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Medco Health Solutions, Inc. v. Horoshiy, Inc. [2004] GENDND 1181 (27 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Medco Health Solutions, Inc. v. Horoshiy, Inc.

Case No. D2004-0625

1. The Parties

The Complainant is Medco Health Solutions, Inc., Franklin Lakes, New Jersey, United States of America, represented by Margery F. Nathanson, Esq., United States of America.

The Respondent is Horoshiy, Inc., Curacao, Netherlands Antilles.

2. The Domain Name and Registrar

The disputed domain name <medecohealth.com> (the “Domain Name”) is registered with iHoldings.com Inc. d/b/a DotRegistrar.com, Miami, Florida, United States of America (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 10, 2004. On August 12, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain name at issue. On August 17, 2004, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the Domain Name and providing his 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 August 18, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was September 7, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 10, 2004.

The Center appointed Assen Alexiev as the sole panelist in this matter on September 13, 2004. The Panel finds that it was properly constituted. The Panel submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph 7.

In accordance with Rules, Paragraph 11(a), the language of this administrative proceeding is English, being the language of the Domain Name Registration Agreement.

In accordance with the Rules, Paragraph 15, the projected decision date was September 27, 2004.

4. Factual Background

Complainant is the owner of the following trademark registrations in the United States of America:

- MEDCOHEALTH.COM, Reg. No. 2,755,838 for “on line pharmacy benefit management services” and “on line information services in the field of health care”;

- MEDCOHEALTH, Reg. No. 2,744,576 for “pamphlets, brochures, newsletters and journals in the field of health care and pharmaceuticals,” “drug utilization review services, mail order and on-line pharmacy services,” “pharmaceutical benefit management services, namely, administration of pharmacy benefit plans” and “medical services, namely, disease management services, information services in the fields of health care and pharmaceuticals”;  and

- MEDCOHEALTHCONSULTANT.COM, Reg. No. 2,736,401 for “on line information services in the field of health care and pharmaceuticals.”

5. Parties’ Contentions

A. Complainant

1. Respondent’s domain name <medecohealth.com> is confusingly similar to Complainant’s family of MEDCO Marks

Complainant is one of the leading providers of pharmacy benefit management (“PBM”) services in the United States and its mail order business is one of the nation’s largest mail order pharmacy operations.  Complainant is retained by sponsors of pharmacy benefit plans to manage the pharmacy benefits for their plan members.  It assists its customers to moderate the cost and enhance the quality of prescription drug benefits provided to their members nationwide. Its PBM customers include medical insurance plans such as Blue Cross/Blue Shield; managed care organizations; large U.S. corporate employers, including many Fortune 500 companies; federal, state and local government agencies; third-party benefit plan administrators and labour unions. In 2003, Complainant’s net revenues were $34 billion. Complainant managed 532 million prescriptions, including 78 million prescriptions in its mail order pharmacies, during 2003.  Complainant is responsible for providing pharmaceutical healthcare services to approximately 60 million Americans.

In 2003, Complainant’s network of mail order pharmacies received a perfect accreditation survey score of 100 from the JCAHO (Joint Commission on Accreditation of Healthcare Organizations).  The Wilson Rx Pharmacy Survey ranked Complainant highest in overall customer satisfaction with prescription drug benefits and services three years in a row (2001, 2002 and 2003), and for mail order pharmacy services for 2002 and 2003.  J.D. Power and Associates ranked Complainant highest in overall customer satisfaction (pharmacy benefits and services) an unprecedented four times in a row (1998, 1999, 2000 and 2002; no award given in 2001).

Complainant has been using MEDCO in its name and marks (the “MEDCO Marks”) since 1984. “Medco” has been a predominant part of Complainant’s and its predecessors’ company and trade names since this time.  Additionally, Complainant and its predecessors have used the MEDCO Marks in connection with its PBM, 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 communicates with client members in many ways.  For example, when a client selects Medco as its pharmacy benefit manager, the client’s members receive “Welcome Kits,” which explain the prescription benefits.  In 2003, Complainant mailed approximately eight million such kits.  In addition, Complainant also communicates with members through the health management program, POSITIVE APPROACHES®.  This portfolio of programs is designed to identify and reduce health care costs, while improving the health and satisfaction of those members with chronic conditions.  Program participants receive, in addition to other things, educational materials based on the specific needs of each disease state to enhance the patients’ quality of life.  There were a total of approximately 1,900,000 mailings in 2003.  As a result of these and its other activities, Complainant has built up highly valuable goodwill in its MEDCO family of marks.       

