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Medco Health Solutions, Inc. v. Digi Real Estate FoundationCase No. D2005-0216 [2005] GENDND 758 (26 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Medco Health Solutions, Inc. v. Digi Real Estate Foundation
Case No. D2005-0216

1. The Parties

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

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

2. The Domain Name and Registrar

The disputed domain name <medcohaelth.com>, (herein the “Domain Name in dispute”) is registered with That Darn Name, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2005. On February 28, 2005, the Center transmitted by email to That Darn Name, Inc. a request for registrar verification in connection with the domain name at issue. On April 5, 2005, That Darn Name, Inc. 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 April 7, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 29, 2005.

The Center appointed J. Nelson Landry as the sole panelist in this matter on May 12, 2005. 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

The Complainant provides pharmacy benefit management (herein “PBM”) services in the United States using its important 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 dollars. 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 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 four years in a row, 2001, 2002, 2003 and 2004, 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, four times in a row, 1998, 1999, 2000 and 2002; no award was given in 2001.

In the course of its activities stated herein above, the Complainant, as the sole and exclusive owner, has since 1984, used MEDCO in its name and trademarks, comprising four U. S. registrations MEDCO, MEDCOHEALTH.COM, MEDCOHEALTHCONSULTANT.COM, MEDCOHEALTH and seven applications MEDCO HOMERX, MEDCO (stylized), MEDCO PRESCRIPTION PLANS, SOLUTIONS NEWS AND VIEWS FOR MEDCO HEALTH CLIENTS, MEDCO HEALTH SOLUTIONS, MEDCOHEALTH LIVE LIFE WELL (and design) and MEDCO.COM, each comprising or consisting of the term MEDCO or MEDCOHEALTH to constitute a family of MEDCO and MEDCOHEALTH trademarks (herein “the MEDCO Trademarks”). “MEDCO” or “MEDCOHEALTH” have been a predominant part of Complainant’s and its predecessors’ company and trade names since that year. Additionally, the Complainant and its predecessors have used the MEDCO Trademarks 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, which various services and dates of first use are respectively particularized in each registration or application. (see Exhibit A)

The Complainant communicates with client members in many ways. Client members of Medco pharmacy benefit manager services receive “Welcome Kits,” which explain the prescription benefits. In 2003, Complainant mailed approximately eight million such kits. The Complainant also communicates with members through the health management program, POSITIVE APPROACHES(r), which portfolio of programs is designed to identify and reduce health care costs, while improving the health and satisfaction of those members with chronic conditions. Approximately 1,900,000 mailings of educational materials to the participants were made in 2003.

The Complainant also owns various domain names incorporating the MEDCO element, 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 open to the general public, which site 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. 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.

The domain name in dispute was registered by the Respondent on December 8, 2004.

The Respondent does not own a trademark or service mark registration that include the terms “medco” or “medcohaelth” or is in any way related to the domain name in dispute. respondent is not known to the public under the name “medcohaelth”. Respondent is Digi Real Estate Foundation in Panama for which there is no specific identification of a contact person.

The Respondent is not a licensee of the Complainant, nor has Respondent ever been authorized by Complainant to use any of the MEDCO Trademarks or to register the domain name in dispute.

The Respondent is using the domain name in dispute to allow visitors to access its web site on which it is 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). The web site does not offer any real estate services contrary to suggestion arising out of Respondent’s name.

5. Parties’ Contentions

A. Complainant

The Complainant represents to be 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.

Upon information and belief, the Complainant submits that the Respondent does not own a trademark or service mark registration that is identical, similar or in any way related to the <medcohaelth.com> domain name or Complainant’s MEDCO Trademarks, that “medcohaelth” is not respondent’s personal name, and that the respondent is not known to the public under the name “medcohaelth” and furthermore that the Respondent is not a licensee of the Complainant, nor has the Respondent ever been authorized by the Complainant to use any of the MEDCO Trademarks or to register the domain name in dispute.

Accordingly Complainant further submits that Respondent’s domain name <medcohaelth.com> is confusingly similar to Complainant’s family of MEDCO Trademarks because it is an obvious misspelling of the dominant portion of those trademarks, simply switching the “a” and “e” in health. The Complainant relies on UDRP decisions wherein panels have readily found confusing similarity based on such “typosquatting” activities. See, Eddie Bauer, Inc. v. Zuccarini, WIPO Case No. D2001-0060, Playboy Enterprises International Inc. v. SAND Web Names - For Sale, WIPO Case No. D2001-0094, Google, Inc. v. Namerental.com, WIPO Case No. D2001-0060, News Group Newspapers Limited v. Momm Amed Ia, WIPO Case No. D2000-1623 and AT&T Corp. v. Global Net 2000, Inc., WIPO Case No. D2000-1447.

The Complainant contends that the Respondent is not and has not been using the domain name in dispute in connection with any bona fide offering of goods or services. Rather the Respondent is using the domain name in dispute 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’, neither being related to Complainant’s site.

According to the Complainant 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, Florists’ Transworld Delivery, Inc. v. BBIKOREA, NAF Claim No. 0204000109572, wherein panel held that respondent does not have legitimate interest in domain name incorporating complainant’s trademark when using it to compete with complainant; America Online, Inc. v. Fu, WIPO Case No. D2000-1374, wherein panel stated that it would be unconscionable to find a bona fide offering of services in a respondent’s operation of website using a domain name which is confusingly similar to the complainant’s mark and for the same business, and Chip Merchant, Inc. v. Blue Star Elec., WIPO Case No. D2000-0474, where the panel found that respondent’s use of confusingly similar domain name to sell competing goods was illegitimate and not a bona fide offering of goods.

