Walgreen Co. v. Walgreens Pharmacy
Claim Number: FA1803001774831
Complainant is Walgreen Co. (“Complainant”), represented by Tamara A. Miller, Illinois, USA. Respondent is Walgreens Pharmacy (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <walgreens-pharmacy.com>, registered with NameSilo, LLC.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 6, 2018; the Forum received payment on March 6, 2018.
On March 7, 2018, NameSilo, LLC confirmed by e-mail to the Forum that the <walgreens-pharmacy.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 March 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 2, 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@walgreens-pharmacy.com. Also on March 12, 2018, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 6, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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
4(a)(i): Complainant, Walgreen Co., is one of the largest drugstores chains in the United States and offers pharmacy and retail store services. Complainant uses the WALGREENS mark to advertise the products and services offered. Complainant has rights in the WALGREENS mark based upon registration with United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,057,249, registered Jan. 25, 1977). Respondent’s <walgreens-pharmacy.com> domain name is confusingly similar to Complainant’s WALGREENS mark as the disputed domain name incorporates Complainant’s famous mark in its entirety, includes the addition of the generic term “-pharmacy”, and appends the “.com” generic top-level domain name (“gTLD”).
4(a)(ii): Respondent has no rights or legitimate interests in the <walgreens-pharmacy.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name in an attempt to pass itself off as Complainant to perpetrate fraud for Respondent’s commercial gain.
4(a)(iii): Respondent registered and uses the <walgreens-pharmacy.com> domain name in bad faith. Respondent uses the domain name to disrupt Complainant’s business. Further, based on the famous nature of the mark, Respondent had actual knowledge and constructive knowledge of Complainant’s rights in the WALGREENS mark prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <walgreens-pharmacy.com> domain name.
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.”).
Complainant asserts rights in the WALGREENS mark based upon registration with the USPTO. Registration of a mark with a trademark authority such as the USPTO is sufficient to establish rights in said mark pursuant to Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides copies of the trademark registrations for the WALGREENS mark(e.g., Reg. No. 1,057,249, registered Jan. 25, 1977). The Panel finds Complainant has rights in the “WALGREENS” mark.
Next, Complainant argues Respondent’s domain name <walgreens-pharmacy.com> is confusingly similar to Complainant’s WALGREENS mark as the disputed domain name incorporates Complainant’s famous mark in its entirety, includes the addition of the generic term “-pharmacy”, and appends the “.com” generic top-level domain name (“gTLD”). Similar changes have been found insufficient to withstand a test of confusing similarity pursuant to Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). The Panel finds Respondent’s domain name <walgreens-pharmacy.com> is confusingly similar to Complainant’s WALGREENS mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues that Respondent has no rights or legitimate interests in the <walgreens-pharmacy.com> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the WALGREENS mark. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). A privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. The WHOIS information of record identifies Respondent as “Walgreens Pharmacy.” Where a respondent appears to be commonly known by a disputed domain name, but does not submit affirmative evidence of its status, panels have found said respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Google Inc. v. S S / Google International, FA1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”). Additionally, lack of evidence in the record to indicate that a complainant authorized respondent to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <walgreens-pharmacy.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <walgreens-pharmacy.com> domain name in connection with a bona fide offering of goods or services or for a legitimate, noncommercial or otherwise fair use as, instead, Respondent attempts to pass iself off as Complainant for Respondent’s commercial gain. 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). See Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name.”). Complainant provides screenshot evidence of the resolving website for the disputed domain name in which Respondent purports to be Complainant and sells items that compete with Complainant’s business. The Panel finds that Respondent has failed to use the <walgreens-pharmacy.com> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) and has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues Respondent disrupts Complainant’s business through the sale of competing goods. Registration and use of a confusingly similar domain name to sells goods and directly compete with a complainant does evinces a finding of bad faith pursuant to Policy ¶ 4(b)(iii). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)). Complainant provides screenshot evidence of Respondent’s offer of competing products on the resolving website for the <walgreens-pharmacy.com> domain name. The Panel finds Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iii).
Complainant claims that Respondent had actual notice or constructive knowledge of Complainant’s WALGREENS mark before registering the <walgreens-pharmacy.com> domain name. The Panel may disregard arguments of bad faith based on constructive knowledge as UDRP case precedent declines to find bad faith as a result of constructive knowledge; however, actual knowledge is sufficient for a finding of bad faith pursuant to Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent must have had actual knowledge of Complainant’s rights in the WALGREENS mark based upon Respondent’s adoption of the Walgreens Pharmacy name and use of the address of one of Complainant’s stores as its contact information both on its website and in connection with the domain registry. The Panel finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <walgreens-pharmacy.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: April 9, 2018
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