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CVS Pharmacy, Inc. and CVS Vanguard, Inc. v. gd [2004] GENDND 551 (26 May 2004)

1. The Parties

1.1 The Complainants are CVS Pharmacy, Inc., Drive, Woonsocket, RhodeIsland, United States of America, and CVS Vanguard, Inc., Scarsdale, New York, represented by Edwards & Angell, LLP, United States of America.

1.2 The Respondent is gd, Domains 123, Bronx, New York, United States of America.

2. The Domain Names and Registrars

2.1 The disputed domain names are <cvspharmacies.com> and <cvsdrugstore.com>.

2.2 The Registrar of both disputed domain names is Intercosmos Media Group d/b/a <directNIC.com>.

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on February 12, 2004. On February 12, 2004, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain names at issue. On February 12, 2004, 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.

3.2 In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on February 27, 2004, hard copies of which were received March 1, 2004. The Center verified that the Complaint, together with the amended 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”).

3.3 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 2, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 7, 2004.

3.4 The Center appointed Jay Simon as the sole panelist in this matter on May 5, 2004. 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.

3.5 The case file was transmitted electronically to the Panel on May 5, 2004; and a hard copy was forwarded to the Panel on May 6, 2004.

3.6 While reviewing the record, the Panelist noted that the Complainant is not the owner of several of the trademarks in issue in this proceeding, and that these trademarks appear to be owned by a subsidiary of Complainant and by a possibly related party. Consistent with Paragraph 12 of the Rules, on May 13, 2004, the Panelist requested that Complainant, “as soon as possible, join the owners of the trademarks, namely CVS Vanguard, Inc., and CVS, H.C., Inc. as co-Complainants, or show by convincing evidence that Complainant has obtained the right to assert the rights in these marks on behalf of the owners” of the trademarks.

3.7 On May 19, 2004, in response to the Panelist’s request, Complainant filed a second amended complaint by e-mail in which CVS Pharmacy, Inc. and CVS Vanguard, Inc. are joined as Complainants. Complainants’ attorney averred that CVS, H.C., Inc. has assigned all of its trademarks to CVS Vanguard, Inc. On that same day, the Panelist requested that a certified copy of the assignment be submitted by Complainants, or that Complainants’ authorized representative submit a copy of the assignment along with the authorized representative’s declaration that the assignment was properly executed, or other convincing evidence showing the ownership of the trademarks by Complainants.

3.8 On May 25, 2004, Complainants provided documentary evidence showing the ownership of the pertinent trademarks, including a copy of an assignment of trademarks from CVS, H.C., Inc. to CVS Vanguard, Inc., a co-Complainant, an affidavit from Complainants’ attorney detailing the recording of the assignment in the USPTO with the reel and frame numbers, and a certificate of name change of CVS, H.C., Inc. to CVS Vanguard, Inc. recorded by the Minnesota Secretary of State.

4. Factual Background

4.1 Co-Complainant CVS Pharmacy, Inc., has a rather large presence in the retail drug industry. At the close of 2002, Complainant operated 4,087 retail and specialty pharmacies in 32 states and the District of Columbia. At that time Co-Complainant was among the top 15 retail stores in the United States, according to About Retail Statistics and Market Research Data.

4.2 Complainants own a number of federal trademarks that incorporate the “CVS” name, at least two of which are pertinent to this proceeding (because they were registered prior to the registration of the disputed domain names). The pertinent registrations are “CVS/Pharmacy”, USPTO Reg. No. 2048916, registered on April 1, 1997, and “CVS Today’s Neighborhood Drugstore”, USPTO Reg. No. 1419485, registered on December 2, 1986.

4.3 By virtue of the second amended Complaint and a subsequent filing, the pertinent registered trademarks are owned by the entity that is Complainants.

4.4 The Complaint is based on the registration, on April 20, 2002, of the two disputed domain names.

4.5 Respondent did not file a response in these proceedings and was notified of its default by the Center. Thus, the allegations and evidence contained in and attached to the Complaint are uncontested.

4.6 As of May 13, 2004, and upon independent inquiry by this Panelist, entering either of the disputed domain names into a common search engine automatically directed the Internet user to a website at “www.AmericanPharmacy.com” where the user can purchase prescription and non-prescription pharmaceuticals and related products. Thus, the products offered for sale at the website are similar to those for which Complainants have registered trademarks.

5. The Parties Contentions

A. Complainants

5.1 Complainants contend that both of the disputed domain names are confusingly similar to the marks registered by Complainants and that the confusion is exacerbated by the similarity of products offered for sale at the websites that are automatically linked to the disputed domain names.

5.2 Complainants further contend that Respondent has no rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered by Respondent without authorization from Complainant.

