Walgreen Co. v. WALLGREENS IMPEX
Claim Number: FA2005001896402
Complainant is Walgreen Co. (“Complainant”), represented by Tamara A. Miller, Illinois, United States. Respondent is WALLGREENS IMPEX (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wallgreensimpex.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 14, 2020; the Forum received payment on May 14, 2020.
On May 16, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <wallgreensimpex.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR 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 May 18, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 8, 2020 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@wallgreensimpex.com. Also on May 18, 2020, 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 June 11, 2020, 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 a United States drugstore chain.
Complainant asserts rights in the WALGREENS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <wallgreensimpex.com> domain name is confusingly similar to Complainant’s WALGREENS mark as it incorporates the mark in its entirety and merely adds the term “impex” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <wallgreensimpex.com> domain name. Respondent is not commonly known by the at-issue domain name and Complainant has not authorized Respondent to use the WALLGREENS mark. Additionally, Respondent fails to use the <wallgreensimpex.com> domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to offer competing goods.
Respondent registered and uses the <wallgreensimpex.com> domain name in bad faith. Respondent’s use of Complainant’s mark is an attempt to pass off as Complainant to cause confusion for financial gain. Additionally, Respondent had knowledge of Complainant’s rights in the WALLGREENS mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in WALGREENS.
Respondent is not affiliated with Complainant and is not authorized to use the WALGREENS mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in WALGREENS.
Respondent uses the domain name to pass itself off as Complainant and offer products competing with those 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the WALGREENS mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Further, Respondent’s <wallgreensimpex.com>domain name incorporates Complainant’s WALGREENS trademark, adds an extra “L” to the mark, and follows the misspelled mark with the suggestive term “impex” (an abbreviation for import-export) and the generic top-level domain name “.com”. However, the differences between Complainant’s trademark and Respondent’s domain name do nothing to distinguish the at-issue domain name from Complainant’s trademark pursuant to Policy ¶ 4(a)(i). The misspelling of Complainant’s mark fails to alter the sound of the mark or the impression made when seeing the mark in print. Likewise, the term “impex” does not differentiate the domain name from the trademark. In fact the inclusion such term suggests Complainant’s multinational business thereby adding to any confusion between the mark and the at-issue domain name. Therefore, the Panel concludes that Respondent’s <wallgreensimpex.com> domain name is confusingly similar to Complainant’s WALGREENS trademark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)).
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.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “WALLGREENS IMPEX”. Nevertheless, the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <wallgreensimpex.com>domain name. The Panel therefore concludes that Respondent is not commonly known by the <wallgreensimpex.com>domain name for the purposes of Policy ¶ 4(c)(ii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name).
Moreover, Respondent uses the <wallgreensimpex.com> domain name to pass itself off as Complainant so that it may offer products competing with those offered by Complainant. In particular, Complainant shows that the at-issue domain name addresses a website that appears to invite customers to request pricing information for prescription medications and then allows them to purchase such medications via an online form entitled “I want to buy”. Respondent’s use of the domain name in this manner falsely implies that there is a relationship between Complainant and Respondent where there is none and using the confusingly similar domain name to improperly exploit Respondent’s trademark to further the sale of products competing with Complainant, indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”).
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 under Policy ¶ 4(a)(ii).
Respondent’s <wallgreensimpex.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, as mentioned above, Respondent’s confusingly similar domain is used to address a website displaying Complainant’s WALGREENS mark and logo so that Respondent may pass itself off as being sponsored by, or affiliated with, Complainant when it is not. Respondent further uses the domain name to offer competing products for sale. Using the domain name to create the false impression of affiliation with Complainant in order to disrupt Complainant’s business and compete with Complainant shows Respondent’s bad faith registration and use of the <wallgreensimpex.com> domain name per Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business).
Additionally, Respondent registered <wallgreensimpex.com> knowing that Complainant had trademark rights in the WALGREENS mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark, from Respondent’s use of Complainant’s trademark and logo on the <wallgreensimpex.com> website and from Respondent’s purported sale of competing products on such website. It is thus 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 <wallgreensimpex.com> 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 <wallgreensimpex.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 11, 2020
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