ADMINISTRATIVE PANEL DECISION

Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc.

Case No. D2004-0453

1. The Parties

The Complainant is Medco Health Solutions, Inc. (“Complainant”), a Delaware corporation with its principal place of business in Franklin Lakes, New Jersey, United States of America, represented by Cowan, Liebowitz & Latman, P.C., New York, United States of America.

The Respondent is Whois Privacy Protection Service, Inc. (“Respondent”), Bellevue, Washington, United States of America. Since Respondent did not submit a formal Response in this Proceeding, Respondent did not submit to the Center any contact information other than that which is found in the WHOIS record for the domain name at issue.

2. The Domain Name and Registrar

The disputed domain name is <pharmedco.com> (“Domain Name”).

The Registrar with which the Domain Name is registered is eNom, Inc. (“Registrar”), Bellevue, Washington, United States of America.

3. Procedural History

The Complaint was filed with the World Intellectual Property Organization Arbitration and Mediation Center (the “Center”) on June 18, 2004. On June 18, 2004, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the Domain Name at issue. On June 18, 2004, eNom, Inc. transmitted by email to the Center its verification response. 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 Respondent of the Complaint, and the proceedings commenced on June 22, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was July 12, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 13, 2004.

The Center appointed Carol Anne Been as the sole panelist in this matter on August 6, 2004. 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 Transmission of Case File to Administrative Panel was dated August 6, 2004. English is the language of the proceeding. In the Notification of Appointment of Administrative Panel, the Projected Decision Date for the Administrative Panel to forward the decision to the Center was set for August 20, 2004. An extension of the Decision Date to August 25, 2004, was granted by the Center on August 16, 2004.

4. Factual Background

The following facts are asserted by Complainant in the Complaint and are not disputed:

Complainant

Complainant is a Delaware corporation with its principal place of business in Franklin Lakes, New Jersey, United States of America. Complainant is a provider of pharmacy benefit management services to medical insurance plans, managed care organizations, and other large companies. Complainant also operates a nationwide mail order pharmacy.

Complainant has been providing its goods and services under its MEDCO trademarks since 1984. Complainant has spent millions of dollars throughout the United States promoting its goods and services under the MEDCO trademarks since that time.

Complainant owns eleven United States trademark registrations and pending applications containing the term MEDCO, including in International Class 35 for, among other services, drug utilization review services and mail order and online pharmacy services; in International Class 36 for, among other services, online pharmacy benefit management services and pharmaceutical benefit management services, namely, administration of pharmacy benefit plans; in International Class 44 for, among other services, online information services in the field of health care and pharmaceuticals, and medical services, namely, disease management services; in International Class 16 for, among other goods, pamphlets, brochures, newsletters and journals in the fields of health care and pharmaceuticals. See United States Trademark Registration Nos. 2,755,838 (registered as of August 26, 2003, claiming first use date of June 28, 2002); 2,736,401 (registered as of July 15, 2003, claiming first use date of July 29, 2002); and 2,744,576 (registered as of July 29, 2003, claiming first use date of June 28, 2000). Copies of the printouts from the U.S. Patent and Trademark Office TARR database listing the details of these registrations were attached as Exhibit A of the Complaint. All of the listed registrations are in full force and effect and the marks are still owned and used by Complainant.

In addition to its registered trademarks, Complainant also conducts business on the Internet through its MEDCO domain names, including <medco.com> and <medcohealth.com>. Complainant also owns other domain names incorporating the MEDCO mark, such as <medcorx.com/.net/.org/.info/.biz> and <medcoprescriptionplans.com/.net/.org/.info/.biz>.

Complainant’s domain name, <medco.com>, was registered on February 21, 1996. Complainant maintains an active website at “medco.com”, providing 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. In 2003, Complainant’s net revenues were $34 billion. That year, Complainant managed 532 million prescriptions, including 78 million prescriptions in its mail order pharmacies.

Respondent

Respondent registered the Domain Name on or about September 22, 2003. The Domain Name includes the word MEDCO, which is the key component of Complainant’s corporate name, business name, trademarks and domain names.

The Domain Name leads to a website that offers online prescription drug ordering. See Screen shot of Respondent’s website provided by Complainant, dated April 21, 2004, attached as Exhibit D of the Complaint. An Internet user may order medications directly through Respondent’s website at the Domain Name, via a secure online order form. Once the order is received by Respondent, it is sent to a “U.S. licensed physician” who reviews the order and issues a prescription directly to a “U.S. Licensed Pharmacy.” That pharmacy fills the prescription and mails the medication directly to the purchaser.

No facts have been asserted by Respondent since Respondent did not submit a Response in this proceeding.

