Walgreen Company v. Ernst Petersen
Claim Number: FA1108001402592
Complainant is Walgreen Company (“Complainant”), represented by Tamara A. Miller, Illinois, USA. Respondent is Ernst Petersen (“Respondent”), Denmark.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <walgreenspharmacyrx.com>, registered with Trunkoz Technologies Pvt Ltd. d/b/a ownregistrar.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) 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 18, 2011, Trunkoz Technologies Pvt Ltd. d/b/a ownregistrar.com confirmed by e-mail to the National Arbitration Forum that the <walgreenspharmacyrx.com> domain name is registered with Trunkoz Technologies Pvt Ltd. d/b/a ownregistrar.com and that Respondent is the current registrant of the name. Trunkoz Technologies Pvt Ltd. d/b/a ownregistrar.com has verified that Respondent is bound by the Trunkoz Technologies Pvt Ltd. d/b/a ownregistrar.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 August 18, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 7, 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@walgreenspharmacyrx.com. Also on August 18, 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 13, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
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:
1. Respondent’s <walgreenspharmacyrx.com> domain name is confusingly similar to Complainant’s WALGREENS mark.
2. Respondent does not have any rights or legitimate interests in the <walgreenspharmacyrx.com> domain name.
3. Respondent registered and used the <walgreenspharmacyrx.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Walgreen Company, is a drugstore chain with over 8,000 stores spread across the U.S. and Puerto Rico. Complainant offers pharmacy and retail store services, as well as a variety of other products, under the WALGREENS mark. Complainant has registered its WALGREENS mark with various worldwide trademark offices, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,057,249 registered January 25, 1977) and the European Union Office for Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 003,279,734 registered November 23, 2004).
Respondent, Ernst Petersen, registered the <walgreenspharmacyrx.com> domain name on June 24, 2011. The disputed domain name resolves to a website purporting to be a “Canadian Neighbor Pharmacy” and offering various prescription medicines for sale over the Internet.
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 shall decide this administrative 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 the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the 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:
(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.
Complainant has registered its WALGREENS mark with various worldwide trademark offices, including the USPTO (e.g., Reg. No. 1,057,249 registered January 25, 1977) and the OHIM (e.g., Reg. No. 003,279,734 registered November 23, 2004). In Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006), a past panel found that registration with the USPTO established rights in the mark. Past panels have also determined that it is not necessary that the mark is registered in the same country as Respondent, as seen in Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001). Accordingly, the Panel finds that Complainant’s USPTO and OHIM trademark registrations are sufficient to conclude that Complainant possesses rights in the WALGREENS mark for the purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <walgreenspharmacyrx.com> domain name is confusingly similar to Complainant’s WALGREENS mark because the disputed domain name begins with Complainant’s mark followed by the descriptive term “pharmacy,” the descriptive abbreviation “rx,” and the generic top-level domain (“gTLD”) “.com.” The Panel has previously found that neither descriptive terms nor descriptive abbreviations modify the disputed domain name sufficiently to prevent a finding of confusing similarity. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a descriptive term that has an obvious relationship to the complainant’s business); see also Baylor Univ. v. Daste, FA 1082272 (Nat. Arb. Forum Nov. 9, 2007) (holding that the addition of the descriptive “edu” abbreviation for “education” to Complainant’s mark did not negate any confusing similarity). In Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000), the panel held that the presence of a gTLD did not affect the domain name for purposes of determining confusing similarity. The Panel thus concludes that Respondent’s <walgreenspharmacyrx.com> domain name is confusingly similar to Complainant’s WALGREENS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
The requirements of Policy ¶ 4(a)(ii) do not allow the burden of proving rights and legitimate interests to shift to Respondent until after Complainant has put forth a sufficient prima facie case. Complainant’s proffered evidence against Respondent satisfies this burden, thus passing the obligation to defend its rights and interests to Respondent. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Respondent, however, has chosen not to respond to Complainant’s Complaint and thus the Panel has no evidence to consider in support of Respondent. As a result, the Panel infers that Respondent does not possess rights and legitimate interests in the disputed domain name. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed). In order to fully evaluate this Complaint, however, the Panel elects to consider the evidence present in the record against the Policy ¶ 4(c) factors.
Complainant contends that Respondent did not obtain authorization from Complainant to use the WALGREENS mark in the disputed domain name. As the WHOIS information identifies the registrant of the <walgreenspharmacyrx.com> domain name as “Ernst Petersen,” Complainant asserts that there is no evidence supporting that Respondent is commonly known by the disputed domain name. Based on this evidence and prior panel decisions in Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001), and Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003), holding that a respondent lacks rights in a domain name if the WHOIS information shows no connection and respondent is not commonly known by the mark, the Panel finds that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent uses the <walgreenspharmacyrx.com> domain name to host a competing website entitled “Canadian Neighbor Pharmacy” that offers prescription drugs for sale online and information on health and wellness topics. Complainant argues that as the products and information compete with Complainant and are offered under Complainant’s mark, Respondent’s activities at the disputed domain name cannot be described as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). In Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006), the panel held that using the complainant’s mark in a domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the disputed domain name. Similarly, the panel found that redirecting consumers to a competing website was not a bona fide offering of goods or services in Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002). Based on these prior holdings, the Panel finds here that Respondent’s use of the <walgreenspharmacyrx.com> domain name does not satisfy Policy ¶¶ 4(c)(i) or 4(c)(iii).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant makes no specific allegations against Respondent under Policy ¶ 4(b)(iii). Complainant does, however, assert that the <walgreenspharmacyrx.com> domain name resolves to a competing online pharmacy, offering both information and products also available from Complainant. This use of the disputed domain name casts Respondent in the role of a competitor who is attempting to disrupt Complainant’s business by diverting consumers to a competing pharmaceutical website. In accord with the findings in Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001), and DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005), which state that a competitive relationship between a complainant and a respondent supports a finding of bad faith under Policy ¶ 4(b)(iii), the Panel here determines that Respondent registered and is using the <walgreenspharmacyrx.com> domain name in bad faith for the purposes of Policy ¶ 4(b)(iii).
Complainant also makes no arguments in regard to Policy ¶ 4(b)(iv). As the website resolving from the <walgreenspharmacyrx.com> domain name is a commercial website, however, offering the same products available from Complainant, the Panel holds that Respondent registered and uses the disputed domain name containing Complainant’s mark with the intent to attract and confuse Internet users and profit from the resulting sales. The Panel determines that these activities demonstrate bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”).
Complainant alleges that Respondent registered the <walgreenspharmacyrx.com> domain name in bad faith because it had, at least, constructive knowledge of Complainant’s rights to the WALGREENS mark due to the extent of its use and well-known reputation throughout the world. Panels have determined in the past that constructive knowledge is not generally sufficient to support a finding of bad faith under the Policy. Due to the numerous trademark registrations around the world, however, including in the EU, the Panel concludes that Respondent likely had actual knowledge of Complainant’s mark and thus registered the disputed domain name in bad faith according to Policy ¶ 4(a)(iii). See Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (“The Panel also finds that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark as well.”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <walgreenspharmacyrx.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: September 22, 2011
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