WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CVS Pharmacy, Inc. v. Top Investments, LLLP
Case No. D2011-0379
1. The Parties
The Complainant is CVS Pharmacy, Inc. of Woonsocket, Rhode Island, United States of America, represented by Edwards Angell Palmer & Dodge UK LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Top Investments, LLLP of Mesa, Arizona, United States of America, represented by ESQwire.com PC, United States of America.
2. The Domain Name and Registrar
The disputed domain name <mycvs.com> (“Disputed Domain Name”) is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2011. On February 28, 2011, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the Disputed Domain Name. On February 28, 2011, Wild West Domains, Inc. 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 disputed domain name. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced March 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response March 27, 2011. The Response was filed with the Center March 29, 2011. Complainant submitted a Supplemental Filing on May 6, 2011. Respondent submitted a Supplemental Filing on May 17, 2011.1
The Center appointed Michael A. Albert, Richard G. Lyon and The Hon Neil Brown QC as panelists in this matter on April 27, 2011. 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
Complainant has numerous trademark registrations (“CVS Marks”) to the CVS name, including U.S. Reg. No. 919,941 to the mark CVS, registered on September 7, 1971, and U.S. Reg. No. 2,440,385 to the mark CVS.COM, registered on April 3, 2001. Complainant operates more than 7,100 retail drug stores in 41 States in the United States under the CVS and CVS/PHARMACY names.
The Disputed Domain Name was originally registered on May 19, 1999. Respondent registered the Disputed Domain Name on June 24, 2006.
5. Parties’ Contentions
Complainant contends that it has extensively used the CVS Marks throughout the United States in connection with Complainant’s drugstores and online retail website “www.cvs.com”. As a result, consumers in the United States readily associate the term “CVS” with Complainant. According to one branding report, the CVS brand is the sixth most valuable retail brand in the United States and worth about USD 14 billion. Complainant contends that it has used the website “www.my.cvs.com” as a portal to Complainant’s business since 1996.
Complainant further contends that the differences between Complainant’s Marks and the Disputed Domain Name do not avoid the confusing similarity between the terms.
Complainant further contends that Respondent is not commonly known by the CVS Marks or by the Disputed Domain Name. Complainant has not granted Respondent the right to use the CVS Marks. Complainant asserts that Respondent was undoubtedly aware of Complainant’s prior use of the CVS Marks because the Marks are famous. As a result, Respondent could have had no reason for selecting the Disputed Domain Name other than to intentionally deceive customers into believing that Respondent is in some way affiliated with Complainant.
Complainant further contends that Respondent has used the Disputed Domain Name for commercial purposes by using it to host pay-per-click advertising, and therefore is not making legitimate noncommercial or fair use of the Disputed Domain Name. Complainant further asserts that Respondent’s ownership of the Disputed Domain Name disrupts Complainant’s business by improving Respondent’s Search Engine Optimization (SEO) at the expense of Complainant’s SEO. In particular, Complainant contends that an unrelated domain owned by Respondent, <nutritionalanalysis.com>, will benefit from improved SEO as a result of Internet users searching for Complainant’s business who will instead be misdirected to Respondent’s Disputed Domain Name. This, in turn, allegedly disrupts Complainant’s business by devaluing SEO results for Complainant’s Marks.
Complainant further contends that Respondent registered and used the Disputed Domain Name in bad faith because the CVS Marks are uniquely associated with Complainant’s goods and services, and therefore Respondent could not have independently devised the term CVS. Specifically, Complainant alleges that Respondent knew or should have known of Complainant’s prior use of the CVS Marks because of the Marks’ fame, that no plausible reason existed for Respondent to have registered the Disputed Domain Name other than by reference to Complainant, and therefore that Respondent must have registered the Disputed Domain Name in bad faith.
Complainant further contends that Respondent registered the Disputed Domain Name to prevent Complainant from reflecting its Marks in a corresponding domain name. Respondent has allegedly engaged in a pattern of such conduct because another of Respondent’s domain names <bknutrition.com> is confusingly similar to the trademarks of the Burger King restaurants.