5.3 Complainants further contend that as of October 23, 2004, when either of the disputed domain names was entered into the address box of a search engine, the web address linked automatically to a website at “www.AmericanPharmacy.com”; and that as of January 22, 2004, the entry of each of the disputed domain names into a search engine, the web address linked automatically to a website at “www.NetPrescribe.com”.

5.4 Complainants further contend that Respondent has registered and used the disputed domain names in bad faith under Paragraph 4(a)(iii) of the Policy by:

(a) intentionally attempting to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with marks in which Complainants have rights regarding the source, sponsorship, affiliation, or endorsement of Respondent’s websites and the products offered for sale therein; and

b) intentionally disrupting the business of its competitors, Complainants, by diverting potential consumers from their websites.

5.5 Complainants request that both of the disputed domain names be transferred to Complainants.

B. Respondent

5.6 Respondent has failed to respond to the Complaint and is in default in these proceedings.

6. Discussion and Findings

6.1 The Policy as effected by the Rules and the Supplemental Rules, provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (Complainant) proves each of the following elements:

a) that the domain name or names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

b) that the registrant (Respondent) has no rights or legitimate interests in respect of the domain name or names; and

c) that the domain name or names have been registered and are being used in bad faith.

6.2 Complainants have the burden of proof, by a preponderance of the evidence, with respect to each element noted above in Paragraph 6.1, above. The Panel notes that element (a) of Paragraph 6.1 involves a reasonably, but not necessarily a wholly objective test, whereas element (b) involves proving a negative, and element (c) involves consideration of the circumstances surrounding the registration and use of disputed domain names.

6.3 Respondent, having failed to respond in these proceedings, is in default, and in accordance with Paragraph 14(b) of the Rules, “The panel shall draw such inferences...as it considers appropriate.” Additionally, while past practices do not necessarily predict the future, inferences may be drawn by the Panel based on a respondent’s past activities.

A. Identical or Confusingly Similar (Paragraph 4(a)(i) of the Policy)

6.4 Complainants have several trademarks registered with the United States Patent and Trademark Office (USPTO) in connection with CVS/Pharmacy stores and the products sold therein, including prescription and non-prescription drugs and related products. Two of these marks are pertinent to these proceedings, the marks having been registered prior to Respondent’s registration of the disputed domain names. The pertinent marks are “CVS/Pharmacy” USPTO Registration No. 2,048,916 (the ‘916 registration) and “CVS Today’s Neighborhood Drugstore” USPTO Registration No. 1,419,485 (the ‘485 registration).

6.5 The first of the disputed domain names, <cvspharmacies.com>, differs from one of the registered marks in that the “/” is omitted, pharmacy is used in the plural sense, i.e., “pharmacies”, and with a lower case letter. The omission of the “/” is of no greater significance than the omission of a space, see Tarjeta Naranja S.A. v. MrDominio.com and Alejandro San Jorge, WIPO Case No. D2001-0295. Similarly, using “pharmacies” rather than “Pharmacy” is of no significance. For a letter change see E.R. Squibb & Sons LLC v. Roy Duke, WIPO Case No. D2003-0806, Edmunds.com, Inc. v. Polanski, WIPO Case No. D2001-0928. Also, see Gateway, Inc. v. Pixelera.com, Inc., WIPO Case No. D2000-0109 where a hyphen was added to a mark but was not enough to distinguish the disputed domain name from the mark.

6.6 The Panel is mindful that a straightforward comparison between a mark in which a complainant has rights and a disputed domain name may sometimes lead to an anomalous result: as a number of differences between the two may each be of little or no significance, but the sum of the differences may lead to a domain name that is neither identical to nor confusingly similar to a mark in which the complainant has rights. In such a case the two names, as a whole, must be compared for both similarities and differences. See Scholastic Inc. v. ScholasticAdvising.com and Ramit Sethi, WIPO Case No. D2001-0946 where the Panel suggests consideration of commercial impression of the disputed domain name. In this case, the differences are few and the significance of each difference is essentially nil; in considering the names as a whole, this Panelist finds that <cvspharmacies.com> is confusingly similar to Complainants’ 916 registration.

6.7 Turning now to the other disputed domain name <cvsdrugstore.com>, it incorporates a portion of Complainant’s trademark “CVS Today’s Neighborhood Drugstore”. The relationship between the disputed domain name and Complainants’ registered trademark is the reverse of that in EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096 where the disputed domain name added a word to the registered mark. In this case, two words are deleted.

