WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CVS Pharmacy, Inc. v. Yunus Basar

Case No. D2020-1299

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 Yunus Basar, Turkey.

2. The Domain Names and Registrar

The disputed domain names <cvshealthstore.com> and <cvspharmacyhours.com> are registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2020. On May 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 25, 2020, 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.

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 of the Complaint, and the proceedings commenced on May 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2020.

The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on June 29, 2020. 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

CVS Pharmacy, Inc., is the principal operating company of CVS Health Corporation (“CVS Health”), a publicly traded corporation with annual revenue in 2019 of USD 256.8 billion.

CVS Pharmacy, Inc., is a direct, wholly owned subsidiary of CVS Health and holds many assets directly, including most of the relevant intellectual property interests, including the CVS trademark (as defined below) and the domain names containing the CVS trademark.

The Complainant is the owner of at least 520 trademark registrations in at least 27 countries or jurisdictions worldwide for marks that consist of or contain CVS or CVS HEALTH or CVS/PHARMACY, hereinafter referred to as the “CVS Trademark”.

The Complainant’s registrations for the CVS Trademark in the United States include the following:

- Reg. No. 919,941 for CVS (registered September 7, 1971);

- Reg. No. 1,698,636 for CVS (registered July 7, 1992);

- Reg. No. 1,904,058 for CVS (registered July 11, 1995);

- Reg. No. 5,055,141 for CVS HEALTH (registered October 4, 2016);

- Reg. No. 5,402,010 for CVS HEALTH (registered February 13, 2018);

- Reg. No. 2,048,916 for CVS/PHARMACY (registered April 1, 1997); and,

- Reg. No. 2,662,956 for CVS/PHARMACY (registered December 17, 2002).

The Complainant is the registrant of and uses the domain names <cvs.com> (created January 30, 1996), <cvshealth.com> (created April 15, 2005), and <cvspharmacy.com> (created December 11, 1995).

The disputed domain names were registered on July 5, 2019 (<cvshealthstore.com>) and September 17, 2019 (<cvspharmacyhours.com>). The disputed domain names resolve to websites offering the disputed domain names for sale.

5. Parties’ Contentions

A. Complainant

The Complainant is a health innovation company in the United States, with approximately 300,000 workers in more than 9,900 retail locations and approximately 1,100 walk-in medical clinics in 49 states, the District of Columbia, and Puerto Rico, serving 4.5 million customers daily and ranks as number 8 on the “Fortune 500” list of America’s largest corporations.

In essence, the Complainant claims that the disputed domain names are confusingly similar to the CVS Trademark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain names, which were registered and are used in bad faith.

The Respondent is a repeated cybersquatter who previously registered and used a domain name incorporating a third party trademark, against which a UDRP proceeding was brought and a UDRP panel found against the Respondent under the Policy. Morgan Stanley v. yunus basar, Forum Claim No. 1873946.

The Respondent is advertising the disputed domain name <cvshealthstore.com> for sale on a website associated with the disputed domain name <cvshealthstore.com>, and is using the disputed domain name <cvspharmacyhours.com> in connection with a website for “DomainNameSales”, which is described as “an extensive collection of premium domain names, a robust domain parking and monetization platform, and the most knowledgeable brokers in the industry”. The Respondent is indirectly offering the disputed domain name <cvspharmacyhours.com> for sale.

The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the CVS Trademark in any manner.

Although it is unclear whether Respondent is currently engaged in actual acts of phishing with either of the disputed domain names, it is obvious that domain names that are confusingly similar with the Complainant’s CVS Trademark are ripe for phishing or other misuse.

Finally, the Complainant requests the Panel to issue a decision ordering that the disputed domain names be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain names, the Complainant must prove each of the following, namely that:

(i) the disputed domain names are 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 disputed domain names; and

(iii) the disputed domain names were registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has proved that it has rights in the CVS Trademark.

As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain names to determine whether the disputed domain names are confusingly similar with the trademark. The test involves a side-by-side comparison of the disputed domain names and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain names.

The Panel considers that the disputed domain names are confusingly similar with the Complainant’s CVS Trademark.

Both disputed domain names contain the CVS Trademark (including the CVS HEALTH trademark or the CVS/PHARMACY trademark) in its entirety. As set forth in section 1.7 of WIPO Overview 3.0: “in cases where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark”. See also, e.g., Oki Data Americas, Inc. v. Asdinc.com, WIPO Case No. D2001-0903 (“the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy”).

In a previous UDPR case the panel found that disputed domain names containing the words “CVS” and “health” were confusingly similar to the CVS Trademark (CVS Pharmacy,Inc. v. Linyanxiao, WIPO Case No. D2015-1839).

Also, in CVS Pharmacy,Inc. v. Whois Privacy Protection Service / Jasna Knezevic, WIPO Case No. D2013-0564, the UDRP panel has found the disputed domain name containing the words“CVS” and “store” confusingly similar to the CVS Trademark.

The CVS trademark is clearly recognizable at the beginning of both disputed domain names and, for the purpose of the Policy, the disputed domain names are both confusingly similar with the CVS Trademarks in which the Complainant has rights.

According to section 1.8 of WIPO Overview 3.0: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.

The absence of a slash from the disputed domain name <cvspharmacyhours.com> (which appears in those of the CVS Trademarks that consist of “CVS” and “Pharmacy”) is irrelevant because the presence or absence of “punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity” (Six Continents Hotels, Inc. v. Helen Siew, WIPO Case No. D2004-0656) and may be ignored for the purpose of the Policy.

