Walgreen Co. v. ABEER AYOUB
Claim Number: FA2011001919686
Complainant is Walgreen Co. (“Complainant”), represented by Tamara A. Miller, Illinois, USA. Respondent is ABEER AYOUB (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <glassesbywalgreens.com> (‘the Domain Name’), registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 5, 2020; the Forum received payment on November 5, 2020.
On November 6, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <glassesbywalgreens.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 November 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 30, 2020 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@glassesbywalgreens.com. Also on November 10, 2020, 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.
A timely Response was received and determined to be complete on November 30, 2020.
On December 4, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
The Complainant’s contentions cam be summarized as follows:
The Complainant has used the WALGREENS name since 1901 for pharmacy and retail services selling a wide variety of products including glasses. It owns registered trademarks for WALGREENS dating back to at least the 1970s in the United States. The Complainant owns walgreens.com. It uses WALGREENS in a red cursive script as a logo. The WALGREENS mark is well known.
The Domain Name registered in 2017 is confusingly similar to the Complainant’s registered mark including it in its entirety and adding the generic words ‘glasses by’ and the gTLD .com.
The Domain Name resolves to a site selling competing optical goods to those of the Complainant, optistyles.com. This cannot be bona fide use or legitimate noncommercial use. Complainant has not given any authorization to the Respondent. Respondent is not commonly known by the Domain Name. Respondent does not have rights or a legitimate interest in the Domain Name.
The Domain Name has been registered and used in bad faith diverting Internet users for commercial gain. Respondent’s email contact is abby@optical-academy.com. The optical-academy.com domain resolves to a website entitled “Optical Academy”, which links to the optistyles.com domain through the website’s “shop” function. The Respondent also used a privacy service to cover its use of the Domain Name.
B. Respondent
The Respondent’s contentions can be summarized as follows:
The Domain Name was purchased with many other domain names by the Respondent for consumer awareness. The Respondent’s IT department forwarded the Domain Name to a commercial optical products site by mistake. This is an error, but the Respondent cannot unlock it. If the Complainant pays what the Respondent paid to the Respondent it can be transferred.
The Complainant has used the WALGREENS name since 1901 for pharmacy and retail services selling a wide variety of products including glasses. It owns registered trademarks for WALGREENS dating back to at least the 1970s in the United States. The Complainant owns walgreens.com. The WALGREENS mark is well known.
The Domain Name registered in 2017 has been used for a site offering competing optical products. The Respondent’s e mail address suggests he is in the business of optical goods rather than consumer awareness.
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.
The Domain Name consists of the Complainant's WALGREENS mark (which is registered, inter alia in USA in the 1970s for pharmacy and retail services and a wide variety of products including glasses) the generic words ‘glasses by’ and the gTLD “.com.”
Previous panels have found confusing similarity when a respondent merely adds generic terms to a Complainant's mark. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic words ‘glasses by’ to the Complainant's WALGREENS mark does not prevent confusing similarity between the Domain Name and the Complainant’s registered trade mark.
The gTLD “.com” does not serve to distinguish the Domain Name from the Complainant’s mark which is the distinctive component of the Domain Name. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose of the Policy to a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorized the use of its mark. The Respondent has not provided any evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The Panelist notes that the Respondent has asked the Complainant for money equal to what it paid for the Domain Name. It is not clear what that amount is and so it is not clear if this is above the usual costs of registration or not.
However, use of a Complainant’s trade mark in a domain name containing that mark for competing services and products is not a bona fide use or legitimate noncommercial or fair use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel notes the Respondent’s comments that the pointing of the Domain Name to a commercial optical goods site is a mistake which cannot be unlocked and the intended purpose of the site is consumer awareness, but the Respondent has produced no evidence in this regard. Further the Respondent’s e mail address suggests that he is in the business of optical goods, rather than consumer awareness.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the Panelist the use made of the Domain Name is confusing and disruptive in that visitors to the site attached to the Domain Name might reasonably believe that site is connected to or approved by the Complainant as it offers competing goods and services to the Complainant under the Complainant’s mark in the Domain Name. The Respondent appears from his e mail address to be a competitor of the Complainant.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site and products and services offered on it likely to disrupt the business of the Complainant.
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under ¶¶ 4(b)(iii) and 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <glassesbywalgreens.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: December 7, 2020
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