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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Express Scripts, Inc. v. Windgather Investments Ltd. / Mr.
Case No. D2007-0267
1. The Parties
1.1 The Complainant is Express Scripts, Inc. of Maryland Heights, Missouri, United States of America, represented by Bryan Cave, LLP, United States of America.
1.2 The Respondent is Windgather Investments Ltd. / Mr. Cartwright of St. John's,
Antigua and Barbuda.
2. The Domain Name and Registrar
The disputed domain name <express-scrips.com> is registered with eNom.
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2007. On February 23, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On February 23, 2007, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 5, 2007. 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”).
3.2 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced March 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for the Response was March 27, 2007. The Response was filed with the Center outside the permitted time on April 5, 2007. On April 9, 2007 the Respondent filed a short Supplemental Filing in reply to the Response.
3.3 The Center appointed Matthew Harris, Roberto Bianchi and David M. Kelly
as panelists in this matter on April 16, 2007. 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
4.1 The Domain Name had previously been the subject of UDRP proceedings between the Complainant and another entity which, like the Respondent, resided in St John’s, Antigua. A WIPO panel ordered the transfer of the Domain Name to the Complainant in 2006; however, when the registration expired, the Domain Name was not renewed. The Complainant contends that its failure to renew the registration was as a result of miscommunication between itself and the then registrar of the Domain Name. This lapse is believed by the Complainant to have occurred in or around July 2006. The Domain Name was registered in the name of the Respondent on September 16, 2006.
4.2 The Complainant is one of the largest pharmacy benefit management companies in North America. The Complainant provides pharmacy services to over 50 million members and has been operating under the mark EXPRESS SCRIPTS for over 20 years.
4.3 EXPRESS SCRIPTS was registered as a trademark for “pharmacy home delivery services”, “pharmacy services and pharmacy mail order services” and “administering a pharmacy reimbursement program” on December 7, 1993.
4.4 Complainant owns over 20 domain names incorporating the words EXPRESS SCRIPTS and slight variations on those words.
4.5 The Respondent is a small company whose claimed business is registering and selling domain names that are abandoned by their previous registrants.
4.6 The Domain Name leads to a website that contains numerous links for services ranging from engagement rings to working from home.
4.7 At the time of the Complaint, the site also prominently displayed hyperlinked
headings and categories relating to pharmaceutical products. At the time of
this Decision, these links had been apparently removed from the home page of
5. Parties’ Contentions
5.1 The Complainant’s factual and legal contentions can be summarised as follows:
Identical or Confusingly Similar
5.2 The Complainant contends that for 20 years, it has expended a substantial amount of resources, money and time promoting, marketing and building consumer recognition and goodwill in the “extremely valuable and famous” brand EXPRESS SCRIPTS. The Disputed Domain is identical to this brand name, save for the omission of the letter “t” towards the end of the name.
5.3 A mere omission or minor misspelling such as this omission of the letter
“t” does not create a new or different mark in which the Respondent
has rights (see Hobson, Inc. v. Carrington, WIPO
Case No. D2003-0317).
5.4 Such insignificant modifications to trademarks are commonly referred to
as “typo-squatting” or “typo-piracy” since such conduct
seeks to wrongfully take advantage of errors by users in typing domain names
(see Six Continents Hotels, Inc. v. John Zuccarini, WIPO
Case No. D2003-0161, among others). These domain names are confusingly
similar by definition; it is this similarity which makes them attractive.
Rights or Legitimate Interests
5.5 The Complainant contends that the Respondent has no legitimate rights or interests whatsoever in the Domain Name. The Respondent wrongfully chose to register a domain name that is virtually identical to the Complainant’s EXPRESS SCRIPTS mark and in doing so has knowingly and intentionally sought to confuse consumers seeking the Complainant and its website.
5.6 This intention precludes a finding of a bona fide offering of goods and/or services or a legitimate non-commercial or fair use.
5.7 The Respondent is not in any way associated with the Complainant and has never sought nor received authorization to use the EXPRESS SCRIPTS mark. The Respondent has not made any legitimate offering of goods or services under the Complainant’s EXPRESS SCRIPTS mark. Instead, it diverts Internet users to a page that offers, among other things, directly competing products. The Respondent does not disclose its relationship, or lack thereof, with the Complainant on the disputed site.
