Walgreen Company v. walgreensrealty international pvt ltd
Claim Number: FA1107001399745
Complainant is Walgreen Company (“Complainant”), represented by Tamara A. Miller of Two Prudential Plaza, Suite 4900, Illinois, USA. Respondent is walgreensrealty international pvt ltd (“Respondent”), represented by Mahesh Kumar, India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <walgreenstravels.com> and <walgreensholidays.com>, registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM.
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.
Linda M. Byrne as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 20, 2011; the National Arbitration Forum received payment on July 21, 2011.
On July 21, 2011, DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <walgreenstravels.com> and <walgreensholidays.com> domain names are registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the names. DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM 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 July 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 2011, 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@walgreenstravels.com and postmaster@walgreensholidays.com. Also on July 22, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 August 12, 2011.
An Additional Submission from Complainant was received on August 12, 2011. An Additional Submission from Respondent was received on August 18, 2011. The latter submission was received after the deadline for submissions, and therefore did not comply with Supplemental Rule 7. However, the latter submission was nevertheless considered by the Panel.
On August 17, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Linda M. Byrne as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant argues that Respondent’s <walgreenstravels.com> and <walgreensholidays.com > domain names are confusingly similar to Complainant’s WALGREENS mark. The Complainant argues that the addition of the generic words “travels” and “holidays” does not avoid likelihood of confusion between the WALGREENS trademark and the <walgreenstravels.com> and <walgreensholidays.com> domain names. The Complainant asserts, “Many cases hold that the combination of a well-known trademark with a non-distinctive, generic, or descriptive term does not change the overall impression of the complainant’s mark.”
Complainant contends that Respondent has never been and is not commonly known as “walgreenstravels.com” or “walgreensholidays.com”, and that Respondent operates no bona fide or legitimate business under either domain name. Complainant notes that <walgreenstravels.com> resolves to an “inactive website at a parked page without any demonstrable preparations to use the site,” and <walgreensholidays.com> resolves to a single web page that is “Under Construction,” but which does not contain any information about any goods or services nor any contact information for the business.
The Complainant argues that Respondent has registered and used the <walgreenstravels.com> and <walgreensholidays.com> domain names in bad faith by using Complainant’s mark despite having constructive notice of Complainant’s trademark rights.
B. Respondent
Respondent argues that Complainant’s goods and services relate only to health care, which is unrelated to Respondent’s tourism and real estate services. Respondent’s name is “Walgreens Realty International Private Limited Company,” which has been registered with the Registrar of Companies in India. The Respondent states: “The respondent is commonly known as Walgreens realty, systems, tours and travels in India involved in real-estate, Tours and travels, Software, Tourism, etc. The respondent is holding 4 branch offices all over South India. The respondent had spent huge money in online and offline advertisements to brand them.”
On the issue of likelihood of confusion, Respondent states: “[T]he respondent’s addition of clear distinctive trade names, namely the words ‘holidays’ or ‘travels’ to the name ‘WALGREENS’ not only distinguishes the walgreenstravels.com or walgreensholidays.com domain names from Complainant’s well-known ‘WALGREENS’ trademark, but the same is strictly under compliance with the Indian and international laws in terms of trade mark, because the complainant has no registration of trademarks in the trades of Real-estate and Tourism.”
After registering both domain names, Respondent states that it set up four offices in South India and recruited almost 50 employees, which is why the substantive content of the websites had not been loaded as of the time the Complaint was filed. The Response continues, “Now all the contents are loaded and the business is commenced already.”
On the issue of bad faith, the Respondent stated that it had no knowledge about Complainant or its trademark rights.
C. Additional Submissions
In its Additional Submission, Complainant noted that a wide variety of products are sold under the WALGREENS trademark, including personal care products, baby products, grocery items, health and well-being items, beauty items, electronics, batteries, phones, computer accessories, photo film, alarm clocks, home items, pet supplies, greeting cards, lawn decorations, balloons, gift wrap, office supplies, etc. Complainant notes that its products include “those particularly of interest to tourists and homeowners.”
On the issue of bad faith, Complainant stated, “Only after Complainant filed the Complaint at issue in this proceeding did Respondent quickly manufacture websites to which the domain names could be directed, in a veiled attempt to show some bona fide business purpose for the domains.” One of Respondent’s new websites features the stylized term “FARMVILLE.” Complainant argues that Respondent’s use of this third party trademark is further evidence of Respondent’s bad faith.
In its Additional Submission, Respondent stated, “The respondent is a massive corporate company in to the business of Real Estate, Software and Tourism in India very well known as Walgreens Realty in India. The respondent has already spent a huge sum of money in branding and advertising as Software and Realty Company. After their success in Realty and software they have not entered in to the field of Tours and travels and Hotels and resorts. In order to develop the said business now the respondent had registered the above two disputed website.”