5. Parties’ Contentions

A. Complainant’s Contentions

i. Domain Name Identical or Confusingly Similar

Complainant alleges that the Domain Name is confusingly similar to Complainant’s trademark, MEDCO, and its variations, as well as Complainant’s MEDCO domain names. Complainant contends that the Domain Name enables Respondent to divert Internet users who use the Domain Name to go to Respondent’s website when searching for Complainant or for Complainant’s online pharmacy services. Complainant further alleges that Respondent’s website at the Domain Name is diverting Internet users to Respondent’s competing website since the Domain Name is confusingly similar to Complainant’s MEDCO trademarks.

ii. Respondent’s Rights or Legitimate Interests in the Domain Name

Complainant alleges that Respondent has no rights or legitimate interests in the Domain Name.

Complainant contends that Respondent does not own a trademark or service mark registration that is identical, similar or in any way related to the Domain Name or Complainant’s MEDCO trademarks. Complainant also alleges that “pharmedco” is not Respondent’s personal name, and that Respondent does not hold itself out to the public under the name “pharmedco.” Complainant asserts that Respondent is not a licensee of, or otherwise authorized by, Complainant. Complainant also proffers that, independent of any intended confusion with Complainant, Respondent is not using the Domain Name in connection with a bona fide offering of goods and services.

iii. Domain Name Registered or Used in Bad Faith

Complainant alleges that Respondent registered and is using the Domain Name in bad faith.

Complainant contends that Respondent’s actions in registering and using the Domain Name were made with knowledge of Complainant’s MEDCO trademarks, and were a concerted attempt to divert Internet users to Respondent’s competing website.

Complainant alleges that Respondent has contacted customers of Complainant’s pharmacy services by e-mail and falsely indicated that they had recently ordered medications from <pharmedco.com> when in fact they had only ordered medications from Complainant. Complainant contends that these activities preclude Respondent from claiming that it is making a bona fide offering of goods and services, and are themselves evidence of bad faith conduct.

Complainant asserts that Respondent’s use of the Registrar’s privacy protection feature to mask its true identity constitutes evidence of bad faith conduct. Complainant also cites Respondent’s lack of response to a April 26, 2004 demand letter and subsequent unanswered voicemail messages as additional indications of Respondent’s bad faith conduct.

B. Respondent’s Contentions

Respondent has not filed a Response and thus has not contested the allegations of the Complaint.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires Complainant to prove that:

(i) the Domain Name is identical or confusingly similar to a service mark in which Complainant has rights; and

(ii) Respondent has no legitimate interest in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. The Domain Name is confusingly similar to a service mark in which Complainant has rights

Complainant has alleged that it has rights in the mark, MEDCO, and variations thereof, as well as in MEDCO-related domain names, including <medco.com> and <medcohealth.com>. Complainant has widely used the MEDCO marks to identify its goods and services since at least as early as 1984. As a result of such use, Complainant has acquired common law trademark rights in the MEDCO mark. Complainant has also registered, or applied to register, its MEDCO and other MEDCO-related marks for various online pharmacy-related services in the United States.

Respondent registered the Domain Name in 2003. The Domain Name includes the word MEDCO in its entirety, which is identical to Complainant’s MEDCO mark in which Complainant has common law rights, and which is also identical to the distinctive component of Complainant’s registered MEDCO marks and similar in structure to Complainant’s domain names that use MEDCO together with another word or suffix. Though Respondent’s Domain Name includes the prefix “phar” added to Complainant’s mark, which could be construed as a descriptive of the word “pharmacy” or “pharmaceutical,” this minor addition does not eliminate the recognition of the MEDCO portion of the Domain Name. Many panel decisions have found confusing similarity despite analogous differences between a disputed domain name and a trademark. See, e.g., Lammot Copeland, Jr. v. Computer Product Introductions, WIPO Case No. D2003-0823 (finding confusing similarity between domain name <craftreport.com> and mark THE CRAFTS REPORT). Still other panel decisions have found that in cases where the domain name contains prefix terms that relate generally to the business of the complainant, such as the computer industry, there is confusing similarity between the domain names and the trademark. See, e.g., Dell Computer Corporation v. Alex and Birgitta Ewaldsson, WIPO Case No. D2000-1087 (finding the use of computer-related terms including descriptive prefixes next to DELL mark constituted confusing similarity between domain names and marks). Similarly, in this case, the addition of a drug-related term or descriptive prefix, “phar,” to the mark MEDCO to create the Domain Name does not avoid confusing similarity.

Thus, the Administrative Panel holds that the Domain Name is confusingly similar to Complainant’s mark, MEDCO, and its other MEDCO-related marks and domain names.