6.8 The words “Today’s” and “Neighborhood” are common everyday words having no particular identifying distinctiveness. Indeed, the words “Neighborhood Drug Store” have been disclaimed, i.e., no claim is made for these words apart from the mark as registered. The distinguishing feature of the registered mark is the term “CVS”. Thus the fact that Respondent registered a domain name omitting some words from a registered trademark, but including “CVS” in the domain name points toward the similar products offered by Complainants. See Yellow Corporation v. MIC, WIPO Case No. D2003-0748.

6.9 Additionally, words have their plain meaning and the word “drugstore” used as one word, is essentially synonymous with the word “pharmacy.” See, for example Roget’s International Thesaurus, Third Edition, 1962, p. 449, par. 685.31 and p. 818. Thus, the overall impression created by the disputed domain name is such that an Internet user will use “drugstore” and “pharmacy” interchangeably.

6.10 Keeping in mind both the objective test for confusing similarity and the commercial impression formed by an Internet user when looking at the disputed domain name, the Panel finds that <cvsdrugstore.com> is confusingly similar to either the 485 registration or the 916 registration.

B. Lack of Rights or Legitimate Interests (Paragraph 4(a)(ii) of the Policy)

6.11 Paragraph 4(c) of the Policy lists three non-exclusive methods for demonstrating rights to or a legitimate interest in a disputed domain name:

(a) before any notice of the dispute, Respondent’s use or preparation to use the domain name or a name corresponding to the domain name is in connection with a bona fide offering of goods and services; or

(b) Respondent has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or

(c) Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

6.12 Respondent has failed to contest any of the allegations or evidence presented by Complainants. This Panel has before it only the evidence presented by Complainants for deciding this case.

6.13 The elements of Paragraph 4(a)(ii) of the Policy have often been described as requiring Complainant to prove a negative - a rather difficult undertaking. Nevertheless, for Complainants to prevail in this proceeding they bear the burden of proof. This Panel is aware of the anomaly inherent in this regard, and is guided by the excellent discussion of the issue in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, where the Panel stated: “where a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion. This information is uniquely within the knowledge and control of the respondent. Failure of a respondent to come forward with such evidence is tantamount to admitting the truth of complainant’s assertions in this regard.”

6.14 Complainants assert that Respondent has no rights or legitimate interests in the domain names, and that the domain names were registered without authorization from Complainants. Respondent has failed to contest these assertions.

6.15 Thus, there is no evidence that Respondent was commonly known by either of the domain names and there is evidence that Respondent is using the domain names for commercial purposes. Further, Respondent’s use of these domain names has been for the purpose of redirecting Internet users to Respondent’s own website for the purpose of selling goods that are of the same nature as Complainants’ goods and for which Complainants have registered trademarks. Respondent’s use of the disputed domain names is, therefore, not a bona fide use of those names.

6.16 This Panel finds that Respondent has no rights or legitimate interests in either of the disputed domain names.

C. Registration and Use in Bad Faith (Paragraph 4(a)(iii) of the Policy)

6.17 Paragraph 4(b) of the Policy indicates several non-exclusive methods for showing bad faith registration and use of a domain name. Paragraph 4(b)(iv) of the Policy indicates bad faith registration and use of a domain name where Respondent, by its use of the domain names, has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainants’ marks as to the source, sponsorship, affiliation, etc. of the website or of a product or products on the website.

6.18 Here, Respondent is using domain names that are confusingly similar to Complainants’ registered trademarks. Further, Complainants have a relatively ubiquitous presence in the Northeast and the New York City metropolitan area. Accessing the disputed domain names automatically links the Internet user to another site at which products, including prescription and non-prescription drugs, similar to those offered by Complainants, are available. This Panel has no doubt that Respondent registered and is using the disputed domain names to attract or capture Internet users seeking information and products of Complainants and diverting those users to another website and disrupting the business of a competitor. Respondent has or seeks to create confusion, for Respondent’s commercial gain, with Complainants’ registered trademarks regarding the source of the products offered at Respondent’s website, the sponsorship of the website, and Respondent’s affiliation with Complainants. Therefore, this Panel finds that the domain names were registered and are being used in bad faith.

6.19 This Panel also notes that Respondent acted in a similar fashion in the E. R. Squibb case, supra, in that Respondent registered a domain name not identical to but confusingly similar to a registered mark of another. (Respondent registered the domain name <pravochol.com> and complainant had registered trademark rights in Pravachol®). This case, therefore, marks the second occasion where Respondent has attempted to gain commercially from the use of domain names confusingly similar to trademarks of another.

7. Decision

7.1 For the foregoing reasons, in accordance with Paragraph 4(a) of the Policy and Paragraph 15 of the Rules, this Panel orders that both of the domain names <cvspharmacies.com> and <cvsdrugstore.com> be transferred to Complainants.

Jay Simon
Sole Panelist

Dated: May 26, 2004