Complainant further contends that Respondent registered the Disputed Domain Name primarily for the purpose of disrupting Complainant’s business. In particular, Respondent is intentionally using the Disputed Domain Name to mislead consumers searching for Complainant. As a result of this deception, Respondent enjoys increased pay-per-click advertising and Complainant’s business is disrupted. Complainant further contends that it competes with Respondent because both provide goods and services related to nutrition.
Complainant further contends that Respondent has intentionally attempted to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s Marks. Indeed, Complainant contends that there can be no other explanation for Respondent’s registration of the Disputed Domain Name.
In its Supplemental Filing, Complainant contends that Respondent has engaged in a pattern of registering domain names incorporating famous trademarks of others and provides evidence of 14 such registrations. Each of these domain names uses the form <www.[trademark]nutrition.com>, and includes trademarks such as COKE, PEPSI, PIZZA HUT, WENDY’S, and LONG JOHN SILVER’S.
As a threshold matter, Respondent contends that, because Complainant waited nearly five years to file a complaint, laches bars Complainant from prevailing. At the least, Complainant’s delay should raise an inference that Complainant did not believe Respondent’s registration of the Disputed Domain Name was in bad faith.
Respondent further contends that the Disputed Domain Name is not confusingly similar because a three-letter acronym like CVS is a weak mark and therefore entitled to less protection.
Respondent further contends that it has rights and legitimate interests in the Disputed Domain Name because Respondent uses the Disputed Domain Name to provide information to computer programmers about Concurrent Versions Systems, a type of computer system developed in the 1980s which enables multiple programmers to better collaborate on software development projects. For years, Respondent has been active in the field of computer programming, and currently works with over 3,000 software programmers in 89 countries. In the international programming community, the term “CVS” allegedly enjoys universal recognition as the acronym for Concurrent Versions Systems.
Respondent further contends that it registered the Disputed Domain Name based on its understanding of “CVS” as an acronym for Concurrent Versions Systems, and therefore did not register in bad faith. Respondent contends that it “had no specific knowledge of Complainant” at the time of registration and did not target Complainant in registering the Disputed Domain Name.
In its Supplemental Filing, Respondent acknowledges that it owns hundreds of domain names which “provide nutritional support services” to trademark holders. Respondent contends that none of the owners of trademarks used in these “nutritional” domain names has ever initiated a UDRP complaint against Respondent. Respondent further contends that these domain names are not designed for public use and that the trademark holders may choose whether to make the information hosted on these websites publicly available.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(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;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Threshold Issue: Laches
Though some panels have recognized laches as a defense available in UDRP proceedings, the general rule is that laches is ordinarily not applicable under the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), § 4.10; but see UDRP Rule 15(a) (permitting panel to take into account “any rules and principles of law that it deems applicable”). The Panel need not resolve whether these facts present the sort of limited circumstances in which laches may be an appropriate defense. While lengthy, a delay of 4.5 years (June 2006 to December 2010) is not so egregious as to foreclose Complainant from prevailing, nor has Respondent provided compelling evidence of any prejudice resulting from the delay.
B. Identical or Confusingly Similar
Complainant has provided sufficient evidence showing that it is the owner of the CVS Marks. Complainant, however, does not have a trademark registration to the term “mycvs.com”. Thus, the Disputed Domain Name and Complainant’s Marks are not identical. Therefore, the issue is whether the Disputed Domain Name and Complainant’s Marks are confusingly similar.
The Domain Name combines three elements: (1) the prefix “my”; (2) Complainant’s CVS Marks; and (3) the suffix “.com.” The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “mycvs”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561.
Prior UDRP panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered mark. AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758 (finding <attelephone.com> confusingly similar to ATT); Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding <quixtarmortgage.com> legally identical to QUIXTAR).
