Medco Health Solutions, Inc. v. Digi Real Estate Foundation
Case No. D2006-0693
1. The Parties
The Complainant is Medco Health Solutions, Inc., Franklin Lakes, New Jersey, United States of America, is 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 is <medcohealh.com>. The domain is registered
with DNGLOBE LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2006. On June 2, 2006, the Center transmitted by email to DNGLOBE LLC a request for registrar verification in connection with the domain name at issue. On June 7, 2006, DNGLOBE LLC 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, 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”).
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 June 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 3, 2006. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on July 4, 2006.
The Center appointed Peter D. Siemsen as the sole panelist in this matter on July 13, 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.
The language of the administrative proceeding is English.
4. Factual Background
The Complainant, Medco Health Solutions, is a leading provider of pharmacy benefit management services in the United States.
The Complainant has been using the element “Medco” in its name and marks since 1984. It is currently the owner of many United States registrations for trademarks MEDCO, MEDCOHEALTH and variations thereof, namely: Reg. No. 2,894,558, for MEDCO, granted on October 19, 2004; Reg. No. 3,061,048, for MEDCO (stylized), granted on February 21, 2006; Reg. No. 2,744,576, for MEDCOHEALTH, granted on July 29, 2003; Reg. No. 2,755,838, for MEDCOHEALTH.COM, granted on August 26, 2003; Reg. No. 2,736,401, for MEDCOHEALTHCONSULTANT.COM, granted on July 15, 2003; Reg. No. 2,948,760, for MEDCOHEALTH LIVE LIFE WELL, granted on May 10, 2005; and Reg. No. 3,051,314, for MEDCO HEALTH SOLUTIONS, granted on January 24, 2006. All these registrations cover services related to “pharmaceutical benefit management services and mail order and on-line pharmacy services”.
The Complainant is further the owner of domain names <medco.com> and <medcohealth.com> and uses them to direct Internet users to its official websites. Those two domain names were registered on February 21, 1996, and March 16, 2000, respectively.
Disputed domain name <medcohealh.com> was registered in the name of the
Respondent with the Registrar on April 18, 2006.
5. Parties’ Contentions
A. Complainant
The Complainant asserts its mail order business is one of the United States’ largest mail order pharmacy operations. To name some of the Complainant’s corporate data, it managed 503 million prescriptions through its mail service pharmacies and its network of approximately 60,000 retail pharmacies in 2004. In the same year, the Complainant’s Internet pharmacy website processed nearly 17 million prescriptions.
As a result of these activities, together with the ostensive use of trademarks MEDCO, MEDCOHEALTH and variations thereof, the Complainant conveys it has built up highly valuable goodwill in its MEDCO family of marks.
In order to satisfy the three-prong test of Paragraph 4(a) of the Policy, The Complainant sustains that:
- The Respondent’s domain name <medcohealh.com> is confusingly similar to the Complainant’s family of MEDCO marks because it is an obvious misspelling of the dominant portion of those marks, simply omitting the “t” in “health”;
- The Respondent does not own a trademark or service mark registration that is identical or similar to the <medcohealh.com> domain name;
- Medcohealth is not the Respondent’s personal name and the Respondent is not known to the public under the name Medcohealth;
- The Respondent is not and has not been using the contested domain name in connection with a bona fide offering of goods or services. Rather, The Respondent is using the domain name in an attempt to trade on The Complainant’s reputation and goodwill by offering competing online pharmacy services through sponsored links, which lists “Medco Health Solution” and “Medco Health Solutions” (not related to The Complainant’s site);
- The Respondent registered the disputed domain name with knowledge of The Complainant’s marks in order to divert Internet users to its competing website;
- WIPO URDP panels have found bad faith where registrants engage in “typosquatting” activities;
- The Respondent’s use of the domain name in such a way as to create likelihood of confusion with the Complainant’s marks is in itself evidence of bad faith, as set forth in a Nat. Arb. Forum’s precedent.
Finally, the Complainant requests the panel to order the transfer of the disputed domain name to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
In the administrative proceeding each the following provisions of paragraph 4(a) of the Policy must be established by the Complainant:
(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 used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is <medcohealh.com>, a domain which distinctive parcel is formed by expressions Medco and Healh (without “t”).
The Complainant, in its turn, is the owner of many registrations for trademarks MEDCO, MEDCOHEALTH and variations thereof. These registrations provide the Complainant with exclusive rights over cited marks and the resulting prerogative to enjoin anyone from using identical or similar expressions in connection with the Complainant’s activities.
The omission of letter “t” obviously does not provide the disputed domain name with sufficient distinctiveness in relation to the Complainant’s marks. The likelihood of confusion is blatant inasmuch as any one who is looking for the Complainant’s website may erroneously type the disputed domain name and presume that the respective website is linked, sponsored or otherwise associated to the Complainant. This circumstance is especially enhanced because the Complainant uses the domain name “medcohealth.com” (with “t”) as the address of its official website.
