Walgreen Co. v. Mark Develine Alowe
Claim Number: FA1910001866210
Complainant is Walgreen Co. (“Complainant”), represented by Tamara A. Miller, Illinois, USA. Respondent is Mark Develine Alowe (“Respondent”), Camerún.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <walgreenonlinepharmaceuticals.com>, registered with Soluciones Corporativas IP, SL.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 10, 2019; the Forum received payment on October 10, 2019.
On October 14, 2019, Soluciones Corporativas IP, SL confirmed by e-mail to the Forum that the <walgreenonlinepharmaceuticals.com> domain name is registered with Soluciones Corporativas IP, SL and that Respondent is the current registrant of the name. Soluciones Corporativas IP, SL has verified that Respondent is bound by the Soluciones Corporativas IP, SL registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 17, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 6, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@walgreenonlinepharmaceuticals.com. Also on October 17, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 8, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant submits that it has rights in the WALGREENS mark established through registration of the mark at the U.S. Patent and Trademark Office and through long, extensive and continuous use of the mark in the U.S. since it opened its first store in 1901. In its fiscal year 2014, Complainant had sales of over $76 billion, served 6.2 million customers daily and filled approximately 699 million prescriptions. As of August 31, 2018, approximately 78% of the U.S. population lived within five miles of a Walgreens or its sister-brands, Duane Reade, Rite Aid retail pharmacy stores.
Additionally, Complainant submits that it has built a reputation in the use of the WALGREENS mark through its online retail store website to which its <walgreens.com> domain name resolves. Complainant’s products include, but are not limited to, health and beauty products, as well as various over-the-counter medicines.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s famous WALGREENS mark.
Complainant argues that the disputed domain name is merely a misspelling of Complainant’s famous WALGREENS mark, without the possessive “s”, paired with the generic words “online” and “pharmaceuticals”. Complainant submits that these additional elements are not sufficient to distinguish the domain name from Complainant’s trademark. See e.g., Walgreen Co. v. Usama Nizamani, FA1801001767423 (Forum Feb. 18, 2018) (finding that Respondent’s misspelling of Complainant’s WALGREENS trademark in the domain wallgreenpharmacy.xyz insufficient to distinguish the domain from Complainant).
Moreover, Complainant argues that the generic terms “online” and “pharmaceuticals” relate directly to the services offered by Complainant, as Complainant offers prescription medications through its pharmacy services in stores and online. Complainant submits that the gTLD <.com> extension does not diminish a finding of likelihood of confusion.
Complainant submits that Respondent has no rights or a legitimate interest in the disputed domain name <walgreenonlinepharmaceuticals.com> asserting that Respondent did not obtain authorization from Complainant to use the WALGREENS mark or any mark similar thereto prior to registration and use of the disputed domain name, nor is Respondent an authorized licensee of Complainant. Complainant argues that failure to obtain authorization from a trademark holder prior to the use or registration of a domain name incorporating that trademark is evidence that a respondent has no legitimate interest in that domain name. Academy of Motion Picture Arts and Sciences v. S. Najeeb A. Khan, FA100142 (Forum Nov. 14, 2001).
Complainant submits that there is no evidence that Respondent has ever been commonly known by the term WALGREENS or the disputed domain name.
Complainant argues that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate non-commercial or fair use.
Complainant submits that Respondent using the disputed domain name as the address of a website to sell illegal drugs such as LSD and Quaaludes which cannot be deemed to be a bona fide offering of goods.
Complainant further submits that Respondent’s website purports to offer pharmaceuticals that compete with Complainant’s merchandise and argues that the use of another party’s registered mark to provide competing goods neither qualifies as a bona fide offering of goods or services nor a legitimate commercial or fair use. See Walgreen Co. v. Usama Nizamani, FA 1801001767423 (Forum Feb. 18, 2018) (holding that respondent’s use of wallgreenpharmacy.xyz for a website offering prescription medications in competition with complainant’s pharmacy business was not a bona fide offering of goods or services nor a non-commercial or fair use).
Complainant submits that Respondent registered the disputed domain name <walgreenonlinepharmaceuticals.com> in bad faith, arguing that Respondent registered the confusingly similar disputed domain name despite having at least constructive knowledge of Complainant’s rights in the WALGREENS mark (by virtue of Complainant’s many trademark registrations). Complainant asserts Respondent must have had actual knowledge of Complainant and its rights when the disputed domain name was registered.
Complainant submits that Respondent is using the disputed domain name to offer to sell illegal drugs as well as products which compete with Complainant’s products.
Complainant submits that Respondent is using the WALGREENS mark to confuse internet users into believing that the disputed domain name <walgreenonlinepharmaceuticals.com> is affiliated with, sponsored by, or otherwise related to Complainant. Tellingly, Respondent refers to himself as “Walgreens” on his website. Complainant’s mark in its entirety is displayed on Complainant’s website in red script in addition to photographs of one of Complainant’s stores and a slogan almost identical to Complainant’s slogan. To exacerbate the confusion, Respondent lists an address of one of Complainant’s pharmacy stores in Los Angeles and lists his contact email as info@walgreenonlinepharmaceuticals.com. Complainant submits that reliance on the goodwill of Complainant’s trademark to redirect Internet users to a website unrelated to Complainant shows bad faith.
