4. Factual Background

The Complainant, Medco Health Solutions, is a leading provider of pharmacy benefit management services in the United States.

The Complainant has been using the element “Medco” in its name and marks since 1984. It is currently the owner of many United States registrations for trademarks MEDCO, MEDCOHEALTH and variations thereof, namely: Reg. No. 2,894,558, for MEDCO, granted on October 19, 2004; Reg. No. 3,061,048, for MEDCO (stylized), granted on February 21, 2006; Reg. No. 2,744,576, for MEDCOHEALTH, granted on July 29, 2003; Reg. No. 2,755,838, for MEDCOHEALTH.COM, granted on August 26, 2003; Reg. No. 2,736,401, for MEDCOHEALTHCONSULTANT.COM, granted on July 15, 2003; Reg. No. 2,948,760, for MEDCOHEALTH LIVE LIFE WELL, granted on May 10, 2005; and Reg. No. 3,051,314, for MEDCO HEALTH SOLUTIONS, granted on January 24, 2006. All these registrations cover services related to “pharmaceutical benefit management services and mail order and on-line pharmacy services”.

The Complainant is further the owner of domain names <medco.com> and <medcohealth.com> and uses them to direct Internet users to its official websites. Those two domain names were registered on February 21, 1996, and March 16, 2000, respectively.

Disputed domain name <medcohealh.com> was registered in the name of the Respondent with the Registrar on April 18, 2006.

5. Parties’ Contentions

A. Complainant

The Complainant asserts its mail order business is one of the United States’ largest mail order pharmacy operations. To name some of the Complainant’s corporate data, it managed 503 million prescriptions through its mail service pharmacies and its network of approximately 60,000 retail pharmacies in 2004. In the same year, the Complainant’s Internet pharmacy website processed nearly 17 million prescriptions.

As a result of these activities, together with the ostensive use of trademarks MEDCO, MEDCOHEALTH and variations thereof, the Complainant conveys it has built up highly valuable goodwill in its MEDCO family of marks.

In order to satisfy the three-prong test of Paragraph 4(a) of the Policy, The Complainant sustains that:

- The Respondent’s domain name <medcohealh.com> is confusingly similar to the Complainant’s family of MEDCO marks because it is an obvious misspelling of the dominant portion of those marks, simply omitting the “t” in “health”;

- The Respondent does not own a trademark or service mark registration that is identical or similar to the <medcohealh.com> domain name;

- Medcohealth is not the Respondent’s personal name and the Respondent is not known to the public under the name Medcohealth;

- The Respondent is not and has not been using the contested domain name in connection with a bona fide offering of goods or services. Rather, The Respondent is using the domain name in an attempt to trade on The Complainant’s reputation and goodwill by offering competing online pharmacy services through sponsored links, which lists “Medco Health Solution” and “Medco Health Solutions” (not related to The Complainant’s site);

- The Respondent registered the disputed domain name with knowledge of The Complainant’s marks in order to divert Internet users to its competing website;

- WIPO URDP panels have found bad faith where registrants engage in “typosquatting” activities;

- The Respondent’s use of the domain name in such a way as to create likelihood of confusion with the Complainant’s marks is in itself evidence of bad faith, as set forth in a Nat. Arb. Forum’s precedent.

Finally, the Complainant requests the panel to order the transfer of the disputed domain name to the Complainant.

B. Respondent

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

6. Discussion and Findings

In the administrative proceeding each the following provisions of paragraph 4(a) of the Policy must be established by the Complainant:

(i) the domain name registered by the Respondent is 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 domain name; and

(iii) the domain name has been registered and used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name is <medcohealh.com>, a domain which distinctive parcel is formed by expressions Medco and Healh (without “t”).

The Complainant, in its turn, is the owner of many registrations for trademarks MEDCO, MEDCOHEALTH and variations thereof. These registrations provide the Complainant with exclusive rights over cited marks and the resulting prerogative to enjoin anyone from using identical or similar expressions in connection with the Complainant’s activities.

The omission of letter “t” obviously does not provide the disputed domain name with sufficient distinctiveness in relation to the Complainant’s marks. The likelihood of confusion is blatant inasmuch as any one who is looking for the Complainant’s website may erroneously type the disputed domain name and presume that the respective website is linked, sponsored or otherwise associated to the Complainant. This circumstance is especially enhanced because the Complainant uses the domain name “medcohealth.com” (with “t”) as the address of its official website.

WIPO’s case law, further, is well-settled in the sense that the mere omission of a single letter is not sufficient to make the domain name distinguishable in relation to the trademark at issue (e.g. Microsoft Corp. v. Whois Privacy Protection Service, WIPO Case No. D2005-0642; Accor v. Howell Edwin, WIPO Case No. D2005-0980; HM Publishers Holdings Ltd. v. Webserve LLC, WIPO Case No. D2005-0741; Siemens AG v. Siemens.Com, WIPO Case No. D2005-0927; Netstock, Inc. v. Music Wave, WIPO Case No. D2002-0441; Hershey Foods Corp. and Hershey Chocolate & Confectionary Corp. v. Amcore & Co. For Sale Domains $250 or Best Offer, WIPO Case No. D2003-0838).