Moreover, the addition of the prefix “my” to the mark does not mitigate the confusing similarity between the Disputed Domain Name and Complainant’s CVS Marks. Indeed, adding the prefix “my” to a trademark is a marketing technique commonly used to refer to services in connection with the named trademark. Ferrero S.p.A. v. Mr. Jean-François Legendre, WIPO Case No. D2000-1534 (finding <mynutella.org> confusingly similar to NUTELLA mark: “[I]t is a popular marketing strategy to combine the name of a product or service with the add-on formative ‘my...’ or ‘your...’, to create a personal identification of consumers with the product or service involved. This is especially common for Internet sites which can be personalized by the users according to their own interest and desire[.]”).
For the all of the foregoing reasons, this Panel finds that the Disputed Domain Name <mycvs.com> is confusingly similar to Complainant’s CVS Marks, in which Complainant has established rights. Therefore, the Panel finds that Complainant has proven the first element of the Policy.
C. Rights or Legitimate Interests
Under the Policy, paragraph 4(c), legitimate interests in domain names may be demonstrated by showing that:
(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services;
(ii) Respondent has been commonly known by the domain names, even if no trademark or service mark rights have been acquired; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
Complainant’s theory that Respondent’s registration of the Disputed Domain Name is detrimental to the SEO attributes of Complainant’s Marks is unpersuasive. The chain of inferences involved is simply too attenuated and confusing to satisfy Complainant’s burden to show that Respondent has no rights or legitimate interests.
More persuasive, however, is Complainant’s argument that pay-per-click advertising is a commercial use. The use of a domain name to host pay-per-click links where such links are based on the value of a trademark rather than the generic meaning of a term is generally regarded as an unfair use resulting in misleading diversion. WIPO Overview 2.0, § 2.6.
Here, Respondent admits that it permitted the Disputed Domain Name to be used to host a parking page with automatically generated advertisements featuring links to other websites. Moreover, Complainant provided evidence that at least one of these links featured drug stores and pharmacies listed at <yellowpages.com>. This evidence of pay-per-click links to competitors’ websites undermines Respondent’s contention that it had rights and legitimate interests because it merely provided Internet users with resources to learn about Concurrent Versions Systems, i.e., a purportedly noncommercial use.
In addition, Respondent admits that it did not develop the Disputed Domain Name until after it received the Complaint. Thus, Respondent cannot demonstrate that prior to learning of this dispute it took preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. Respondent’s only demonstrated pre-Complaint use of the Disputed Domain Name was for click-through revenues from links to Complainant and Complainant’s competitors.
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent lacks rights to, or legitimate interests in, the Disputed Domain Name. Therefore, the Panel finds that Complainant has proven the second element of the Policy.2
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith, Policy paragraph 4(b)(iv), occurs when the Respondent attempts to attract, for commercial gain, Internet users to the Respondent’s web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or of a product or service on the Respondent’s website.
Registered In Bad Faith
Respondent contends that it had no “specific knowledge” of Complainant when it registered the Disputed Domain Name. Respondent further contends that Complainant was not well known outside of the Northeastern region of the United States in 1999. However, Respondent provides no evidence to support this assertion, and in any event Complainant’s renown in 1999 is irrelevant given Respondent’s 2006 registration date.
Complainant has used the CVS Marks for about forty years, and operates over 7,100 stores nationwide (including apparently eight in Respondent’s home town of Mesa, Arizona). Although Complainant did not submit specific evidence that it was well known outside the Northeastern United States in 2006, the Panel is not persuaded by Respondent’s contention that it had no “specific knowledge” of Complainant at the time of the registration. Indeed, the decision of a UDRP Panel from 2004 involving Complainant suggests Complainant was known beyond the Northeastern United States as early as 2004. CVS Pharmacy, Inc. v. Johnny Carpela, WIPO Case No. D2004-0038 (finding respondent from west coast of United States was aware of CVS’s rights in the CVS Marks at time of registration in 2003).