Complainant is the sole and exclusive owner of the following trademark registrations in the United States Patent and Trademark Office, namely, MEDCOHEALTH.COM, Reg. No. 2,755,838; MEDCOHEALTHCONSULTANT.COM, Reg. No. 2,736,401 and MEDCOHEALTH, Reg. No. 2,744,576. 

Complainant is also the sole and exclusive owner of the following trademark applications in the United States Patent and Trademark Office, namely, MEDCO HOMERX, App. No. 78/363,994 for “pamphlets, brochures, newsletters and journals in the fields of health care and pharmaceuticals,” “drug utilization review services, mail order and on-line pharmacy services,” “pharmaceutical benefit management services, namely, administration of pharmacy benefit plans” and “medical services, namely, disease management services, information services in the field of health care and pharmaceuticals;” MEDCO (Stylized), App. No. 78/356,884 for “prerecorded magnetic cassette tapes, prerecorded compact discs, prerecorded CD-Roms and other prerecorded optical, electronic, and magnetic media featuring information relating to pharmacy benefit management services,” “pamphlets, brochures, newsletters and journals in the fields of health care and pharmaceuticals,” “drug utilization review services, mail order and on-line pharmacy services,” “pharmaceutical benefit management services, namely, administration of pharmacy benefit plans” and “medical services, namely, disease management services, information services in the field of health care and pharmaceuticals;” MEDCO PRESCRIPTION PLANS, App. No. 78/336,898 for “pamphlets, brochures, newsletters and journals in the fields of health care and pharmaceuticals,” “drug utilization review services, mail order and on-line pharmacy services,” “pharmaceutical benefit management services, namely, administration of pharmacy benefit plans” and “medical services, namely, disease management services, information services in the field of health care and pharmaceuticals;”  SOLUTIONS NEWS AND VIEWS FOR MEDCO HEALTH CLIENTS, App. No. 76/521,299 for “newsletters in the field of health care and pharmaceuticals;” MEDCO, App. No. 76/512,857 for “drug utilization review services, mail order and on-line pharmacy services,” “pharmaceutical benefit management services, namely, administration of pharmacy benefit plans” and “medical services, namely, disease management services;” MEDCO HEALTH SOLUTIONS, App. No. 76/444,589 for “drug utilization review services, mail order and on-line pharmacy services,” “pharmaceutical benefit management services, namely, administration of pharmacy benefit plans” and “medical services, namely, disease management services, information services in the fields of health care and pharmaceuticals;” MEDCOHEALTH LIVE LIFE WELL (and Design), App. No. 76/444,588 for “drug utilization review services, mail order and on-line pharmacy services,” “pharmaceutical benefit management services, namely, administration of pharmacy benefit plans” and “medical services, namely, disease management services, information services in the fields of health care and pharmaceuticals;” and MEDCO.COM, App. No. 76/387,334 for “on-line pharmacy benefit management services” and “on-line information services in the field of health care.”   

Complainant also owns various domain names incorporating the MEDCO mark, 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 millions of members of its clients (and which the general public can view as well), which provides a broad 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.  Representative web pages from Complainant’s website are attached hereto as Exhibit C.  In May 2004, there were 1.3 million unique visitors, including members and non-members, and a total of 23 million minutes spent by members on the site. 

Respondent’s domain name <medecohealth.com> is confusingly similar to Complainant’s family of MEDCO Marks because it is an obvious misspelling of the dominant portion of those marks, simply adding an extra “e” in the middle, combined with the generic designation “health,” which is part of Complainant’s trade name.  Panels have readily found confusing similarity based on such “typosquatting” activities.  See, e.g., Eddie Bauer, Inc. v. John Zuccarini aka Cupcake Party, WIPO Case No. D2001-0224 (<eddiebaurer.com> and eddiebaur.com v. EDDIE BAUER); Playboy Enterprises International Inc. v. SAND WebNames - For Sale, WIPO Case No. D2001-0094 (plaboy.com v. PLAYBOY); Google, Inc. v. Namerental.com and Leonard Bensonoff, WIPO Case No. D2001-0060; News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623 (pag3.com vs. PAGE3.COM); AT&T Corp. v. Global Net 2000, Inc., WIPO Case No. D2000-1447 (<attt.net> vs. ATT.NET).

2 The Respondent has no rights or legitimate interests in the Domain name

Upon information and belief, Respondent does not own a trademark or service mark registration that is identical, similar or in any way related to the <medecohealth.com> domain name or Complainant’s MEDCO Marks. 

Upon information and belief, MEDECOHEALTH is not Respondent’s personal name,  and Respondent is not known to the public under the name MEDECOHEALTH.

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 <medecohealth.com> domain name. 