Complainant owns several U.S. federal trademark and service mark registrations for WALGREENS around the world, including the following:
· U.S. Reg. No. 2,077,524 for WALGREENS
· U.S. Reg. No. 2,096,551 for WALGREENS
· U.S. Reg. No. 1,057,249 for WALGREENS
· U.S. Reg. No. 2,292,545 for WALGREENS & Design, and
· U.S. Reg. No. 2,548,077 for WALGREENS.COM.
Complainant, Walgreen Company, is the United States’ largest drugstore chain, with over 8000 stores in the United States and Puerto Rico. Complainant offers pharmacy and retail store services, and sells a wide variety of products under the WALGREENS trademark. Complainant opened its first store in 1901, and has continuously used the WALGREENS trademark since that time. In 2011, Walgreens ranked 32nd out of the top 500 largest companies in the U.S., and ranked 106th out of the top 500 largest companies in the world.
Through the Complainant’s website at Walgreens.com, U.S. consumers can view products for sale at Walgreens stores and make online purchases.
As of the date that the Complaint was filed, the <walgreensholidays.com> domain name resolved to a parked page with no substantive content. The <walgreenstravels.com> domain name resolved to a website under construction, with the page having the headline “Walgreens Tours & Travels.” Since the filing of the Complaint, the website associated with <walgreensholidays.com> consists of a single page listing four offices in India, but providing no description of what kind of business is conducted at those locations. Since the filing of the Complaint, the website associated with <walgreenstravels.com> consists of the same four addresses and the words “Walgreens Tours & Travels.”
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 Panel concludes that Complainant has rights in the trademark WALGREENS, as evidenced by Complainant’s trademark registrations. Registering a mark with federal or governmental trademark authorities satisfies the rights requirement encapsulated in Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Moreover, the Panel concludes that the two domain names at issue are confusingly similar to the WALGREENS trademark. The disputed domain names include Complainant’s entire mark, while adding the generic term “travels,” and the generic term “holidays.” In its Additional Submission, Complainant states that it sells a wide array of products and services. In addition, the well-known status of the WALGREENS trademark increases the likelihood that Internet users will view the disputed domains as being confusingly similar to Complainant’s WALGREENS mark. The Panel concludes that the additions to Complainant’s mark are insufficient to differentiate the disputed domain names from Complainant’s WALGREENS mark, making them confusingly similar under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
In summary, the Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i)).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleged that Respondent is not commonly known by the disputed domain names, and/or that there is no evidence to indicate that Respondent was commonly known by the disputed domain names prior to the registration of the domain names. Although the registrant of the domain names is “walgreensrealty international pvt ltd.,” the Panel concludes that Respondent has not provided sufficient evidence that it is commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).
Respondent has not offered any evidence in support of its assertions that it is commonly known by the asserted domain names, or that business has commenced under the domain names, or that it has made demonstrable preparations to use the disputed domain names. Before the Complaint was filed in this matter, the disputed domain names resolved to an inactive website. The Panel concludes that there is insufficient evidence that Respondent has made a bona fide offering of goods or services under Policy ¶ 4(c)(i) or made a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
According to Complainant’s Additional Submission, after it filed the Complaint in this matter, Respondent changed the content of the websites to which the disputed domain names resolved. Complainant alleges that the <walgreenstravels.com> domain name was changed to resolve to a site listing four addresses, without any links or other interactive content. Complainant also alleges that the <walgreensholidays.com> domain name was changed to resolve to a site offering information about four locations in India. The Panel concludes that the disputed domain names, even though associated with revised websites, also fail to qualify as bona fide offerings or goods or services or a legitimate noncommercial fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. 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).”).
Although Respondent has declared its intent to develop websites at the two domain names, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000). The Panel concludes that Respondent has not demonstrated legitimate rights or interests prior to the filing of this Complaint. Therefore, Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
The Panel concludes that Complainant has failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
The Panel finds insufficient proof that Respondent has violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Respondent claims that it was completely unaware of Complainant’s rights in the WALGREENS mark, making it impossible for it to register the disputed domain names in bad faith. Considering all the evidence, the Panel concludes that Complainant has not proven that Respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See U.S. Nutraceuticals, LLC v. Telepathy, Inc., FA 365884 (Nat. Arb. Forum Jan. 17, 2005) (“Without knowledge of Complainant or its claim of right in the mark, it is difficult to see how Respondent could have the specific intent required for it to act in bad faith against the rights of Complainant.”); see also Lydian Capital Advisors, LLC v. Aquino, D2005-0260 (WIPO Apr. 24, 2005) (finding that the respondent did not register the disputed domain name in bad faith where there was no evidence that it “was aware of the Complainant at the time it registered the domain name,” “[had no] intention to resell it,” and “ha[d] not prevented the Complainant from securing the more obvious choice of domain names”).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <walgreenstravels.com> and <walgreensholidays.com> domain names REMAIN with Respondent.
Linda M. Byrne, Panelist
Dated: August 29, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page