Even if Respondent had never seen a bricks and mortar CVS store in 2006, it is difficult to believe it was unaware of Complainant’s <cvs.com> and <my.cvs.com> domain names, which are nearly identical to Respondent’s <mycvs.com>. Complainant has operated these domain names since the 1990s. Respondent is a sophisticated actor and is familiar with domain names; indeed, it admits to owning thousands of them. Thus, it is simply implausible that, at the time Respondent registered the <mycvs.com> domain name in 2006, it would have been unaware of Complainant.
Thus, the Panel finds that Respondent likely knew of Complainant’s Marks when it registered the Disputed Domain Name in 2006. See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 (“It defies common sense to believe that Respondent coincidentally selected these precise domain names [<proforcekarate.com> and <proforcemartialarts.com>] without any knowledge of Complainant and its PROFORCE Trademarks.”); Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397 (“[S]ince Complainant’s trademark is well-known throughout the world, it is very unlikely, if not impossible, that, when Respondent registered the Domain Name, it was not aware that it was infringing on Complainant’s trademark rights.”).
The Panel’s finding that Respondent likely knew of Complainant in 2006 does not resolve the issue of whether it registered the Disputed Domain Name in bad faith. The fact that Respondent registered a programming-related domain name, <mycoders.com>, in 2003 gives the Panel pause. “CVS” does indeed, as Respondent contends, appear to be a common acronym for “Concurrent Versions Systems,” a computer software term. Indeed, as Respondent notes, the computer software usage is as frequent, and perhaps more frequent, in the first few pages of a Google search than the drugstore usage. Accordingly, there is some superficial plausibility to the view that Respondent may have selected this term for its software meaning rather than its drugstore reference; and may have thus registered the Disputed Domain Name by combining the word “my” with a computer-related term, much as it did with “mycoders.com.”
However, Respondent’s contention that it intended to use the Disputed Domain Name for its business involving computer services is undermined by Respondent’s failure to develop the Disputed Domain Name until after it received notice of the Complaint. Respondent’s post-Complaint changes to the Disputed Domain Name, implemented in the shadow of these proceedings, do not support a finding of good faith registration in 2006. Moreover, the fact that <mycvs.com> incorporates a well-known trademark undermines the significance, for purposes of evaluating good faith, of Respondent’s earlier registration of <mycoders.com>, which involves no such trademark rights. In sum, though the 2003 <mycoders.com> registration raises a close question, in the end it is insufficient to prevent the Panel from finding that Respondent registered the Disputed Domain Name in bad faith.
Based upon the foregoing evidence, the Panel finds that Respondent registered the Disputed Domain Name in bad faith.
Used In Bad Faith
The Panel also finds that Respondent used the Disputed Domain Name in bad faith. It is well established that using a domain name which incorporates a trademark to offer the products of competitors of the trademark owner is likely to cause confusion among consumers as to the source of products or to confusingly suggest sponsorship by the trademark owner. See e.g., Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249; Exel Oyj v. KH Trading, Inc., WIPO Case No. D2004-0433.
Here, Respondent does not dispute that it allowed the Disputed Domain Name to be used as a parking page, carrying advertisements promoting services in competition with Complainant’s CVS Marks. This is the only use at all of the Disputed Domain Name prior to commencement of this proceeding, another fact admitted by Complainant. It is well established that using a trademark as part of a domain name to direct Internet traffic to a site that advertises products in competition with the trademark owner constitutes bad faith. See The Vanguard Group, Inc v. Venta, WIPO Case No. D2001-1335 (finding bad faith where <vanguardfunds.com> redirected to website offering competing financial services).
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent registered and is using the Disputed Domain Name in bad faith. Therefore, the Panel finds that Complainant has proven the third and final element of the Policy.
For all 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 <mycvs.com> be transferred to Complainant.
Michael A. Albert
Richard G. Lyon
The Hon N A Brown QC
Dated: May 30, 2011
The Hon Neil Anthony Brown QC
Threshold Issue: Laches
I disagree with the way in which laches has been dismissed and the reasons for that dismissal.
First, it overlooks the fact that there is now a unanimous three person panel decision on the issue. That decision is The New York Times Company v. Name Administration Inc. (BVI), NAF Case No. FA1349045, where the panel noted that laches is “a valid defense in any domain dispute where the facts so warrant.”