Respondent is not and has not been using the contested domain name <medecohealth.com> in connection with any bona fide offering of goods or services.  Rather, Respondent is using the disputed domain name in an attempt to trade on Complainant’s reputation and goodwill by offering competing online pharmacy services.  These activities preclude Respondent from claiming that it is making a bona fide offering of goods and services within the meaning of the Policy.  See, e.g., Florists’ Transworld Delivery, Inc. v. BBIKOREA, NAF Case No. FA0204000109572 (Respondent does not have legitimate interest in domain name incorporating Complainant’s trademark when using it to compete with Complainant); America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (“[I]t would be 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”); The Chip Merchant, Inc. v. Blue Star Electronics, d/b/a Memory World., WIPO Case No. D2000-0474 (Respondent’s use of confusingly similar domain name to sell competing goods held illegitimate and not a bona fide offering of goods).   

3. The Domain name has been registered and used in bad faith   

Upon information and belief, Respondent registered the domain name <medecohealth.com> with knowledge of Complainant’s MEDCO Marks, precisely because it is confusingly similar to Complainant’s trademark, in order to divert Internet users to its competing website. 

Panels have found bad faith where registrants engage in the kind of “typosquatting” involved here. 

Moreover, 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.  See, e.g., BrassRing, Inc. v. JCI Technologies, Inc., NAF Case No. FA 97154 (use of domain name to create likelihood of confusion with complainant’s family of marks is evidence of bad faith).

Complainant put Respondent on notice of Complainant’s claim by virtue of a demand letter dated April 26, 2004, a copy of which is attached as Exhibit E to the Complaint, which was sent via e-mail (returned), CMRRR and regular mail.  A signed certified mail receipt was received by Medco on June 14, 2004 (with an apparent signature date of May 9, 2004).  Respondent has never responded to this demand letter.  However, following receipt of this demand letter, on June 3, 2004, Respondent apparently changed the ownership information for this domain name from Henry Chan to the current registrant.

Such efforts to conceal the true ownership constitute further evidence of Respondent’s bad faith.  See, e.g., Sterling Jewelers, Inc. v. InterMos and Cosmos1, WIPO Case No. D2002-0899 (attempt to disguise Respondent’s true identity and whereabouts is additional indication of bad faith); Marian Keyes v. Old Barn Studios, Ltd., WIPO Case No. D2002-0687 (citing Respondent’s effort to conceal the name of the true owner of the domain name through use of account masking feature as support for conclusion of bad faith).

4. Conclusion

For all the foregoing reasons, Complainant asserts that the Domain name <medecohealth.com> registered by Respondent is identical or confusingly similar to a trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in or to the domain name, and that Respondent registered and is using the Domain Name in bad faith.  Accordingly, Complainant requests that the registration of Respondent’s domain name <medecohealth.com> be transferred to Complainant.

B. Respondent

The Respondent did not file a Response, so the Complainant’s contentions remained uncontested.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that, to justify transfer of a domain name, the Complainant must prove each of the following:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Respondent has registered and is using the Domain Name in bad faith.

In this case, the Center has employed all measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, Paragraph 2(a). The Notification of Complaint was sent to the address provided by the Respondent to the Registrar, by courier and by e-mail. As seen from the postal shipment tracking results, the postal address, provided by the Respondent, is incomplete. The Notification of Complaint was delivered by e-mail to the e-mail address provided by the Respondent.

Therefore, the Respondent was given a fair opportunity to present its case.

By Rules, Paragraph 5(b)(i), it is expected of a Respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”

In the event of a default, under Rules, Paragraph (14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”

As stated by the Panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “ Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent”. As stated by the Panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. … In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”

In this administrative proceeding, the Respondent’s default entitles the Panel to conclude that Respondent has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to take his decision on the basis of the statements and documents submitted by the Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainant has established its rights in the trademarks MEDCOHEALTH.COM and MEDCOHEALTH.

The Complainant also refers to several trademark applications in the USA, in order to establish his trademarks rights. Pending applications alone do not prove rights in a mark under Policy, Paragraph 4(a)(i), but these applications show that the Complainant has taken measures to protect his rights in a family of marks all containing the “MEDCO” element, the same being also the distinctive element of the Complainant’s corporate name.

The only difference between the Domain Name and the trademark MEDCOHEALTH.COM is the letter “e” after the first syllable in the Domain Name. This difference has very little effect on the overall impression made by the Domain Name, so the Panel is convinced that the Domain Name is confusingly similar to the trademark MEDCOHEALTH.COM of the Complainant.

