The Complainant is Aetna Inc. of Hartford, Connecticut, United States of America ("USA"); CVS Pharmacy, Inc. ("Complainant CVS") of Woonsocket, Rhode Island, USA, represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, USA. Both companies are jointly referred to as the "Complainant".
The disputed domain name <aetnacvs.com> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the "Registrar").
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on April 10, 2018. On April 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 11, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On April 12, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on April 15, 2018. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on April 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 11, 2018.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on May 24, 2018. 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 Complainant comprises of two separate entities, Aetna Inc. ("Aetna") and CVS Pharmacy Inc. ("CVS"). Aetna is a publicly traded corporation, active in the health care industry and ranks as number 43 on the "Fortune 500" list of the USA's largest corporations. CVS (originally named "Consumer Value Store") on the other hand, is one of the largest pharmacy chain in the USA and of the leading pharmacy companies in the world, with over 94 million plan members. On December 3, 2017, a merger agreement between Aetna and CVS's parent company CVS Health Inc was publicly announced.
The Complainant collectively owns a large number of trademark registrations (word marks) for AETNA and CVS in over twenty jurisdictions, including in China, e.g., trademark registration number 12424897 for AETNA (registered September 21, 2014), and trademark registration number 8120303 for CVS (registered March 21, 2011). The Complainant has proven longstanding use of such trademarks, respectively, over 100 years for the AETNA trademark and over 50 years for the CVS trademark. The Complainant also owns a number of domain names including <aetna.com> and <cvs.com>. All registered trademarks and domain names adduced by the Complainant were successfully registered prior to the registration date of the disputed domain name, which was registered on December 2, 2017. The disputed domain name resolves to an inactive webpage.
The Complainant also refers to a number of previous UDRP panel decisions in which other UDRP panels have ruled that both CVS and Aetna have valid rights in and to their respective trademarks.
The Complainant essentially contends that the disputed domain name is identical or confusingly similar to its prior trademarks for AETNA and CVS, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
The Complainant claims that its trademarks are famous and well-regarded in the pharmacy and health care industry. The Complainant provides evidence to show that its AETNA and CVS trademarks have developed a substantial reputation and recognition worldwide, including in the Respondent's home jurisdiction China, and provides a number of prior domain name decisions that have recognized that the Complainant has valid rights in AETNA and CVS.
The Complainant also provides evidence that the disputed domain name is linked to an inactive website, and essentially claims that this constitutes passive holding of the domain name by the Respondent. The Complainant contends that such use constitutes registration and use in bad faith.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceedings shall be the language of the Registration Agreement. However, the Panel is given the authority to determine a language of proceeding other than the language of the Registration Agreement, taking into account the circumstances of every individual case.
The Complainant claims that the Registration Agreement cannot be located and requests that the language of proceedings be English.
The Panel has carefully considered all elements of this case, in particular, the fact that the Registration Agreement cannot be located; the Complainant's request; the lack of response of the Respondent (the Panel notes that the Respondent's rights have not been violated, since the Respondent had the opportunity to put forward arguments in either English or Chinese) and the fact that Chinese as the language of proceedings could lead to unwarranted delay and costs for the Complainant. In view of all these elements, the Panel rules that the language of proceedings shall be English.
Paragraph 10(e) of the Rules grants a panel the power to consolidate multiple domain name disputes. In this regard, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") section 4.11.1 provides: "In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation."
Taking into account all elements of this case, in particular: the fact that the Complainant has sufficiently proven that a merger agreement has been signed between Aetna and CVS's parent company CVS Health Inc., under which CVS Health Inc. acquired all outstanding shares of Aetna for a combination of cash and stock; the fact that both companies clearly have common grievances against the Respondent; the fact that the Respondent has merely combined the trademarks of both companies in the disputed domain name so that both companies are affected in a similar fashion; and the fact that both companies have retained the same legal counsel and filed the same complaint for this case, the Panel rules that it is equitable and procedurally efficient to permit the requested consolidation in this case.
The Policy requires the Complainant to prove three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Based on the arguments and evidence submitted, the Panel's findings are as follows:
The Panel finds that the Complainant has shown that it has valid rights in the signs "AETNA" and "CVS" based on its use and registration of the same as trademarks in a number of jurisdictions.
Moreover, the disputed domain name is confusingly similar to the Complainant's trademarks AETNA and CVS, the disputed domain name being merely a combination of these two trademarks, incorporating them in their entirety. There are no further elements that might differentiate the disputed domain name from the Complainant's trademarks. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark and rules that the first element required by the Policy has been fulfilled.
The Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not granted any license or other for the Respondent to register the disputed domain name fully incorporating the Complainant's trademarks. The Panel rules that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply. Moreover, as stated before in Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134, "mere registration does not establish rights or legitimate interests in the disputed domain name". The Panel notes that no evidence or arguments have been submitted by the Respondent in reply. The Panel therefore rules that the Complainant has satisfied the second requirement under the Policy.
Given the reputation and fame of the Complainant's trademarks, the registration of the disputed domain name is clearly intended to mislead and divert consumers to the disputed domain name. This finding is reinforced by the fact that the disputed domain name is a mere combination of the Complainant's trademarks and was registered on December 2, 2017, very shortly after numerous articles had been published about a merger between both Complainant companies. This clearly indicates the bad faith of the Respondent, and the Panel therefore rules that it has been demonstrated that the Respondent registered the disputed domain name in bad faith.
As to use of the disputed domain name in bad faith, the WIPO Overview 3.0section 3.3 states in this regard: "From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or "coming soon" page) would not prevent a finding of bad faith under the doctrine of passive holding". Having regard to all elements of the case at hand, and in particular to the high degree of similarity between the Complainant's trademarks and the disputed domain name, the distinctiveness and reputation of the Complainant's trademarks and the Respondent's use of false contact details and addresses in the WhoIs records for the disputed domain name, the Panel rules that it has been demonstrated that the Respondent's use of the disputed domain name is in bad faith.
Moreover, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the third requirement under the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <aetnacvs.com> be transferred to the Complainant CVS.
Deanna Wong Wai Man
Date: June 7, 2018
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