Registered and Used in Bad Faith
5.8 The Complainant contends that the Respondent is intentionally attempting
to divert, for commercial gain, Internet users to one or more competing websites
in an effort to confuse and mislead customers. This “typo-squatting”
has been recognized as use in bad faith (see Briefing.com Inc. v.
Cost New Domain Manager, WIPO Case
No. D2001-0970). Moreover, where a respondent is found to be diverting users
to its website (and/or websites of associated third parties), such conduct is
uniformly recognized by administrative panels as bad faith (see Net2phone
v. Dynasty System Sdn Bhn, WIPO Case
No. D2000-0679, among others).
5.9 The Respondent’s conduct is designed to disrupt and harm the Complainant’s business by diverting potential customers away from the Complainant’s authentic website. This causes commercial detriment in terms of consumer confusion, lost sales and goodwill, and the loss of the general ability to communicate and transact with existing and potential customers.
5.10 The Complainant contends that the Respondent’s complete lack of
intellectual property rights in the Domain Name further demonstrates bad faith.
Where a domain name is so obviously connected to a particular product or service
and the registrant is found to have no connection to that product or service,
panels will find the registrant guilty of “opportunistic bad faith”
(see Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group
Co., WIPO Case No. D2000-0163, among
5.11 The Respondent plainly knew of the mark EXPRESS SCRIPTS at the time of registration. The Domain Name was registered in 2006, 20 years after the Complainant began using the mark and 14 years after the registration of the trademark. By the time of the registration, the Complainant’s services had already begun to receive consumer and industry popularity and recognition. It would “stretch credibility” for the Respondent to claim it had not heard of the mark at the time of registration.
5.12 In any event, the registration of the EXPRESS SCRIPTS trademark is constructive notice to the Respondent and all other parties of the existence of the mark and the Complainant’s rights in respect of it.
5.13 A reverse Whois search revealed over 500 domain name registrations owned, used and/or connected with the Respondent which incorporate well known marks of various companies (<nationalgeographic.org>, <americanexprexx.com>, etc.). The links to each directory site appear to be somewhat tailored by the Respondent according to the goods/services of the marks being infringed. This demonstrates a pattern of bad faith registrations.
5.14 The Respondent’s factual and legal contentions in its late Response can be summarised as follows:
(i) The Domain Name was previously owned by the Complainant and they chose not to renew their registration. This gave the Respondent, or anyone else, the right to register the Domain Name.
(ii) The Respondent was attracted to the words “express scrips”.
(iii) “Scrip” means a voucher or substitute for currency. “Script” has various meanings mainly relating to writing. Therefore, the word “scrip” has a completely different meaning from the word “script”.
(iv) The Respondent had never heard of EXPRESS SCRIPTS and the name does not suggest a link with online drugs.
(v) While domain names are waiting to sell, they are “parked”.
The parking company places advertisements on the site like a billboard. These
advertisements are generated by the parking company. The Respondent has spoken
to the parking company for the Domain Name and has asked them to ensure that
no advertisements are placed which relate to the Complainant’s business.
6. Discussion and Findings
Status of the Response
6.1 Before addressing the substance of this case, it is convenient to first address to what extent the Panel should take into account the late Response submitted by the Respondent and the Complainant’s reply to that document.
6.2 In a number of early cases under the UDRP, panels
allowed a fair degree of latitude to Respondents who filed a later Response.
For example, in Talk City, Inc. v. Michael Robertson, WIPO
Case No. D2000-0009, a Response that was only two days late was considered
by the panel.
6.3 However, in DK Bellevue, Inc. d/b/a Digital
Kitchen v. Sam Landers, WIPO Case No.
D2003-0780 and 1099 Pro, Inc. v. Convey Compliance Systems, Inc.,
WIPO Case No. D2003-0033, panels have
held that late responses should be disregarded “absent good cause”.
The issue was also addressed in HQ UK Limited v Head Quarters, WIPO
Case No. D2003-0942. In that decision, the panel noted that an “exceptional
case” was required under paragraph 10(c) of the Rules for extensions of
time under the Rules and expressed the view that the circumstances that must
be shown for a late submission to be accepted are at least as strict. In that
decision, the panel went on to note as follows:
“Further, the comments
of the majority of the panelists in 1099 Pro, Inc. v. Convey Compliance Systems,
Inc., WIPO Case No. D2003-0033,
would seem to suggest that panels are now likely to take a stricter view on
whether a party has shown good cause than might have been the case when the
UDRP process was still relatively new”.
