Walgreen Co. v. alex Neal / ATT QQ
Claim Number: FA2006001901817
Complainant is Walgreen Co. ("Complainant"), represented by Tamara A. Miller, Illinois, USA. Respondent is alex Neal / ATT QQ ("Respondent"), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <drwalgreen.com>, <drwalgreens.com>, <mrwalgreen.com>, and <mrwalgreens.com>, registered with GoDaddy.com, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 25, 2020; the Forum received payment on June 25, 2020.
On June 26, 2020, GoDaddy.com, LLC confirmed by email to the Forum that the <drwalgreen.com>, <drwalgreens.com>, <mrwalgreen.com>, and <mrwalgreens.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 July 2, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 2020 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@drwalgreen.com, postmaster@drwalgreens.com, postmaster@mrwalgreen.com, postmaster@mrwalgreens.com. Also on July 2, 2020, 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.
A timely Response was received and determined to be complete on July 2, 2020. Two other documents were also received from Respondent on that date, captioned "Counter" and "Motion for Order Determining Plaintiff a Vexatious Litigant."
On July 6, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is one of the largest drugstore chains in the United States. Complainant has used the WALGREENS name and mark in connection with that business continuously since 1901. Complainant had sales of over $76 billion in fiscal year 2014, serving 6.2 million customers daily and filling approximately 699 million prescriptions. Complainant owns numerous trademark registrations for WALGREENS in the United States and other jurisdictions, and contends that the mark has become famous as a result of longstanding use and promotion.
Respondent registered the disputed domain names <drwalgreen.com>, <drwalgreens.com>, <mrwalgreen.com>, and <mrwalgreens.com> via a privacy registration service over a five-day period in late January 2020. The <drwalgreens.com> domain name is being used for a website entitled "Dr. Walgreen" that offers various cannabis-related products and services; the other three disputed domain names redirect to that website. The website also links to a third-party site that appears to offer prescription and healthcare services that compete directly with services offered by Complainant, and to another third-party site that permits users to transmit money to Respondent in payment for its cannabis-related products. Complainant states that it has not authorized or licensed Respondent to use the WALGREENS mark or anything similar thereto, and asserts that Respondent has never been commonly known by the disputed domain names.
Complainant contends on the above grounds that each of the disputed domain names <drwalgreen.com>, <drwalgreens.com>, <mrwalgreen.com>, and <mrwalgreens.com> is confusingly similar to its WALGREENS mark; that Respondent lacks rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
B. Respondent
Respondent contends that "Complainant has failed to identify distinctly whether or not their incorporated trademark is singular or possessive/pluralized (Walgreen/Walgreens.)"; and that the evidence "demonstrates no use of the trademark in question and more importantly only substantiates the Respondent’s lawful use of the title: 'Wal-Green.' (ie. Wal-itin, Wal-Mart)."
C. Additional Submissions
In the submission captioned "Counter," Respondent offers to sell two of the disputed domain names, <drwalgreen.com> and <drwalgreens.com>, "for the fair domain value of $3,000."
In the submission captioned "Motion for Order Determining Plaintiff a Vexatious Litigant," Respondent states as follows:
Because the Respondent has never made any monetary reward or financial gains from the domain names in question and has also never legitimately advertised them, he believes the Complainant is acting maliciously and for ulterior motives than those outlined in the initiating complaint. Further, he requests an investigation as to any unusual activity or traffic occuring on his domains.
WHEREFORE, he requests this case to be dismissed and the Complainant to be found as a vexatious litigant.
The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used 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."
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.
Each of the disputed domain names <drwalgreen.com>, <drwalgreens.com>, <mrwalgreen.com>, and <mrwalgreens.com> incorporates Complainant's registered WALGREENS trademark, adding the honorific prefix "Dr." or "Mr." and, in two instances, dropping the possessive "S" at the end, and appending the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain names and Complainant's mark. See, e.g., Walgreen Co. v. Skido Leslie, FA 1895833 (Forum June 9, 2020) (finding <walgreenparma.com> confusingly similar to WALGREEN); Playboy Enterprises International, Inc. v. John Hanley, D2014-0618 (WIPO June 16, 2014) (finding <mrplayboy.com> confusingly similar to PLAYBOY); Dr. David Doka v. none a/k/a Elvira Galindo, FA 1065522 (Forum Oct. 9, 2007) (finding <drdoka.com> confusingly similar to DOKA). The Panel considers each of the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain names incorporate Complainant's famous registered mark without authorization, and they are being used to host or redirect to a website that uses a variant of Complainant's mark to promote cannabis-related products and services that are likely unlawful, and to promote other services that compete directly with services offered by Complainant. Such use does not give rise to rights or legitimate interest under the Policy. See, e.g., Walgreen Co. v. Michael Guynn, FA 1866211 (Forum Nov. 10, 2019) (finding lack of rights or interests in similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain names, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
Finally, Complainant must show that the disputed domain names were registered and are being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent's offer to sell two of the domain names for $3,000, an amount the Panel presumes to be far in excess of Respondent's out-of-pocket costs directly related to the domain names, is indicative of bad faith under paragraph 4(b)(ii) with respect to those two domain names. Respondent's use of all four domain names to attract visitors to his website that promotes illegal and competing goods and services is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv). See, e.g., Walgreen Co. v. Michael Guynn, supra (finding bad faith in similar circumstances). Given the fame of Complainant's mark and Respondent's use of the disputed domain names to promote competing services, the Panel infers that Respondent was aware of and intentionally targeted the mark when registering and using the disputed domain names. See, e.g., Walgreen Co. v. Skido Leslie, supra; Walgreen Co. v. Michael Guynn, supra. Accordingly, the Panel finds that the disputed domain names were registered and are being used in bad faith.
The Panel considers it appropriate to treat Respondent's "Motion for Order Determining Plaintiff a Vexatious Litigant" as a request that Complainant be found to have brought the present proceeding in bad faith, in an abuse of the administrative proceeding.
Paragraph 1 of the Rules defines reverse domain name hijacking as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." Under paragraph 15(e), a Panel shall declare "that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding" if it finds reverse domain name hijacking or determines that the complaint "was brought primarily to harass the domain-name holder."
Such a declaration is appropriate only in egregious cases, not those in which the Complainant merely fails to prevail on the merits. See PFIP, LLC v. Marco Jud, FA 1577082 (Forum Sept. 26, 2014). For example, a declaration of bad faith may be warranted where the Complainant knew of the Respondent's unassailable rights or legitimate interests in the disputed domain name or the clear lack of bad faith registration and use. See Future Media Architects, Inc. v. Oxado SARL, D2006-0729 (WIPO July 31, 2006).
In the present matter, Complainant has prevailed on the merits on each issue with respect to each of the disputed domain names, and Respondent has offered no evidence that the Complaint was brought for the purpose of harassment or any other improper purpose. The Panel therefore declines to make the finding requested by Respondent.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <drwalgreen.com>, <drwalgreens.com>, <mrwalgreen.com>, and <mrwalgreens.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: July 8, 2020
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