For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) as it is viewed as a standard registration requirement (section 1.11.1 of WIPO Overview 3.0). Thus, for the test for confusing similarity the Panel shall disregard the “.com” gTLD included in the disputed domain names.

The Panel finds that both the disputed domain names are confusingly similar with the CVS Trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

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

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production 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.

The offering for sale of the disputed domain names by the Respondent does not constitute use of, or demonstrable preparations to use either of the disputed domain names in connection with a bona fide offering of goods or services and, therefore, cannot establish rights or legitimate interests pursuant to paragraph 4(c)(i) of the Policy.

As sustained by the Complainant, there is no evidence in the present case that the Respondent has been commonly known by the disputed domain names, enabling it to establish rights or legitimate interests therein. The name of the Respondent does not resemble the disputed domain names in any manner.

Furthermore, there is no evidence in the file to prove any of the circumstances mentioned in paragraph 4(c) of the Policy, nor any other to prove that the Respondent has legitimate interests or that it has established rights in the disputed domain names.

Likewise, and as further discussed under section 6.C of this decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain names – which are confusingly similar with the Complainant’s CVS Trademark – but rather that it intends to use the disputed domain names for the purpose of deriving unfair monitory advantage by confusing Internet users and leading them to believe that the site to which the disputed domain name relates is the official site of the Complainant.

As established in section 2.5 of WIPO Overview 3.0: “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry [….] Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation.” As indicated in paragraph 6.A above, the disputed domain names are confusingly similar with the CVS Trademark and the Respondent is not using either of the disputed domain names in any way that may be considered fair use.

The Panel finds that the Complainant has made out a primafacie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain names (Telstra Corporation Ltd. V. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names and that the requirements of paragraph 4(a)(ii) of the Policy have been fulfilled.

C. Registered and Used in Bad Faith

The Respondent registered the disputed domain names that contain a third party’s trademark without authorization. The Respondent could not ignore the existence of the CVS Trademark when it registered the disputed domain names on July 5, 2019 (<cvshealthstore.com>) and September 17, 2019 (<cvspharmacyhours.com>).

Pursuant to section 3.1.4 of WIPO Overview 3.0 , “[T]he mere registration of a domain name that is identical or confusingly similar […] to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”.

The CVS Trademark is famous and/or widely known, as previous UDRP panels have said. Specifically, a previous UDRP panel said the CVS Trademark “is a well-known retail brand in the United States”. CVSPharmacy, Inc. v. Registration Private, Domains By Proxy, LLC / CVS Health, WIPO Case No. D2015-1876.

In fact, the CVS Trademark is widely known worldwide, given that it is protected by at least 520 trademark registrations in at least 27 countries or jurisdictions worldwide, and the Complainant had net revenue of USD 256.8 billion in 2019.

Previous panels under the Policy have said that “the mark CVS [… is] widely known in many countries,” Aetna Inc. and CVS Pharmacy, Inc. v. James, WIPO Case No. D2018-0796; and the CVS Trademark enjoys “reputation and fame”, Aetna Inc., CVS Pharmacy, Inc. v. Chang Jiang Li, Li Chang Jiang, WIPO Case No. D2018-0795.

The Complainant registered and used the CVS Trademark many years before the year 2019 in which the Respondent registered the disputed domain names. Therefore, it is difficult to conceive that any use of the disputed domain names would not be related by Internet users to the Complainant and its activities. This assumption is further supported by the fact that the disputed domain names entirely contain the Complainant’s CVS Trademark.

The inclusion of the word “pharmacy” in the disputed domain name <cvspharmacyhours.com> and “health” in the disputed domain name <cvshealthstore.com>, both of which relate to the Complainant’s activities, strengthens the idea of a relationship between both disputed domain names and the Complainant and the CVS Trademarks.

In view of the above, it is inconceivable that the Respondent was not well aware of the Complainant’s trademark rights at the time of the registration of the disputed domain names. Indeed, the Respondent’s purpose in registering the disputed domain names incorporating the CVS Trademark was very likely to capitalize on the reputation of the Complainant’s CVS Trademark by diverting Internet users to its own website.

UDRP panels have found that registering and offering a domain name for sale in excess of the respondent’s costs related to the domain name may support a finding of bad faith registration and use when circumstances exist such as, inter alia, the distinctiveness or reputation of the complainant’s mark, the respondent’s likely knowledge of the complainant’s rights, the nature of the domain name, and the failure of the respondent to present a credible evidence-backed rationale for registering the domain name. The Panel finds that all these circumstances are relevant to this administrative proceeding and therefore that a finding of bad faith is supported by the Respondent’s registration and offering of the disputed domain name for sale with the intent to profit from the goodwill associated with the Complainant’s well-known trademarks. (Section 3.1.1 of WIPO Overview 3.0).

In conclusion, the Panel considers that the Respondent has registered and is using the disputed domain names in bad faith to confuse Internet users and thereby derive an illegal commercial benefit by taking advantage of the popularity of the Complainant’s CVS Trademark.

Therefore, the Complaint also succeeds on the third prong of paragraph 4(a) of the Policy.

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 names, <cvshealthstore.com> and <cvspharmacyhours.com>, be transferred to the Complainant.

Miguel B. O’Farrell
Sole Panelist
Date: July 18, 2020