In a jurisdiction where there is now, perhaps, an over reliance on previous decisions, instead of deciding cases on their own facts, it is unfortunate that this decision is not given the significance that it deserves.
The only question should be whether the facts of an individual case justify applying the principle.
The majority’s reason is that a delay of 4.5 years “is not so egregious as to foreclose Complainant from prevailing[.]” I disagree with that statement. Such a delay is a very long time in Internet terms and in any event the significant point is not the extent of the efflux ion of time, but what Complainant did in that time that might justify its not taking action against Respondent or the circumstances that might at least be its explanation for not taking such action.
That test is particularly instructive in the present case as Respondent specifically raised the defence of laches in its Response; indeed, it put laches as its first defence and made it plain that its point was that “Complainant does not explain why it waited so long to initiate this Complaint”. That statement, on any reasonable test, called for an explanation from Complainant.
When Complainant came to reply to the Response, it simply said that laches did not apply and relied on the decision in Pamela Anderson v. Alberta Hot Rods, WIPO Case No. D2010-1144, but did not refer to the later decision in The New York Times Company v. Name Administration Inc. (BVI), (supra). It gave no explanation for the delay, no facts showing when it became aware of the Disputed Domain Name, what it did after acquiring that knowledge or why it let several years go by without taking any action against Respondent to retrieve the Disputed Domain Name. It is a well-known rule of practice of virtually all judicial and quasi judicial processes that where an event calls for some sort of explanation, but the party concerned remains silent and does not contribute what can only be within its knowledge to assist the tribunal, it runs the risk of an adverse finding being made against it on that issue. That in substance is what has happened in the present case, the result being that there has been a considerable delay with no explanation given of how or why it came about. In those circumstances, the unexplained delay on the part of the Complainant, although it may not resolve the entire proceedings by itself, is a factor that should be taken into account and adversely to the interests of the Complainant.
It should also be noticed that it is said against the Respondent to show its bad faith that it did not use the Disputed Domain Name for setting up a website until 4 years after its registration and not until the Complaint had been filed. The passage of such a period of time may enable conclusions to be drawn about the motivation of a party, including Respondent, but if it does, the same test should be applied to both parties; in the present case, Respondent gave its explanation for the delay, but Complainant, despite being put on express notice that delay was a live issue, did not. In those circumstances it is difficult to see why Respondent’s delay should penalize it, whereas Complainant’s delay, without any explanation for the delay, should be seen as inconsequential.
Rights Or Legitimate Interests
As a more substantial issue, the Panel should, with respect, have come to the conclusion that Respondent had made a plausible showing of a right or legitimate interest in the Disputed Domain Name. That is so because Respondent has registered a three letter word or acronym that has a descriptive or general meaning and in circumstances where it is plausible that it did so, not to target the Complainant or its trademark, but to use the name for its generic value.
In this regard it should be noted at the outset that the UDRP process is virtually a summary proceeding and the question that falls to be answered as a contested and defended issue is whether the case against a respondent is so clear that it should be shut out and that the respondent should have its property rights taken from it under this summary procedure without having the evidence tested in the usual way. It is for that reason that it is often said that if the respondent’s case is plausible, even if not conclusive, the tribunal may well conclude that the case against it has not been made out. This is a difficult task to assess and it is instructive to see how other panels have approached the same issue.
The three person panel in uwe GMbH v. Telepathy, Inc., WIPO Case No. D2007-0261, cited by Respondent, was faced with a similar issue as that in the present case. This is apparent from the following extract from its decision which is worthwhile considering in full.
“The Complainant’s most difficult hurdle is to establish that the Respondent knew of its mark when the disputed domain name was registered. Some panels (although not all) have found that it is enough if a respondent ought to have known of a complainant’s mark, when the disputed domain name is registered. (For example, in Moari Television Service v. Damien Sampat, WIPO Case No. D2005-0524, cited by the Complainant, the panel stated that a finding of bad faith can be made when the respondent “knew or should have known of the registration and use of the trademark prior to registering the domain”, and cited other panel decisions to similar effect.)