Finally, Complainant submits that Respondent’s use of a proxy service, although unknown, to register the disputed domain name and hide its identity from the world further supports a finding of bad faith. See The American Automobile Association, Inc. v. Zag Media Corp. c/o Whois Privacy Services, FA 1226952 (Forum Nov. 13, 2008) (concealment of Respondent’ identity obstructs the UDRP system and amounts to bad faith on the party of the proxy service provider). After institution of this proceeding, Respondent’s address was revealed as being “church street 00237 Douala” in Littoral Camerún. Complainant asserts that no such address exists. Complainant submits that Respondent’s use of a false address in connection with its Whois information is further evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the WALGREENS service mark and has acquired a significant reputation and goodwill in the mark in its retail pharmacy business for over a hundred years. It has grown its business in retail stores and online to have a volume of sales of $76 billion, serving 6.2 million customers daily and filling almost 700 million prescriptions annually.
Complainant owns a portfolio of trademark registrations for the WALGREENS mark including, for example, United States Registered service mark WALGREENS, registration number 1057249, registered on January 25, 1977 for services in international class 42.
The disputed domain name was registered on July 31, 2019. It was registered using a proxy service and resolves to a website that purports to give the impression that it is owned by or that it has some association with Complainant to offer for sale pharmaceuticals and drugs.
In the absence of a Response, there is no information available about Respondent, except for that provided in the Complaint, the Registrar’s WhoIs, the information disclosed by the Registrar in response to the Forum’s verification enquiry.
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 Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
This Panel is satisfied that Complainant has rights in the WALGREENS mark established by its ownership of the abovementioned trademark registrations and a significant goodwill that it has established in the use of the mark in its sale of health and beauty products in its retail business, including its online store, over a long period since 1901, with annual sales of $76 billion, serving 6.2 million customers daily and filling almost 700 million prescriptions each year.
The disputed domain name <walgreenonlinepharmaceuticals.com> is composed of a misspelling of Complainant’s WALGREENS mark omitting the latter “s", in combination with the generic words “online” and “pharmaceuticals”.
The word "walgreen” is the dominant and only distinctive element in the disputed domain name. The generic terms “online” and “pharmaceuticals”, lack any distinctive character in the circumstances, except insofar as they relate directly to the prescription medications and non-prescription products offered by Complainant through its pharmacy services in stores and online.
In the context of the present Complaint, the omission of the letter “s” is not likely to be noticed by Internet users, as with the gTLD <.com> extension which may be ignored for the purposes of considering confusing similarity.
This Panel finds therefore that the disputed domain name is confusingly similar to the WALGREENS mark in which Complainant has rights. Complainant has therefore met the test in Policy Paragraph 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights in, or a legitimate interest in the disputed domain name <walgreenonlinepharmaceuticals.com>.
Respondent has not been authorized by Complainant to use the WALGREENS mark or any similar mark. There is no evidence that Respondent has ever been commonly known by the term WALGREENS or the <walgreenonlinepharmaceuticals.com> domain name. In fact, the information provided by Respondent and disclosed by the Registrar in response to the Forum’s verification enquiry, indicates the contrary.
There is no indication on the record that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate non-commercial or fair use. In fact, the evidence indicates that Respondent is using the disputed domain as the address of a website purporting to unlawfully offer drugs such as LSD and Quaaludes for sale. Such use cannot be considered bona fide, fair or non-commercial for the purpose of the Policy.
In the circumstances, the burden of production shifts to Respondent to prove rights or legitimate interest in the disputed domain name. Respondent has failed to discharge that burden and so Complainant has succeeded in meeting the second element of the test in Policy paragraph 4(a)(ii).
Given the substantial, long and extensive reputation of Complainant's WALGREENS name, mark, retail chain and its online business, it is improbable that the registrant of the disputed domain name was not actually aware of Complainant and its WALGREENS name when the disputed domain name was registered. On the balance of probabilities therefore, the disputed domain name was chosen and registered in bad faith to cause confusion among Internet users; to take predatory advantage of Complainant’s reputation and goodwill; and to divert Internet traffic away from Complainants website.
On the evidence, Respondent is using the <walgreenonlinepharmaceuticals.com> domain name as the address of a website, relying on the confusing similarity between the disputed domain name and the WALGREENS mark to create the misleading impression that Respondent and the goods offered for sale on Respondent's website have an affiliation or association with, sponsored by, or otherwise related to Complainant.
Also on the evidence adduced, Respondent refers to itself as “Walgreens” on his website which presents Complainant’s mark to the public in its entirety in a red script similar to that used by Complainant, displays photographs of Complainant’s store, uses a slogan almost identical to Complainant’s slogan and lists an address of one of Complainant’s pharmacy stores in Los Angeles.
While use of a proxy service by Respondent is not objectionable, when the Respondent's registration details were disclosed in the course of this proceeding it was revealed that Respondent registered the disputed domain name using a false address. Providing incorrect registration information using a proxy service is indicative of bad faith registration.
This Panel finds therefore on the balance of probabilities that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site and the products offered for sale by Respondent on the website to which the disputed domain name resolves.
Complainant has therefore succeeded in the third and final element of the test in Policy paragraph 4(a)(iii) and is entitled to the reliefs sought.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <walgreenonlinepharmaceuticals.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgman SC
Panelist
Dated: November 11, 2019
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