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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

CuraScript, Inc. v. Domains Ventures

Case No. D2006-0369

 

1. The Parties

The Complainant is CuraScript, Inc., Orlando, Florida United States of America, represented by Bryan Cave, LLP, United States of America.

The Respondent is Domains Ventures, Xiamen, Fujian 361001, China.

 

2. The Domain Name and Registrar

The disputed domain name <curascripts.com> is registered with Moniker Online Services, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2006. On March 23, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On March 28, 2006, Moniker Online Services, 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 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 March 28, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2006. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on April 18, 2006.

The Center appointed Christopher Pibus, Sally Abel and Yong Li as panelists in this matter on May 4, 2006. The Panel finds that it was properly constituted. Each member of 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, CuraScript, Inc. is a specialty pharmacy service company providing pharmaceutical services to managed health care organizations, their providers and patients. CuraScript Inc. is headquartered in Orlanda, Florida, employs over 2400 people and claims to manage more than 800 managed health care accounts. It operates distribution facilities throughout the United States in Florida, California, Texas, New York, Nebraska and Pennsylvania.

The Complainant owns the CURASCRIPT trade-mark (U.S. Federal trademark registration No. 2, 575, 707) for retail pharmacy services via a global computer network under International Class No. 35. It has been engaged in the provision of pharmacy services under and in connection with this mark since August 2000. The Complainant also owns four pending U.S. trade-mark applications incorporating its CURASCRIPT mark, each for pharmacy, pharmacy benefit administration and health care services.

The Complainant operates and maintains the <curascript.com> website where users can, among other things, order prescription drug products on-line for home delivery, receive health and drug information, and obtain benefit details and prescription histories. It also owns and uses more than twenty (20) additional domain names incorporating the CURASCRIPT mark.

The Respondent, Domains Ventures, registered the domain name <curascripts.com> on September 15, 2004. At the date of the Complaint, the Respondent was operating an active website using this domain name. The Respondent’s website offers, among other things, pharmacy related goods and services through links to third party vendors. The Respondent displays “curascripts.com” at the top left hand corner of the home page.

The Respondent has failed to file any Response in the present proceedings.

 

5. Parties’ Contentions

A. Complainant

The Complainant has filed detailed submissions outlining its use of the CURASCRIPT mark and claiming that the mark is now well-established and even famous. On the central points in issue, the Complainant contends the following:

(a) Identical or Confusingly Similar – The domain name <curascripts.com> is virtually identical and confusingly similar to the Complainant’s CURASCRIPT mark. The only distinction is the addition of the final “s”. Complainant argues that this sort of blatant “typo-squatting” satisfies the “confusingly similar” requirement of paragraph 4(a)(i) of the Policy.

(b) Legitimate Rights or Interests - The Respondent has no legitimate rights or interest in the disputed domain name. The Respondent’s registration of the domain name, knowing that its actions would mislead and divert a large number of consumers seeking the Complainant’s site, precludes a finding of a bona fide offering of goods and/or services or a legitimate non-commercial or fair use. The Respondent is not in any way associated with the Complainant, has never sought nor received authorization or a license to use the CURASCRIPT mark, and cannot demonstrate that it has ever made any legitimate offering of goods or services under the Complainant’s mark. Furthermore, the Respondent has no means to establish that it is or ever has been commonly known as “CuraScripts”. Lastly, the Respondent is using the disputed domain name for the improper commercial purposes of (i) illegally trading upon the Complainant’s goodwill to confuse, mislead, deceive and divert consumers; (ii) misdirecting the Complainant’s customers to websites that offer directly competing services; and iii) intentionally tarnishing and diluting the Complainant’s valuable CURASCRIPT mark.

(c) Registered and Used in Bad Faith – The Respondent registered and is using the disputed domain name in bad faith based on the following factors: (i) the Respondent is intentionally attempting to divert, for commercial gain, Internet users to one or more competing websites to intentionally confuse and mislead consumers; (ii) the Respondent utilizes an infringing and virtually identical domain name to divert users away from the Complainant’s website, causing the Complainant commercial harm; (iii) the Respondent has no legitimate trademark, service mark or other intellectual property rights to the disputed domain name or any similar marks or names; (iv) the Respondent plainly knew of the Complainant’s well-established use of the CURASCRIPT mark at the time of registration and that it had no right, title or interest, whatsoever, in the mark or domain name; and (v) a search conducted in the database of the WIPO and NAF arbitration decisions indicates that the Respondent is engaged in a pattern of bad faith registration and use of domain names.

B. Respondent

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

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) The domain name is identical or confusingly similar to a trade-mark or service mark in which the Complainant has marks;

(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

There are two elements that must be proven in order for the Complainant to succeed on this threshold issue: a) the Complainant has rights in the particular mark or marks; and b) the domain name in question is identical or confusingly similar to that mark.