However the Panel finds that, even on this approach to paragraph 4(a)(iii) of the Policy, which is more favorable to the Complainant, the Complainant does not succeed. The reasons for this are as follows.
Evidence that the Respondent should have been aware of the Complainant might be drawn from a number of sources. There might be such evidence if the Complainant was well-known in the Respondent’s jurisdiction; was well-known in a field or jurisdiction in which the Respondent operates; the mark was distinctively associated with the Complainant; or if it appears, on a common-sense approach and the surrounding facts, that the similarity between the domain name and mark was deliberately created. Here, there is insufficient evidence of this kind.
The Complainant argued that it is well-known in its field, and that it does business in a number of jurisdictions, including the Respondent’s (the United States of America). The Complainant gave little evidence to support these contentions. The Complainant only provided copies of two pages from its own website. Those pages contained brief statements of a marketing nature, and (in effect) reiterating its claims that it has been in business for 50 years and is the world’s leading supplier of solariums and health equipment. The Complainant provided no other evidence of its operations. Neither did it provide evidence of its business in the United States of America or otherwise, such that the Respondent should have been aware of it.
There is also little evidence that the Respondent should have been aware of the Complainant because of the field in which the Respondent operates. The Respondent speculates in domain names, and gave evidence that it registered the disputed domain name at the same time as a large number of other 3-letter domains names. The evidence of third-party interest in the letters “uwe” makes it more difficult for a finding that the Respondent was aware specifically of the Complaint’s mark when the disputed domain name was registered.
The other facts of this case do not, on balance, support a finding that the Respondent should have been aware of the Complainant’s mark. The value of “uwe” as a 3-letter combination makes the Respondent’s claim (that it did not know of the Complainant) plausible. The three letter combination “uwe” is also an abbreviation for different generic terms (like, e.g., University of West England or “Unterwasser-Electric Gesellschaft”, which formed part of the Complainant’s company name for some years). Furthermore, “Uwe” is a German first name.”
Respondent’s case in the present proceedings was that it did not know of Complainant’s trademark when it registered the Disputed Domain Name and that it did not register it with any such trademark in mind.
Complainant for its part said initially that Respondent actually knew of the trademark and registered the Disputed Domain Name to confuse people. However, in its reply to Respondent’s Response it changed that position somewhat to allege that it was “difficult to believe” that Respondent did not know of Complainant and its trademark and that it was “highly unlikely” Respondent did not know of those matters.
In such cases where there are diametrically opposed submissions the Panel can do no more than decide if Respondent’s explanation is plausible, i.e., not whether it is probable or improbable and certainly not whether it is likely or unlikely, as Complainant submits, but rather if it is fanciful, with no substance, clearly contrived or a recent invention; if it has enough substance to enable a fair minded observer to say that it is arguable or that it may well be seen to be true if there were a hearing and the evidence tested in the usual manner by cross examination and discovery, then the defence is plausible, even if some doubt remains about its veracity. If the defence is plausible, it is entirely inappropriate to shut the Respondent out in the course of a summary procedure.
With that background it is necessary to look at the facts of the present case in some detail and to decide if the defence is plausible or implausible.
In the present case, as in uwe GMbH v. Telepathy, Inc., (supra) one issue that emerged was that Complainant operated in the same jurisdiction as Respondent. That would tend to suggest that Respondent may well have come across Complainant’s name and it is certainly one factor to throw into the mix on Complainant’s side of the argument. Indeed, it must be acknowledged that Complainant is a well-known company in its field and that it conducts a successful and large chain of pharmacies. To that extent it must be said that it is likely to be well known to residents of the United States, although the extent of fame at the time the Disputed Domain Name was originally registered and at the time the Respondent acquired it is less certain.