WIPO’s case law, further, is well-settled in
the sense that the mere omission of a single letter is not sufficient to make
the domain name distinguishable in relation to the trademark at issue (e.g.
Microsoft Corp. v. Whois Privacy Protection Service, WIPO
Case No. D2005-0642; Accor v. Howell Edwin, WIPO
Case No. D2005-0980; HM Publishers Holdings Ltd. v. Webserve LLC,WIPO Case No. D2005-0741; Siemens AG
v. Siemens.Com, WIPO Case No. D2005-0927;
Netstock, Inc. v. Music Wave, WIPO
Case No. D2002-0441; Hershey Foods Corp. and Hershey Chocolate &
Confectionary Corp. v. Amcore & Co. For Sale Domains $250 or Best Offer,
WIPO Case No. D2003-0838).
For the above reasons, the Panel holds that the disputed domain name is confusingly similar to the Complainant’s marks, so that the requirement of Paragraph 4 (a) (i) of the Policy is duly met.
B. Rights or Legitimate Interests
As the Respondent has not filed a reply in this proceeding, the Panel shall decide the case based upon the Complaint and on the basis of the statements and documents submitted, as instructed by paragraphs 5(e) and 15(a) of the Rules.
Upon reviewing the Complaint, the Panel concludes that the Complainant has made a prima facie case in which the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent is not known as Medco or Medco Healh; there is no evidence that the Respondent owns a trademark or service mark registration for Medco or Medcohealh; there is no evidence that the Respondent uses or intends to use these marks in relation to an established or prospective business; and there is no evidence that the Respondent has ever used the disputed domain in connection with a bona fide offering of goods or services.
To the contrary, while typing the disputed domain name, the Internet user is directed to many third parties’ websites, some of which provide medical and health care services, that is, activities that are clearly related to the Complainant’s business.
Nothing in this Complaint, therefore, supports the conclusion that the Respondent has rights or legitimate interests in the disputed domain name, so that the requirement of Paragraph 4 (a) (ii) of the Policy is met.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must prove that the disputed domain name has been registered and is being used in bad faith. Paragraph 4 (b) (iv), in its turn, provides that bad-faith may be found whenever:
“(iv) by using the domain name, you [the Respondent] 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 web site or location or of a product or service on your web site or location”.
Given the substantial evidence presented in the Complaint, it seems clear that the Complainant’s trademarks MEDCO and MEDCOHEALTH are well known in the field of pharmacy benefit management services.
In the Panel’s view, this is a clear case of typosquatting, in which the registrant has willfully omitted a single letter of trademark MEDCO HEALTH in order to mislead and capture Internet users who make a typographical mistake when trying to type the Complainant’s legitimate domain name <medcohealth.com>.
This is not the first time, indeed, in which the Respondent
is involved in typosquatting activities. The Respondent had previous findings
against him in relation to this UDRP WIPO Decisions (Medco Health Solutions,
Inc. v. Digi Real Estate Foundation, WIPO
Case No. D2005-0216; and Volkswagen AG v. Digi Real Estate Foundation,
WIPO Case No. D2005-0952) and at least
one UDRP case decided before the National Arbitration Forum (Whitney National
Bank v. Digi Real Estate Foundation, NAF Case No. FA0602000637811).
In Medco Health v. Digi Real, WIPO
Case No. D2005-0216, the Respondent had registered domain name <medcohaelth.com>,
a domain name that is also almost identical to the Complainant’s mark,
and the Panel did not hesitate to find bad-faith in that company’s practice.
In Volkswagen v. Digi Real, WIPO
Case No. D2005-0952, The Respondent had registered <volkswagn.com>,
a domain name clearly inspired by the name and mark of Volkswagen AG, the famous
German automobile manufacturer. Finally, in Whitney v. Digi Real, NAF
Case No. FA0602000637811), the Respondent had registered domain name <witneybank.com>,
a blatant imitation of the Complainant’s WHITNEY BANK trademark, used
in the United States for over one hundred and twenty years.
The Respondent’s behavior clearly indicates it is engaged in the practice of, registering domain names corresponding to known marks with slight differences (i.e. omitting a single letter, changing the order of letters, etc.).
By proceeding this way in the present case, the Respondent diverts Internet users from the Complainant’s website and directs them to a variety of other sponsored websites that have absolutely no relation to the Complainant. In other words, the Respondent misappropriates and takes a free ride on the substantial goodwill developed on the Complainant’s mark, thus incurring in the bad-faith violation foreseen in Paragraph 4(b)(iv) of the Policy.
As a result, the Panel concludes that domain name
<medcohealh.com> has been registered and is being used in bad faith under
the terms of Paragraph 4(b)(iv) of the Policy, so that the requirement of Paragraph
4(a)(iii) is also met.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders the transfer of the domain name, <medcohealh.com>, to the Complainant.
Peter D. Siemsen
Sole Panelist
Dated: July 27, 2006
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