Walgreen Company v. Maxim Golounin
Claim Number: FA1108001402583
Complainant is Walgreen Company (“Complainant”), represented by Tamara A. Miller, Illinois, USA. Respondent is Maxim Golounin (“Respondent”), Kazakhstan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <walgreens-drugstore.com>, registered with Name.com LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 9, 2011; the National Arbitration Forum received payment on August 10, 2011.
On August 10, 2011, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <walgreens-drugstore.com> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name. Name.com LLC has verified that Respondent is bound by the Name.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 August 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 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@walgreens-drugstore.com. Also on August 11, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 2, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:
Complainant is a drugstore chain with 8,000 stores spread across the U.S. and Puerto Rico.
Complainant owns trademark registrations for the WALGREENS mark on file with the United States Patent and Trademark Office (“USPTO”), including Reg. No. 1,057,249, registered January 25, 1977.
Respondent registered the <walgreens-drugstore.com> domain name on August 22, 2004.
The disputed domain name resolves to a website that purports to offer information on health or wellness topics, such as erectile dysfunction and sex.
The resolving website also provides comparisons of various drugs, and both lists online pharmacies that sell such products and provides links to the websites of those pharmacies.
Respondent’s <walgreens-drugstore.com> domain name is confusingly similar to Complainant’s WALGREENS mark.
Respondent is not commonly known by the disputed <walgreens-drugstore.com> domain name.
Respondent is not authorized to use the WALGREENS trademark.
Respondent does not have any rights to or legitimate interests in the <walgreens-drugstore.com> domain name.
Respondent registered and uses the <walgreens-drugstore.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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."
In view of Respondent's failure to submit a response, the Panel may decide this proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. 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.
Complainant has rights in the WALGREENS trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that a complainant had established rights in the GOOGLE mark through its holding of trademark registrations around the world). This is true without regard to whether Complainant has established such rights in the country in which Respondent resides or does business. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in its mark in some jurisdiction).
The only differences between Complainant’s WALGREENS mark and the <walgreens-drugstore.com> domain name are the additions of a hyphen, the descriptive term “drugstore,” which describes Complainant’s business, and the generic top-level domain (“gTLD”) “.com.” Under the standards of the Policy, Respondent’s domain name is therefore confusingly similar to Complainant’s mark. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003), holding that an added hyphen was irrelevant in determining confusing similarity. See also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000), finding including descriptive terms in a domain name fails to distinguish the domain from the mark from which it was derived.
Finally, it is well accepted that gTLDs do not avoid a finding of confusing similarity. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):
The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.
Accordingly, the Panel finds that Respondent’s <walgreens-drugstore.com> domain name is confusingly similar to Complainant’s WALGREENS trademark under Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must set out a prima facie showing on the point of Respondent’s lack of rights to or legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to demonstrate that it has such rights or interests. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008):
It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.
Complainant has met its burden under this head of the Policy. Therefore, and because has Respondent failed to respond to the Complaint filed in this proceeding, we may presume that Respondent does not have rights to or legitimate interests in the contested domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.
Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent is not authorized to use the WALGREENS trademark, and that Respondent is not commonly known by the <walgreens-drugstore.com> domain name. Moreover, the WHOIS information for the disputed domain name identifies the registrant only as “Maxim Golounin,” which does not resemble the disputed domain name. On this record, we must conclude that Respondent has not been commonly known by the contested domain name so as to have established rights to or legitimate interests in the domain under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name, and so had no rights to or legitimate interests in the domain under Policy ¶ 4(c)(ii), where there was no evidence in the record showing that that respondent was commonly known by that domain name, and where a complainant asserted that it did not authorize or license that respondent’s use of its mark in a domain name); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent did not have rights to or legitimate interests in a domain name under Policy ¶ 4(c)(ii) where that respondent was not commonly known by the domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s resolving website provides comparisons of various drugs, and both lists online pharmacies that sell such products and provides links to the websites of those pharmacies. In the circumstances here presented, we may comfortably presume that Respondent profits in the form of pay-per-click fees tracing to the visits of Internet users to the websites resolving from the sponsored links. Respondent’s activities at the <walgreens-drugstore.com> domain name do not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks in a disputed domain name to send Internet users to a website which displayed links, some of which resolved to the websites of that complainant’s competitors, was not a bona fide offering of goods or services); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000): “The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the disputed domain name as alleged in the Complaint disrupts Complainant’s business and stands as evidence that Respondent registered and uses the <walgreens-drugstore.com> domain name in bad faith under Policy ¶ 4(b)(iii). See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding under Policy ¶ 4(b)(iii) that a respondent registered and used the domain name <sportlivescore.com> in bad faith in order to disrupt a complainant’s business under the LIVESCORE mark, where that respondent maintained a website in competition with the business of that complainant); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a domain name confusingly similar to a complainant’s mark to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use of the domain under Policy ¶ 4(b)(iii)).
Because Respondent evidently operates the website resolving from the disputed domain name, which is confusingly similar to Complainant’s WALGREENS trademark in order to attract and mislead Internet users for its own profit, we conclude that Respondent has registered and uses the domain name in bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where a respondent diverted Internet users searching for the website of a complainant to its own website, likely profiting in the process); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name confusingly similar to a complainant’s mark by using it to offer links to third-party websites that featured services similar to those offered by that complainant).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <walgreens-drugstore.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 5, 2011
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