On the other side of the scales is the criterion cited in uwe GMbH v. Telepathy, Inc., namely, whether
“the Respondent should have been aware of the Complainant because of the field in which the Respondent operates.” That criterion was not satisfied in uwe GMbH v. Telepathy, as it had registered other three letter domain names. In the present case, Respondent is not in the pharmacy industry and would thus be less likely to be aware of the trademark that someone actively engaged in that industry. It has also registered other domain names that it has used in its various computer businesses, tending to suggest that it may have registered the Disputed Domain Name with its own business rather than Complainant’s trademark in mind. Accordingly, although not unequivocal, the criterion specified in uwe GMbH v. Telepathy, Inc has not been made out in the present case.
A further criterion cited in uwe GMbH v. Telepathy, is whether there was third party interest in the same three letter word as the Disputed Domain Name. In uwe GMbH v. Telepathy, there was such interest and in the present case there seems to be more, as Respondent’s evidence shows that at least in certain quarters and probably internationally there is more use of the acronym “CVS” in its computer orientated meaning than there is in its pharmacy connotation.
Finally, the panel in uwe GMbH v. Telepathy inquired if there was another meaning than that associated with the trademark that could explain why the Disputed Domain Name had been registered and indeed, it was found that there was such a meaning. Likewise, in the present case, as has just been noted, CVS has an apparently very widely used meaning, namely “concurrent versions system,” an expression apparently referring to concurrent computer software systems. Nor is this meaning a remote one or inherently unlikely as a meaning that Respondent would have had occasion to use. It seems in fact that it fits into its line of business and it is not really surprising if it wanted to adopt it for use in its chosen field of business.
Just as those tests raised the notion that Respondent’s explanation was plausible in uwe GMbH v. Telepathy, so in the present case they may well be equally plausible although not necessarily conclusive. Respondent has certainly made a sufficiently strong case to justify the conclusion that it would be unsafe to say as a positive finding that it has no right or legitimate interest in the Disputed Domain Name. On the structure of the UDRP as it is, that is tantamount to a finding that this element of the requirements of the Policy has not been made out.
Added to this is the fact that Respondent has registered other domain names for use in its computer business and that one of them is <mycoders.com>. The evidence is that in 2003, that domain name was developed as a platform for a software development marketplace that currently hosts over 3000 developers working in 89 countries. It is also submitted by the Respondent that the Disputed Domain Name “has a natural synergy with the software coding business associated with the mycoders.com domain” and one of its exhibits shows that WIPO itself uses the abbreviation in the same sense as that claimed for it by Respondent. For present purposes, although these facts may not be unequivocal, they at least give more substance and consistency to Respondent’s case and therefore tend to suggest a legitimate reason for registering the Disputed Domain Name.
These and other matters going to show the legitimacy of Respondent’s registration of the Disputed Domain Name have also been attested to in a Declaration by an officer of Respondent who declares he has personal knowledge of the matters involved. Opinions differ, of course, as to the weight to be given to such declarations. But until some reason is given why that Declaration should not be accepted, the Panel is entitled to take it into account as part of the record and to give appropriate weight to it in its deliberations. As at present advised, it must give at least some credence to Respondent’s version of events.
For these reasons, Respondent’s case is plausible and, in a summary proceeding, a Respondent can do no more. There should therefore be a finding that it has not been established on the balance of probabilities that Respondent has no right or legitimate interest in the Disputed Domain Name.
Registered and Used in Bad Faith
It is not necessary to deal with this element, as the previous finding implies that the registration and use of the Disputed Domain Name were not in bad faith but as part of the legitimate business activities of the Respondent.
The Hon N A Brown QC
Dated: May 30, 2011
1 One member of the Panel voted not to accept Complainant’s Supplemental Filing, and for that reason would not have considered it or Respondent’s Rebuttal.
2 The Panel may give short shrift to Respondent’s contention that “it is well established under the Policy that anyone is entitled to register a domain name incorporating a simple three (3) letter combination and that the first to register such a domain name has a legitimate interest in it” (emphasis in original). A registrant’s undertaking in paragraph 2 of the Policy and Policy precedent are directly to the contrary. See WIPO Overview 2.0, paragraph 2.2.