Walgreen Co. v. Privacy protection service - whoisproxy.ru
Claim Number: FA1805001785188
Complainant is Walgreen Co. (“Complainant”), represented by Tamara A. Miller of Leydig, Voit & Mayer, Ltd., Illinois, USA. Respondent is Privacy protection service - whoisproxy.ru (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <walgreensviagra.net>, registered with Regional Network Information Center, JSC dba RU-CENTER.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 4, 2018; the Forum received payment on May 4, 2018. The Complaint was received in both Russian and English
On May 10, 2018, Regional Network Information Center, JSC dba RU-CENTER confirmed by e-mail to the Forum that the <walgreensviagra.net> domain name is registered with Regional Network Information Center, JSC dba RU-CENTER and that Respondent is the current registrant of the name. Regional Network Information Center, JSC dba RU-CENTER has verified that Respondent is bound by the Regional Network Information Center, JSC dba RU-CENTER 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 May 16, 2018, the Forum served the Russian language Complaint and all Annexes, including a Russian language Written Notice of the Complaint, setting a deadline of June 5, 2018 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@walgreensviagra.net. Also on May 16, 2018, the Russian language 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 June 7, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Walgreen Co., is one of the largest drugstore chains in the United States and uses the WALGREENS mark to provide and market its products and services.
Complainant has rights in the mark based upon registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <walgreensviagra.net> domain name is confusingly similar to the WALGREENS mark, as it contains Complainant’s mark in its entirety, merely adding the third-party mark “viagra” and the generic top level domain (“gTLD”) “.net.”
Respondent does not have rights or legitimate interests in the <walgreensviagra.net> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not granted respondent permission or license to use the WALGREENS mark for any purpose. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the domain name to pass itself off as Complainant and redirect users to Respondent’s website that directly competes with Complainant’s business.
Respondent has registered and used the <walgreensviagra.net> domain name in bad faith. Respondent attempts to divert users to the domain name and offer competing goods and services for commercial gain. In addition, Respondent uses a privacy service to shield its identity. Finally, Respondent registered the <walgreensviagra.net> domain name with actual knowledge and/or constructive notice of Complainant’s rights in the WALGREENS mark prior to registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the WALGREENS mark as demonstrated by its registration of such mark with the USPTO.
Complainant’s rights in the WALGREENS mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent uses the <walgreensviagra.net> to offer goods that compete with those goods offered by Complainant.
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 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 (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.”).
Preliminary Issue: Language of Proceeding
The Panel notes that the Registration Agreement is written in Russian, which generally makes Russian the language of this proceeding. However, the Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings by considering any relevant circumstances. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Here, Respondent is apparently conversant and proficient in English as the <walgreensviagra.net> domain name resolves to a website that (1) is entirely in English and targets English speakers; (2) displays certifications that the products offered are “FDA Approved” and “American Quality”; and (3) lists a phone number with a U.S. toll-free area code. Further, the domain name is based on the name and mark of a famous American company. Since it would be unduly burdensome to require Complainant to proceed in Russian under these circumstances, the Panel determines that the language requirement is satisfied and absent any response to the contrary the instant proceedings may be conducted in English.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the WALGREENS trademark evidences its rights in such mark for the purposes of Policy ¶4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO).
Additionally, the at-issue domain name contains Complainant’s entire WALGREENS trademark followed by the term “viagra,” with the top-level domain name “.net” appended thereto. The differences between the at-issue <walgreensviagra.net> domain name and Complainant’s WALGREENS trademark are insufficient to distinguish one from the other for the purposes of the Policy. In fact, the domain name’s inclusion of the term “viagra” adds to any confusion between the domain name and Complainant’s trademark as “viagra,” a third party trademarked drug, suggests Complainant’s pharmaceutical related business. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) Respondent’s <walgreensviagra.net> domain name is confusingly similar to Complainant’s WALGREENS trademark. See eBay Inc. v. eBay Motors, FA 1731822 (Forum June 26, 2017) (holding that “words like ‘online,’ which pertain to a complainant’s trademark-related activities—fails to sufficiently distinguish domain names from registered marks.”); see also, G.D. Searle v. Martin Mktg., FA 118277 (Forum Oct. 1, 2002) (“Complainant has the right to protect its trademark whether standing alone, or included in a string of industry-related marks. Respondent’s inclusion of other drug-related marks [in the <viagra-xenical-celebrex-propecia-meridia-zyban.com> domain name] only increases the likelihood that confusion will result from use of the domain name.”).see also, Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Privacy protection service - whoisproxy.ru” and the Panel is aware of no proffered evidence that otherwise tends to prove that Respondent is commonly known by the <walgreensviagra.net> domain name. The Panel therefore concludes that Respondent is not commonly known by the <walgreensviagra.net> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore, Respondent uses the <walgreensviagra.net> domain name to pass itself off as Complainant and display links to a website offering products similar to those offered by Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Walgreen Co. v. Walgreens Pharmacy, FA 1774831 (Forum Apr. 9, 2018) (“Passing off for commercial gain can represent a failure to use a domain name in connection with a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate, noncommercial or otherwise fair use per Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and used in bad faith. As discussed below, Policy ¶ 4(b) specific bad faith circumstances as well as other circumstances lead the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent, through use of the confusingly similar <walgreensviagra.net> domain name and its associated website, creates a false impression that both the domain name and its website, which offers links to competing goods, are sponsored by Complainant when they are not. To further confuse internet users into mistakenly believing they are dealing with Complainant, Respondent directs visitors to review Complainant’s official online privacy policy. Respondent’s registration and use of the confusingly similar <walgreensviagra.net> domain name in furtherance of trading competitively on Complainant’s WALGREENS trademark demonstrates Respondent’s bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also, Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”).
Additionally, Respondent registered the <walgreensviagra.net> domain name knowing that Complainant had trademark rights in WALGREENS. Respondent’s prior knowledge is evident from Respondent’s use of the <walgreensviagra.net> domain name as discussed above, as well as from the notoriety of Complainant’s WALGREENS trademark. It is therefore clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <walgreensviagra.net> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <walgreensviagra.net> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 10, 2018
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