6.4 Similarly in the case of Museum of Science
v Jason Dare, WIPO Case No. D2004-0614,
“many panels have disregarded late filed responses making clear that it
is important to apply the Rules as written, absent a good reason, otherwise
parties will feel free to disregard deadlines and Respondents will regularly
submit late responses”.
6.5 These decisions led the panel in Fashiontv.com
GmbH v. Mr. Chris Olic, WIPO Case No.
D2005-0994 (and in marked contrast to the decision in Talk City, Inc.
v. Michael Robertson, WIPO Case No. D2000-0009)
to refuse to consider a Response that was only two days late.
6.6 What then are the reasons given by the Respondent for the delay in this case? The Respondent merely declares in the Response that that “I believe the request for a response must have fallen into my spam folder”. The Respondent does not indicate why he thinks the email must have fallen into his spam folder, nor does he provide further evidence of what in fact happened in this case.
6.7 In the view of the Panel, this is not an adequate explanation for the delay in this matter and it does not provide a good reason why the Panel should consider the Response. Nevertheless, the Panel has in this case decided to take into account the contents of the Response. The reasons for this are twofold. First, the Complainant, whilst complaining in its Supplemental Filing that the Response is late, does not submit that the Panel should not consider it. Second (and far more significant), as will become apparent in this decision, it does not in fact make a difference to the outcome of this case.
6.8 The Panel would add that whilst it has been prepared on this occasion to take into account the submissions of the Respondent in the Response, the Response fails to comply with the requirements of paragraph 5(b) of the Rules (for example, no statement of truth has been made to conclude the Response). This is something that the Panel has very much borne in mind when considering the evidential weight of the assertions of fact made by the Respondent in this document.
6.9 It has not proved necessary to consider further the additional submissions of the Complainant in its Supplemental Filing to reach a decision in this matter.
What needs to be proved
6.10 Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(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.
The Panel will discuss these elements one by one.
A. Identical or Confusingly Similar
6.11 The EXPRESS SCRIPTS mark is registered in the United States of America in various classes relating to pharmaceutical products and services in the name of the Complainant. The Panel is therefore satisfied that the Complainant has rights in this mark.
6.12 The Panel has no difficulty in finding that the Domain Name is confusingly similar to the registered trademark of the Complainant. Although, as the Respondent correctly points out, the words “scrip” and “script” have different literal meanings, the two are visually very similar and phonetically almost indistinguishable.
B. Rights or Legitimate Interests
6.13 Paragraph 4(c) of the Policy sets out examples of circumstances that demonstrate rights or legitimate interests in a domain name. The Complainant asserts that the Respondent is neither known under nor linked to the name “Express Scrips”, nor was he at any time authorised by the Complainant to use the mark EXPRESS SCRIPTS (paragraph 4 (c)(ii) of the Policy). The Respondent does not deny these assertions in its Response.
6.14 It is clear that no legitimate non-commercial or fair use is being made of the Domain Name without intent for commercial gain (paragraph 4 (c)(iii) of the Policy). The Respondent’s business is the registration and sale of expired domain names which by definition must signify that there is commercial gain involved.
6.15 The Panel also accepts that before notice of the dispute began, the Domain Name was not being used by the Respondent in connection with a bona fide offering of goods and services (paragraph 4 (c)(i) of the Policy). The Respondent had apparently “parked” the Domain Name until it could be sold and the advertisements on the site were generated by the parking company. In this way, the Respondent allowed the parking company free reign over content.
6.16 The Panel therefore finds that the Respondent has no legitimate rights or interests in the Domain Name and that the Complainant has therefore satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.17 According to the Respondent’s own submissions in the Response, it made a conscious decision whether or not to register the Domain Name. For example, it asserts that the reason why it registered the Domain Name is that it was “attracted to it by the words express scrips”. However, the Panel on the evidence before it does not accept that (as the Respondent appears to maintain) this was the likely sole or main reason for registration in this case.
6.18 The Respondent explains that the word “scrip” signifies something that is a substitute for currency that is not legal tender and the Panel accepts that “express” and ”scrips” might well be considered in isolation to be ordinary English words with generic meaning. However, together they are an unusual combination of words. They have no obvious meaning when used together except as a misspelling of the well-known trademark of the Complainant.
