.com> as opposed to page3.com; (b) adding a letter: AT&T Corp. v. Global Net 2000, Inc., WIPO Case No. D2000-1447 <attt.net> as opposed to ATT; Google, Inc. v. Namarental.com and Leonard Bensonoff, WIPO Case No. D2001-0060 <ggoogle.com> as opposed to Google; (c) adding “www”: Pig Improvement Company, Inc. v. Platinum Net, Inc., WIPO Case No. D2000-1594 <www.pic.com> as opposed to PIC; General Electric Company v. Fisher Zvieli, a/k/a Zvieli Fisher, WIPO Case No. D2000-0377 <wwwge.com> as opposed to GE; (d) multiple misspelling: Eddie Bauer, Inc. v. John Zuccarini aka Cupcake Party, WIPO Case No. D2001-0224 <eddiebaurer.com> and <eddiebaur.com> as opposed to Eddie Bauer.

The fact that the Respondent is operating under the disputed domain name a business competing with the Complainant is also an indication of bad faith. As decided in the case Florists’ Transworld Delivery, Inc. v. BBIKOREA, NAF Case No. FA0204000109572 (Nat. Arb. Forum, May 22, 2002), a Respondent does not have legitimate interest in domain name incorporating Complainant’s trademark when using it to compete with Complainant. In America Online, Inc. v. Xian feng Fu, WIPO Case No. D2000-1374, the panel considered it unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business. And in The Chip Merchant, Inc. v. Blue Star Electronics, d/b/a Memory World, WIPO Case No. D2000-0474, the Respondent’s use of confusingly similar domain name to sell competing goods was held to be illegitimate and not a bona fide offering of goods.

The Panel also finds that Respondent has engaged in efforts to conceal its whereabouts, something that constitute further evidence of bad faith. Among others, the Panel cites as precedent Sterling Jewelers, Inc. v. InterMos and Cosmos 1, WIPO Case No. D2002-0899, in which an attempt to disguise Respondent’s true identity and whereabouts was found to be an additional indication of bad faith.

Accordingly, the Panel determines that Respondent has acted in bad faith within the meaning of Paragraph 4(b)(iii) and (iv) of the Policy.

 

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 <medcohalth.com> be transferred to the Complainant.

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Gabriel F. Leonardos
Sole Panelist

Dated: June 20, 2006