For the above reasons, the Panel holds that the disputed domain name is confusingly similar to the Complainant’s marks, so that the requirement of Paragraph 4 (a) (i) of the Policy is duly met.

B. Rights or Legitimate Interests

As the Respondent has not filed a reply in this proceeding, the Panel shall decide the case based upon the Complaint and on the basis of the statements and documents submitted, as instructed by paragraphs 5(e) and 15(a) of the Rules.

Upon reviewing the Complaint, the Panel concludes that the Complainant has made a prima facie case in which the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent is not known as Medco or Medco Healh; there is no evidence that the Respondent owns a trademark or service mark registration for Medco or Medcohealh; there is no evidence that the Respondent uses or intends to use these marks in relation to an established or prospective business; and there is no evidence that the Respondent has ever used the disputed domain in connection with a bona fide offering of goods or services.

To the contrary, while typing the disputed domain name, the Internet user is directed to many third parties’ websites, some of which provide medical and health care services, that is, activities that are clearly related to the Complainant’s business.

Nothing in this Complaint, therefore, supports the conclusion that the Respondent has rights or legitimate interests in the disputed domain name, so that the requirement of Paragraph 4 (a) (ii) of the Policy is met.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must prove that the disputed domain name has been registered and is being used in bad faith. Paragraph 4 (b) (iv), in its turn, provides that bad-faith may be found whenever:

“(iv) by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.

Given the substantial evidence presented in the Complaint, it seems clear that the Complainant’s trademarks MEDCO and MEDCOHEALTH are well known in the field of pharmacy benefit management services.

In the Panel’s view, this is a clear case of typosquatting, in which the registrant has willfully omitted a single letter of trademark MEDCO HEALTH in order to mislead and capture Internet users who make a typographical mistake when trying to type the Complainant’s legitimate domain name <medcohealth.com>.

This is not the first time, indeed, in which the Respondent is involved in typosquatting activities. The Respondent had previous findings against him in relation to this UDRP WIPO Decisions (Medco Health Solutions, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2005-0216; and Volkswagen AG v. Digi Real Estate Foundation, WIPO Case No. D2005-0952) and at least one UDRP case decided before the National Arbitration Forum (Whitney National Bank v. Digi Real Estate Foundation, NAF Case No. FA0602000637811).

In Medco Health v. Digi Real, WIPO Case No. D2005-0216, the Respondent had registered domain name <medcohaelth.com>, a domain name that is also almost identical to the Complainant’s mark, and the Panel did not hesitate to find bad-faith in that company’s practice.

In Volkswagen v. Digi Real, WIPO Case No. D2005-0952, The Respondent had registered <volkswagn.com>, a domain name clearly inspired by the name and mark of Volkswagen AG, the famous German automobile manufacturer. Finally, in Whitney v. Digi Real, NAF Case No. FA0602000637811), the Respondent had registered domain name <witneybank.com>, a blatant imitation of the Complainant’s WHITNEY BANK trademark, used in the United States for over one hundred and twenty years.

The Respondent’s behavior clearly indicates it is engaged in the practice of, registering domain names corresponding to known marks with slight differences (i.e. omitting a single letter, changing the order of letters, etc.).

By proceeding this way in the present case, the Respondent diverts Internet users from the Complainant’s website and directs them to a variety of other sponsored websites that have absolutely no relation to the Complainant. In other words, the Respondent misappropriates and takes a free ride on the substantial goodwill developed on the Complainant’s mark, thus incurring in the bad-faith violation foreseen in Paragraph 4(b)(iv) of the Policy.

Such practice has already been held to be evidence of bad-faith in many WIPO precedents (e.g. Adidas-Salomon AG v. Legueret Dominique, WIPO Case No. D2002-0107; Travelprice Com v. Pissin Chicken Inc., WIPO Case No. D2002-0129; Nike, Inc. v. Alex Nike, WIPO Case No. D2001-1115; Playboy Enterprises International Inc. v. SAND WebNames - For Sale, WIPO Case No. D2001-0094; Novus Credit Services Inc. v. Personal, WIPO Case No. D2000-1158; World Wrestling Federation Entertainment, Inc. v. Matthew Bessette, WIPO Case No. D2000-0256; InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck, WIPO Case No. D2000-0069).

As a result, the Panel concludes that domain name <medcohealh.com> has been registered and is being used in bad faith under the terms of Paragraph 4(b)(iv) of the Policy, so that the requirement of Paragraph 4(a)(iii) is also met.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders the transfer of the domain name, <medcohealh.com>, to the Complainant.

Peter D. Siemsen
Sole Panelist

Dated: July 27, 2006

Источник информации: https://xn--c1ad2agd.xn--p1ai/intlaw/udrp/2006/d2006-0693.html

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