6.19 The Panel is also prepared to accept for present purposes that the Respondent is in the business of registering domain names “that have been abandoned by the original registrants”. Nevertheless, without a more compelling explanation as to why this particular domain name was chosen, and given that the Respondent appears to contend that it made a positive decision to register this Domain Name, it seems most likely that the Domain Name was chosen with its associations with the Complainant in mind.
6.20 Any doubt in the minds of the Panel as to the motives of the Respondent in registering the Domain Name is dispelled by the fact that the Complainant puts forward evidence of the fact that the Respondent has a history of registering domain names that on their face appear to involve misspellings or mistypings of the names of trademarks, companies or businesses of third parties. These domains include (but are not limited to):
The Respondent does not deny in its Response that it has registered these domain names and offers no explanation as to why it did so.
6.21 The only material before the Panel that points in the other direction is the bare assertion found in the Response to which a Mr “Stuart Cartwright” has put his name that:
“I has [sic] never heard of express-scripts and the name does not subject [sic] a link with online drugs.”
6.22 The UDRP is not intended to be equivalent to court proceedings with formal rules of evidence. A panel may well be prepared in some cases to treat statements made in a response as evidence for the purpose of the UDRP. However, the Panel is not in this case to treat this statement as “evidence” of any weight in this case where the Response does not contain the statement of truth required by paragraph 5(b) of the Rules. Further, this statement raises as many questions as it answers. Who exactly is Mr Cartwright and what position does he occupy in the Respondent company? Why is his particular knowledge or lack of knowledge of the existence of the Complainant necessarily relevant here?
6.23 Therefore, the Panel concludes on the basis of the material before it, that the Respondent was in all likelihood aware of the Complainant at the time that the Domain Name was registered. Accordingly, it finds as a matter of fact for the purpose of these proceedings that this is the case.
6.24 Given this finding of fact, the Panel accepts the Complainant’s contention that the Respondent’s activity falls at least within paragraph 4(b)(iv) of the Policy. Paragraph 4(b) of the Policy lists particular circumstances, without limitation, that if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith.
6.25 The circumstances identified by Paragraph 4(b)(iv) are that:
“by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [its] website or location or of a product or service on [its] website or location.”
6.26 In this case, the Respondent admits that it registered the Domain Name with a “parking company”. A parking company usually generates “click through” revenues by attempting to persuade those that come across the website to click on links to companies that will make a payment for the receipt of that Internet traffic. Frequently, the parking company will share these revenues in some manner with the owner of the domain name.
6.27 The Complainant’s evidence shows that at the time of the filing of the Complaint the website operating from the Domain Name contained advertisements and links to various websites dealing with subjects that range from Airline Tickets to Credit reports. However, of particular concern to the Complainant were “sponsored links” to prescription and pharmaceutical related websites.
6.28 The Respondent contends that the advertisements in this case were “generated by the parking company”. The implication is that the Respondent was not responsible for the content of these advertisements. This may well be correct but in the Panel’s view this makes no difference. The Respondent placed the Domain Name with a parking company in circumstances where it would have been aware that those using the Domain Name were likely to have mistyped the Complainant’s name. It would have been aware that the “parking company” website would generate advertisements of some sort and given the similarity of the Domain Name to the Complainant’s name, it should have been of no surprise to the Respondent that links to prescription and pharmaceutical website would be generated.
6.29 The Complainant also contends that the Respondent is “presumably
compensate[d]” by the operators of the sponsored websites for this traffic.
The Respondent does not deny this and given the manner in which “parking
companies” generally operate, the Panel is prepared to accept on this
occasion that this assertion is correct. However, even if it were not correct,
it would not matter. The requirements of paragraph 4(b)(iv) do not require the
owner of the domain name to be the entity that commercially gains from the diversion
(see for example, V&S Vin&Sprit AB v. Corinne Ducos, WIPO
Case No. D2003-0301; PepsiCo, Inc. v. Ali Khan, WIPO
Case No. D2004-0292; and V&S Vin&Sprit AB (publ) v. Paul Stephey,
WIPO Case No. D2005-0992).
6.30 In the circumstances, the Panel has little difficulty in coming to the
conclusion that the Domain Name in this case has been registered and used in
bad faith and that the Complainant has therefore satisfied the requirements
of paragraph 4(a)(iii) of the Policy.
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, <express-scrips.com>, be transferred to the Complainant.
Matthew S. Harris
David M. Kelly
Dated: April 26, 2007