WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CVS Pharmacy, Inc. v. Rajesh

Case No. D2019-2614

1. The Parties

The Complainant is CVS Pharmacy, Inc., United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States .

The Respondent is Rajesh, India.

2. The Domain Name and Registrar

The disputed domain name <myhr-cvs.info> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2019. On October 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 26, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 31, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 31, 2019.

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” 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 of the Complaint, and the proceedings commenced on November 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 27, 2019. On November 30, 2019, the Respondent sent an informal email communication to the Center. No further Response was submitted.

The Center appointed Assen Alexiev as the sole panelist in this matter on December 11, 2019. 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 is the principal operating company of CVS Health Corporation, a publicly traded corporation with annual revenue in 2018 of USD 194.6 billion, which ranks as number 8 on the “Fortune 500” list of the largest corporations in the United States. The Complainant is a health innovation company in the United States and has more than 9,900 retail locations, 1,100 walk-in medical clinics, a pharmacy benefits manager with approximately 94 million plan members, and has a dedicated senior pharmacy care business serving more than one million patients per year. The Complainant also serves an estimated 38 million people through traditional, voluntary and consumer-directed health insurance products and related services.

The Complainant is the owner of the following trademark registrations for the sign “CVS” (the “CVS trademark”):

- the United States trademark CVS with registration No. 919,941, registered on September 7, 1971 for services in International Class 35;
- the United States trademark CVS with registration No. 1,698,636, registered on July 7, 1992 for goods in International Classes 1, 3, 5, 8, 9, 10, 16, 21 and 25;
- the United States trademark CVS with registration No. 1,904,058, registered on July 11, 1995 for goods in International Classes 5 and 25; and
- the trademark CVS with registration No. 3,325,496, registered in India on May 11, 1994 for goods in International Class 5.

The Complainant is also the registrant of the domain names <cvs.com>, registered on January 30, 1996, and <cvshealth.com>, registered on April 15, 2005.

The Respondent registered the disputed domain name on August 15, 2018. It used to resolve to a website with the title “MyHR. CVS – CVS HR Pharmacy Portal”. Along with information about the Complainant, it contained what is described as instructions about the registration and logging into an online service offered by the Complainant for its current and former employees to help them access job-related information and benefit plans.

5. Parties’ Contentions

A. Complainant

According to the Complainant, the disputed domain name is confusingly similar to the CVS trademark, because it contains the trademark in its entirety. The inclusion of the additional words “my” and “hr” does not alleviate the confusing similarity because the English term “my” is a common marketing supplement in electronic commerce, while “hr” refers to “human resources” and conveys the idea that there is some connection between the disputed domain name and the human resources department of the Complainant.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name, because the Respondent was not authorized by the Complainant to register or use the CVS trademark, is not commonly known by the disputed domain name and has no trademark rights in it. The Complainant points out that the Respondent is not carrying out a bona fide offering of goods or services through the disputed domain name, but is using it in connection with a website that falsely appears to be a website associated with the Complainant and that purports to provide information about the Complainant, but instead confuses users looking for the Complainant’s human resources website for its employees. The Complainant adds that the disputed domain name is confusingly similar to the domain name <myhr.cvs.com> which the Complainant uses for its human resources department.

The Complainant contends that the disputed domain name has been registered and is being used in bad faith by the Respondent. It points out that the CVS trademark is well-known worldwide, including in India, where the Respondent is located, and the disputed domain name is confusingly similar to the Complainant’s domain name for its human resources department. According to the Complainant, these circumstances show that the Respondent must have been aware of the Complainant’s activities and the name and trademark under which the Complainant is doing business when it registered the disputed domain name, and its motive in registering and using the disputed domain name was to disrupt the Complainant’s relationship with its customers or potential customers or to mislead and attract Internet users to its website for potential gain by creating confusion with the Complainant’s internal human resources website. The Complainant adds that the disputed domain name may also be used for phishing purposes.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. With its informal communication to the Center of November 30, 2019, the Respondent stated that it had already deactivated the disputed domain name prior to the proceeding.

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(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 Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(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 …”

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the CVS trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the general Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.info” gTLD section of the disputed domain name.

The relevant part of the disputed domain name is therefore the sequence “myhr-cvs”. It consists of the elements “my”, “hr” and “cvs”, with a hyphen between the last two. The “cvs” element reproduces the CVS trademark, which is easily recognizable in the disputed domain name, especially since the hyphen separates it from the other two elements. The “my” element is often present in domain names and has no distinctiveness, while the “hr” element is a widely used abbreviation for “human resources”. In view of this, the inclusion of these two elements in the disputed domain name does not prevent a finding that it is confusingly similar to the CVS trademark.

In view of the above, the Panel finds that the disputed domain name is confusingly similar to the CVS trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that it has not authorized by the Complainant to register or use the CVS trademark, is not commonly known by the disputed domain name and has no trademark rights in it. The Complainant also points out that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but is using it in connection with a false website that confuses users looking for the Complainant’s human resources website for its employees. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not alleged that is has rights and legitimate interests in the disputed domain name and has not submitted any evidence. It has only stated that it has deactivated the disputed domain name prior to this proceeding.

The disputed domain name incorporates the CVS trademark and its relevant elements coincide with the relevant elements of the Complainant’s domain name <myhr.cvs.com> used by its human resources department. It resolved to a website whose content is described as instructions about the registration and logging into an online service offered by the Complainant for its current and former employees to help them access job-related information and benefit plans. According to the Complainant, the website is false, and the Respondent does not deny this.

In view of the above, the Panel is satisfied that it is more likely than not that the Respondent, being aware of the goodwill of the CVS trademark, has registered and used the disputed domain name in an attempt to exploit the trademark’s goodwill by impersonating the Complainant and thus attracting Internet users to the Respondent’s website for commercial purposes by misleading them that they are accessing an online portal of the Complainant for its human resources department. In the Panel’s view, this conduct of the Respondent does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use, and therefore does not give rise to rights and legitimate interests of the Respondent in the disputed domain name.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(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 that 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 online 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.”

As discussed above, the disputed domain name is confusingly similar to the CVS trademark and to the Complainant’s domain name <myhr.cvs.com>. The disputed domain name used to resolve to a website that purported to contain information about the registration and logging into a human resources portal maintained by the Complainant for its employees.

Taking the above into account, and in the absence of any allegations or evidence to the contrary, the Panel accepts that the Respondent has registered and used the disputed domain name with knowledge of the Complainant and targeting the CVS trademark. It is likely that by creating a likelihood of confusion with the Complainant’s CVS trademark and with the Complainant’s human resources website, the Respondent has attempted to attract traffic to the disputed domain name and confuse Internet users that they are reaching an online location of the Complainant, likely for commercial gain. In these circumstances, it cannot be excluded that sensitive data may be collected from confused and unsuspecting Internet users who have accessed the Respondent’s website in the belief that it is maintained by the Complainant.

Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith.

7. Decision

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 <myhr-cvs.info> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: December 18, 2019