The Complainant further contends that the domain name in dispute should be considered as having been registered and used in bad faith, since upon information and belief, Respondent registered the domain name in dispute with knowledge of Complainant’s MEDCO Trademarks, precisely because it is confusingly similar to Complainant’s Trademarks, in order to divert Internet users to its competing website.

According to the Complainant, in UDRP decisions mentioned hereinabove panels have previously found bad faith where registrants engage in the kind of “typosquatting” involved here. Moreover, again according to Complainant, 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, BrassRing, Inc. v. JCI Technologies, Inc., NAF Claim No. 97154 in which the panel held that the use of domain name to create likelihood of confusion with plaintiff’s family of marks is evidence of bad faith.

The Complainant submits that while it put the Respondent on notice of Complainant’s claim by virtue of a demand letter dated January 24, 2005, and that the demand letters sent CMRRR to date have not been acknowledged as received and yet such demand letter however, was received and acknowledged by Registrar, these facts constitute efforts to conceal the true ownership, identity and whereabouts and constitute further evidence of Respondent’s bad faith. Again the Complainant relies on UDRP panel decisions reiterating findings of bad faith. See, Sterling Jewelers, Inc. v. InterMos, WIPO Case No. D2002-0899, Keyes v. Old Barn Studios, Ltd., WIPO Case No. D2002-0687, Nik Carter v. The Afternoon Fiasco, WIPO Case No. D2000-0658, and 3636275 Canada v. eResolutions.com, WIPO Case No. D2000-0110.

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

The Complainant has in its evidence clearly demonstrated that it has rights in a family of MEDCO Trademarks which are registered or applied for, all incorporating the MEDCO or MEDCOHEALTH distinctive elements. Not only are these MEDCO Trademarks registered or about to be registered, the Complainant has furthermore amply shown their extensive use and acknowledgement along with the numerous domain names incorporating the MEDCO distinctive element over the past twenty years for many of them in association with the wares and services mentioned in each of these trademark registrations or applications. The Complainant has thus built important goodwill and reputation in association with this family of MEDCO Trademarks.

The domain name in dispute incorporates in its entirety the MEDCO distinctive element of the family of MEDCO Trademarks. There is no doubt that the domain name in dispute is confusingly similar to the MEDCO Trademarks for purposes of the Policy. In the opinion of the Panel, the inversion of the letters e and a in the word “health” associated with MEDCO, which can be a frequent mistyping, does not deter the reader from the fact that the term “MEDCOHEALTH” within the MEDCO Trademarks has been taken, modified and associated with the suffix “.com” and this does not diminish in any way that the domain name in dispute is confusingly similar to the MEDCO Trademarks.

The first criteria has been met.

B. Rights or Legitimate Interests

The 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 stating that the Respondent has never been known by the name Medco, Medcohealth, <medcohaelth.com> or the domain name in dispute, is not legitimate non-commercial or fair use of the domain name in dispute.

Furthermore, the Complainant has never given a license nor in any way authorized the Respondent to make use of any of Complainant’s family of MEDCO Trademarks. There is no evidence that the Respondent has ever engaged is any legitimate business under the Complainant’s Trademarks. On the contrary the Complainant has shown in its evidence that the Respondent is diverting visitors to its web site offering competing online pharmacy services through sponsored links, including ‘Related Categories’ which lists ‘Medco Health Solution’ and Medco Health Solutions’ which according to the Complainant are not related to Complainant’s site.

The Respondent has not rebutted any of these facts and allegations.

These activities of the Respondent associated with the use of a confusingly similar domain name are according to the earlier UDRP decisions cited by the Complainant, which this Panel adopts, are illegitimate and not a bona fide offering of goods and services.

The second criteria 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 in dispute was registered in bad faith.

While under 15 USC §1072, the registration of the four MEDCO Trademarks constitute constructive notice of the Trademarks to US citizens, this Panel considers that it is not necessary to debate and decide whether such constructive notice does apply to the Respondent which is located in Panama in view of the uncontradicted evidence in this case. Considering the number of registrations and applications to register MEDCO and MEDCOHEALTH Trademarks as well as the number of domain names owned and registered by the Complainant which all include the distinctive element MEDCO and the extensive use made and acknowledgement received, this Panel cannot see under the present circumstances how the Respondent could not have had knowledge of the MEDCO Trademarks of the Complainant, particularly when first, the Respondent adopts a “typosquatting” behavior and associates MEDCO with the word “health” in which the letters e and a are reversed in order, second, in its website it links and redirects the Internet visitors to websites of suppliers of numerous health products and third the absence of any identification of the owner or operator of the Respondent website, as this Panel noticed upon visiting it and attempted to verify. It is inconceivable to this Panel that the Respondent was not aware of the MEDCO Trademarks when it registered the domain name in dispute.

This Panel finds that the domain name in dispute was registered in bad faith by the Respondent.

Relying on the evidence adduced by the Complainant and the UDRP decisions cited in support of its representations, the Panel has no difficulty in finding that the Respondent is attempting to trade on Complainant’s reputation and goodwill by offering competing online pharmacy services through sponsored links. Furthermore, according to the UDRP decisions cited by the Complainant, engaging in this kind of “typosquatting” and using the domain name in dispute in the way the Respondent has done to create a likelihood of confusion with Complainant’s MEDCO Trademarks is also itself evidence of use in bad faith.

The Panel acknowledges the UDRP decisions referred to by the Complainant and adopts the findings of bad faith made therein.

This Panel finds that the Respondent has used the domain name in dispute in bad faith.

The third criteria has been met.

7. Decision

The Panel concludes that:

(a) the domain name <medcohaelth.com> is confusingly similar to the Complainant’s MEDCO Trademarks;

(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 <medcohaelth.com> be transferred to the Complainant.

J. Nelson Landry
Sole Panelist

Dated: May 26, 2005