The first element is readily established and independently verified by reference to the applicable Trademarks register. In this case, presentation of printouts from the USPTO Trademark Electronic Search System satisfies the Panel that the Complainant has rights in the mark CURASCRIPT (Imperial College of Science, Technology and Medicine v. Zahid Khan (for Imperial College Management School Alumni Association – ICMSAA), WIPO Case No. D2000-1079).

With respect to confusion, the Panel notes that the Respondent’s domain name <curascripts.com> wholly incorporates the Complainant’s trademark. Numerous panels have held that when a domain name wholly incorporates a complainant’s registered mark, that may be sufficient to establish identity or confusing similarity for the purposes of the Policy (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Dr., WIPO Case No. D2000-1525).

Furthermore, the disputed domain name <curascripts.com> differs from the mark CURASCRIPT merely by the addition of the letter “s” at the end of the word. This addition does not materially change the appearance, sound or meaning of the Complainant’s trademark. The pluralizing of the trademark constitutes “typosquatting”; there is no doubt that the domain name is confusingly similar to the trademark in question, see for example Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775. Ample authority exists to support the conclusion that “essential” or “virtual” identity is sufficient for the purposes of satisfying the second element above (See Wal-Mart Stores, Inc. v. walmarts, WIPO Case No. D2005-0706 (disputed domain name is <walmarts.com>); United Feature Syndicate, Inc. v. Mr. John Zuccarini, WIPO Case No. D2000-1449 (disputed domain name is <dillbert.com>)).

The Panel therefore finds that the Complainant has satisfied the first requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the domain name <curascripts.com> by establishing that its CURASCRIPTS trademark predates the Respondent’s registration of its domain name by almost two years and by confirming that there is no relationship between the Complainant and Respondent giving rise to any license, permission, or authorization of the disputed domain name. Because the Respondent failed to respond to the Complaint, the Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The evidence actually shows that the Respondent uses its domain name in connection with a portal site offering links to other websites that offer directly competing products and services. Using the Complainant’s virtually identical trademark as a domain name and on the website to divert traffic to the Respondent’s portal site is not a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use of the domain name (Oki Data Americas Inc. v. Albert Jackson, WIPO Case No. D2004-0087).

The Panel therefore finds that the Complainant has met the requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel accepts the Complainant’s argument that the essential facts in this case correspond closely to the examples of bad faith cited in paragraphs 4(b)(iv) of the Policy.

The Respondent uses <curascripts.com> as a portal site offering links to sites that offer directly competing products and services in the pharmaceutical services field. The use of a virtually identical domain name and the resulting confusion will inevitably give rise to diversion of Internet traffic from the Complainant’s site to the Respondent’s site. In this regard, numerous WIPO UDRP panels have held that attracting Internet traffic and diverting it to website(s) selling competitor’s products, through the use of a confusingly similar domain name, is evidence of bad faith under paragraph 4(b)(iv) of the Policy (See Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Edmunds.com v. Ultimate Search, Inc., WIPO Case No. D2001-1319; National City Corporation v. MH Networks LLC, WIPO Case No. D2004-0128).

Secondly, the Panel infers that the Respondent is benefiting from this confusion and diversion by receiving “click-through” commissions in accordance with conventional practices on the Internet when customers reach a site through a link on a portal. (Humana Inc. v. Domain Deluxe, WIPO Case No. D2005-0231).

Finally, by registering a plural version of the Complainant’s trade-mark as a domain name, the Respondent is intending to take advantage of the Complainant’s popularity by capturing traffic from Internet users looking for the Complainant, but misspelling its name. This form of “typosquatting” is considered bad faith within the meaning of the Policy (See Sanofi-Aventis v. Elizabeth Riegel and Andrew Riegal, WIPO Case No. D2005-1045; Estйe Lauder Inc. v. estelauder.com, WIPO Case No. D2000-0869).

With respect to paragraphs 4(b)(ii), the Complainant has brought to the attention of the Panel certain WIPO UDRP and NAF decisions, where the Respondent is alleged to have engaged in a pattern of bad faith registration and use of domain names. The decision in AARP v. Domains Ventures, NAF Case No. FA0507000514786 is based on facts with striking similarity to the present case. There the panel ordered the transfer of the domain name <aarppharmacyservices.com> to the owner of the AARP mark.

The two other decisions cited by Complainant involve a business identified as Domain Asia Ventures Inc., a slightly different name from that of the Respondent {InfoSpace, Inc. v. domains Asia Venture, NAF Case No. FA0310000198909 (November 10, 2003) and QVC Inc. and ER Marks, Inc. v. domains Asia Ventures, Inc. WIPO Case No. D2003-0523 (August 20, 2003). This difference is sufficient to make the panel reluctant to conclude that the prior cases involve the same party. However, as the bad faith element has been made out by the Complainant on other grounds, the Panel need not make a finding under paragraph 4/b)(ii) of the Policy.

For the reasons set out above, the Panel finds that the Complainant has met the requirement of paragraph 4(a)(iii) of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <curascripts.com> be transferred to the Complainant.

Christopher Pibus Presiding Panelist
Sally M. Abel Panelist	Yong Li Panelist

Dated: May 18, 2006