Walgreen Co. v. JessieBoy Juarez / Walgreen Shoppers
Claim Number: FA2011001919684
Complainant is Walgreen Co. (“Complainant”), represented by Tamara A. Miller, Illinois, United States. Respondent is JessieBoy Juarez / Walgreen Shoppers (“Respondent”), Philippines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <walgreenshoppers.com> ("the Domain Name"), registered with Tucows Domains Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 5, 2020; the Forum received payment on November 5, 2020.
On November 6, 2020, Tucows Domains Inc. confirmed by e-mail to the Forum that the <walgreenshoppers.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 November 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 30, 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@walgreenshoppers.com. Also on November 10, 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 December 2, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne as Panelist.
Immediately following appointment of the Panel the Respondent sent an email to the Forum saying ‘Thank you for your email. If Walgreen is against to (sic) my domain name Walgreenshoppers.com you close it anytime (sic).’ The Panel takes the view that this is not clearly consent to transfer and so proceeds to a full determination of the Complaint.
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
The Complainant’s contentions can be summarised as follows:
The Complainant has used the WALGREENS name since 1901 for pharmacy and retail services selling a wide variety of products. It owns registered trademarks for WALGREENS dating back to at least the 1970s in the United States and has applied to register the WALGREENS mark in Philippines where the Respondent is based. The Complainant owns <walgreens.com>. It uses WALGREENS in a red cursive script as a logo. The WALGREENS mark is well known.
The Domain Name registered in 2020 is confusingly similar to the Complainant’s registered mark being a misspelling of the Complainant’s WALGREENS Mark, dropping the "s", and adding the generic word "shoppers" and the gTLD ".com". "Walgreen" in the Domain Name reflects the usage without an "s" in the Complainant’s corporate name Walgreen Co.
The Domain Name resolves to a site selling competing goods to those of the Complainant using "Walgreen" with a ® sign in a logo as a masthead. Underneath "Walgreen" as part of the same logo the word "shoppers" is used in a red cursive script similar to the Complainant’s logo, all giving the impression of an established company with a registered trade mark and a connection with the Complainant when none exists.
This cannot be bona fide use or legitimate noncommercial fair use. Complainant has not given any authorisation to the Respondent. Respondent is not commonly known by the Domain Name. Respondent does not have rights or a legitimate interest in the Domain Name.
The use of the Complainant’s corporate name "Walgreen", the ® symbol and red cursive writing similar to the Complainant’s logo shows an intent to confuse Internet users that the Domain Name and the web site attached to it and the goods and services offered on it are connected to the Complainant when they are not for commercial gain. The Domain Name has been registered and used in bad faith. The Respondent also used a privacy service to cover its use of the Domain Name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant owns the mark WALGREENS (registered, inter alia for pharmacy and retail services and a wide variety of products since at least the 1970s in the United States) and has applied to register the WALGREENS mark in Philippines where the Respondent is based. The Complainant owns <walgreens.com>. It uses WALGREENS in a red cursive script as a logo. The WALGREENS mark is well-known.
The Domain Name registered in 2020 has been used for a site offering competing products to the Complainant using a logo as a masthead with a ® symbol next to "Walgreen" (reflecting the Complainant’s corporate name) and a red cursive script for elements of that masthead logo (the word "shoppers") that is similar to the colour and font of the Complainant’s logo.
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 Domain Name consists of a slight misspelling of the Complainant's
WALGREENS mark (which is registered, inter alia in USA for pharmacy and retail services since the 1970s) dropping the letter "s" with the addition of the generic term "shoppers" and the gTLD ".com".
Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic term "shoppers" to a close misspelling of the Complainant's WALGREENS mark does not prevent confusing similarity between the Domain Name and the Complainant’s registered trade mark which is still recognisable in the Domain Name. See Lockheed Martin Corporation v. toyosei maruyama, FA 1620489 (Forum July 7, 2015) (“Simply removing the letter ‘s’ from a mark in the creation of a domain name still creates a confusingly similar domain name.”).
The gTLD ".com" does not serve to distinguish the Domain Name from the element approximating to the Complainant’s mark which is the distinctive component of the Domain Name. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose of the Policy to a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The WHOIS information for the Domain Name identifies the registrant as “JessieBoy Juarez / Walgreen Shoppers”, but Respondent provides no affirmative evidence in support of this identity and no evidence in the record suggests Respondent is authorized to use a close misspelling of the WALGREENS mark. The Respondent did not formally respond to this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. 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).
Use of a Complainant’s trade mark in a domain name containing that mark for competing services and products is not a bona fide use or legitimate noncommercial or fair use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Further use of "Walgreen" reflecting the Complainant’s corporate name, the ® symbol and a similar red cursive script as the Complainant’s logo in the Respondent’s logo which is used as a masthead for the site attached to the Domain Name appears to be an attempt at passing off for commercial gain which is not a bona fide offering of goods or services or legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the Panel the use made of the Domain Name is confusing and disruptive in that visitors to the site attached to the Domain Name might reasonably believe that site is connected to or approved by the Complainant as it offers competing goods and services to the Complainant under the name "Walgreen" reflecting the Complainant’s corporate name. The site also uses a logo as a masthead containing the Walgreen name, the ® symbol and a similar red cursive script as the Complainant suggesting an established business with a connection to the Complainant (the owner of the registered WALGREENS mark) where no such connection exists. This use also shows that the Respondent was aware of the Complainant and its business, rights, products and services at the time of registration and is passing off.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to their website by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site and products and services offered on it likely to disrupt the business of the Complainant.
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4(b)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <walgreenshoppers.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: December 3, 2020
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