B. Respondent has no rights or legitimate interests in respect of the Domain Name

While the burden of proof of the lack of rights or legitimate interests in the Domain Name rests with Complainant, the failure by Respondent to file a Response in this Proceeding means that the Administrative Panel must decide whether on consideration of all the evidence provided by Complainant that Complainant has met its burden of proof.

Respondent has not set forth any evidence of circumstances of the type described in Paragraph 4(c) of the Policy, or of any other circumstances indicating a right or legitimate interest in the Domain Name.

Respondent does not appear to be commonly known by the name “pharmedco,” other than through the Domain Name itself. Respondent does not appear to be licensed by, or have any authorization from, Complainant to use the mark MEDCO or to use and register the Domain Name. Further, Respondent’s use of the privacy protection feature of the Registrar intentionally conceals the real name of Respondent, thereby preventing the Administrative Panel from looking to the name of Respondent in assessing the legitimacy of Respondent’s use of the Domain Name.

A search on the U.S. Patent and Trademark Office online TESS database shows no active registrations or pending applications for PHARMEDCO as a trademark or “pharmedco.com” as an owner, thus minimizing, although not eliminating, the possibility that Respondent is using the name “pharmedco” as a bona fide business or trade name, or trademark, under which it is operating the business at the Domain Name.

Thus, the Administrative Panel holds that Respondent has no rights or legitimate interests in the Domain Name.

C. The Domain Name has been registered and is being used in bad faith

Complainant had continuously used MEDCO as a trademark for nineteen years before Respondent registered the Domain Name, which incorporates Complainant’s mark in its entirety. Complainant’s trademark registrations were registered as of July and August 2003, which placed Respondent on constructive notice of Complainant’s MEDCO marks. Respondent had constructive, if not actual notice of Complainant’s mark prior to its adoption and registration of the Domain Name in September 2003. See, e.g., RRI Financial, Inc. v. Ray Chen, WIPO Case No. D2001-1242 (finding that respondent’s constructive knowledge of complainant’s registered trademarks at time of registration of the domain name is factor supporting bad faith). Respondent has established no rights or legitimate interests with respect to the Domain Name, which is confusingly similar to Complainant’s mark, and Respondent has used the Domain Name only to point to its competing website.

Respondent’s competing website at the Domain Name provides online pharmacy services, which are significantly similar to, and in competition with, the online pharmacy services offered by Complainant at its websites “www.medco.com” and “www.medcohealth.com”. The Domain Name enables Respondent to benefit from any misdirected or confused consumers looking for Complainant and Complainant’s pharmacy-related products and services.

Absent any response from Respondent to the contrary, Respondent’s intent in registering and using the Domain Name appears from the circumstances to disrupt the business of a large and well-known competitor, and to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent has used the Domain Name to trade on the goodwill of Complainant’s mark.

Respondent’s activities in soliciting customers of Complainant who have purchased from Complainant’s websites and falsely communicating to these customers that they had ordered from Respondent’s website is further evidence of bad faith under Section 4(b)(iii) and (iv) of the Policy. Regardless of how Respondent obtained Complainant’s customer information, the very act of soliciting such information and using it in a way that potentially diverts business falls under Section 4(b)(iii) and (iv) of the Policy. This type of activity is an effort to disrupt Complainant’s business and to attract unwitting Internet users familiar with Complainant’s mark and online pharmacy products and services to Respondent’s website.

Respondent’s efforts to disguise its true identity by using the privacy protection feature of the Registrar is yet another example of bad faith conduct. See, e.g., Marian Keyes v. Old Barn Studios, Ltd., WIPO Case No. D2002-0687 (noting that use of an account masking function to hide respondent’s identity is evidence of bad faith).

The above facts taken together are adequate to indicate bad faith under Section 4(b)(iii) and (iv) of the Policy, absent any contrary indication from Respondent. Respondent’s failure to present any, let alone sufficient, contrary evidence leads the Administrative Panel to accept the evidence proffered by Complainant. Thus, the Administrative Panel finds that Respondent had at least constructive notice of Complainant’s well-known mark when it registered the Domain Name, posted a website offering similar and competing products and services to those which are offered by Complainant, deliberately solicited Complainant’s customer base in order to attempt to lure them to Respondent’s website, and masked its identity through the Registrar, which together provide more than enough evidence of bad faith registration and use of the Domain Name.

Therefore, the Administrative Panel concludes that Respondent registered and used the Domain Name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 5 of the Rules, the Administrative Panel orders that the Domain Name registered by Respondent Whois Privacy Protection Service, Inc. be transferred to Complainant Medco Health Solutions, Inc. as:

(i) The Domain Name is confusingly similar to a service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect to the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith by Respondent.

Carol Anne Been
Sole Panelist

Dated: August 25, 2004