For the same reasons, the Domain Name is also confusingly similar to the trademark MEDCOHEALTH, as it is an established practice under the UDRP to disregard the suffix “.com” for the purposes of the comparison under Policy, Paragraph 4(a)(i).

As the two trademarks MEDCOHEALTH.COM and MEDCOHEALTH are sufficient for the Complainant to succeed under the first element of the test, the Panel will not discuss the other trademarks and trademark applications of the Complainant.

B. Rights or Legitimate Interests

The Complainant contends that the Respondent does not own a trademark or service mark registration that is identical, similar or in any way related to the <medecohealth.com> domain name or Complainant’s MEDCO family of marks; that “Medecohealth” is not Respondent’s personal name,  and Respondent is not known to the public under the name “Medecohealth”; the 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 <medecohealth.com> domain name. 

The Complainant also contends that Respondent is not and has not been using the contested domain name <medecohealth.com> in connection with any bona fide offering of goods or services.  Rather, Respondent is using the disputed domain name in an attempt to trade on Complainant’s reputation and goodwill by offering competing online pharmacy services. These activities preclude Respondent from claiming that it is making a bona fide offering of goods and services within the meaning of the Policy.

Thus, the Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.

Once Complainant makes out a prima facie case under Policy, Paragraph 4(a)(ii), the burden shifts to the Respondent to rebut the showing by providing evidence that it has rights to or legitimate interests in the Domain Name. 

The Respondent, by its default, has chosen not to present the Panel with any allegations or documents in its defence despite its burden under Rules, Paragraph 5(b)(i) and 5(b)(ix) or the consequences that a Panel may extract from the fact of a default (Rules, Paragraph 14). If Respondent had any justification for the registering or using the disputed domain name, it could have provided it. In particular, Respondent has failed to contend that any of the circumstances described in Policy, Paragraph 4(c) - or any other circumstance - is present in its favour.

In fact, the only statement of the Respondent is his acceptance of the Registration Agreement with the Registrar, and the provision of his contact details. As is evident from the record of this administrative proceeding, the postal address of the Respondent was incomplete. A person who has rights and legitimate interests in a Domain Name would not prevent himself from getting informed about any developments with his domain name registration by providing incomplete contact information. If the Respondent had bona fide reasons to keep the secrecy of his identity and contact details, he also had the opportunity to explain it to the Panel. While insufficient in itself to prove lack of rights and legitimate interests in the Domain Name, the Respondent’s conduct allows the Panel to draw reasonable inferences of fact from Complainant’s allegations and deem them to be true.

Therefore, the Panel is satisfied with the prima facie case established by the Complainant, and finds that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

The Panel is of the opinion that the question of the identity of the Respondent must be dealt with in the first place for the purpose of determining whether the Domain Name was registered and used in bad faith. What evidence is there in the case on this issue?

According to the Complainant, the initial registrant of the Domain Name was Mr. Henry Chan. On April 26, 2004, the Complainant sent to Mr. Henry Chan a letter demanding the transfer the Domain Name to the Complainant. The demand letter contained information about the Complainant’s trademark rights and commercial activities, and Mr. Henry Chan received it by post on May 9, 2004. There was no response to the demand letter (as there is no response to the Complaint). On June 3, 2004, the ownership information for the Domain Name was changed from “Henry Chan” to “Horoshiy, Inc.” The contact details for the Respondent in this administrative proceeding are incomplete for the purposes of identifying its location (the Respondent may be reached only by e-mail). The content of the website associated to the Domain Name has not changed its type after the change of the ownership information for the Domain Name. There is no explanation by the Respondent of these circumstances.

The analysis of the facts leads to the conclusion that the change of ownership information may well have been made in an effort to conceal the real identity of the registrant and to evade the Policy, and that in reality the holder of the Domain Name is the same.

The Complainant contends that the Respondent registered the Domain Name <medecohealth.com> with knowledge of Complainant’s MEDCO Marks. While there is no evidence of such knowledge at the time the Domain Name was registered, it is notable that the website found at “www.medecohealth.com” contains links to online locations offering products and services which are in direct competition with the products and services of the Complainant. The Respondent has not provided any explanation for this coincidence. As discussed by previous panels under the UDRP, the placement in a website of links to other commercial websites offering goods and services is likely to have been made for financial gain.

The Complainant has provided evidence about the wide popularity of its services and activities in the US, and, as found under Section B above, the Domain Name is confusingly similar to the Complainant’s marks.

Considering the evidence produced in this case, and in the absence of any explanation from the Respondent in rebuttal of the allegations of the Complainant, the Panel concludes that the registration and use of the Domain Name by the Respondent was done in bad faith.

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 <medecohealth.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist

Dated: September 27, 2004