Walgreen Co. v. nkobo Brice / accute
Claim Number: FA2011001919687
Complainant is Walgreen Co. (“Complainant”), represented by Tamara A. Miller, Illinois, USA. Respondent is nkobo Brice / accute (“Respondent”), Cameroon.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <walgreencare.com> (the “disputed domain name”), registered with NameCheap, 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.
Lynda M. Braun 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, NameCheap, Inc. confirmed by e-mail to the Forum that the <walgreencare.com> disputed domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 11, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 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@walgreencare.com. Also on November 11, 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 8, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 is one of the United States’ largest drugstore chains, with thousands of stores spread across all 50 states in the United States, the United States Virgin Islands, and Puerto Rico. Complainant has rights in the WALGREENS trademark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,292,545, registered November 16, 1999). Complainant also has rights in the WALGREENS trademark through its registration of the mark in Pakistan (e.g., Reg. No. 476517, registered November 22, 2017), where Respondent claims the online pharmacy is located, and in the African Intellectual Property Organization (AIPO), of which Cameroon is a member (e.g., Reg. No. 33281, registered September 15, 1994), where the Respondent allegedly resides (hereinafter collectively referred to as the “WALGREENS Mark”).
Complainant also contends that Respondent’s disputed domain name is identical or confusingly similar to Complainant’s WALGREENS Mark as it is merely a misspelling of Complainant’s trademark followed by the dictionary term “care” and the generic Top-Level Domain (“gTLD”) “.com”. Complainant further claims that Respondent lacks rights or legitimate interests in the disputed domain name since Respondent has not been authorized by Complainant to use the WALGREENS Mark and Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. Finally, Complainant contends that Respondent registered and uses the disputed domain name in bad faith because Respondent uses the disputed domain name to compete with Complainant and to offer prescription drugs on its website, which is illegal.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant holds trademark rights in the WALGREENS Mark, that the disputed domain name is confusingly similar to Complainant’s WALGREENS Mark, that Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name 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 disputed 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 disputed domain name; and
(3) the disputed 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”).
As stated above, Complainant asserts rights in the WALGREENS Mark through its registration of the trademark in the United States, Pakistan and Cameroon. Registration of a mark with multiple trademark agencies around the world is sufficient to demonstrate rights in the mark under Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (finding “[r]egistration of a mark with a governmental authority (or, in this case, multiple governmental authorities) is sufficient to establish rights in the mark for purposes of Policy ¶ 4(a)(i)”). Therefore, the Panel finds that Complainant has demonstrated rights in the WALGREENS Mark per Policy ¶ 4(a)(i).
The Panel also concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s WALGREENS Mark because the disputed domain name incorporates a misspelling of the WALGREENS Mark, omitting the letter “s”, and then adds the dictionary term “care“ and the “.com” gTLD. The addition of a letter and addition of a dictionary term and gTLD does not distinguish a disputed domain name from a complainant’s mark. See Western Alliance Bancorporation v. James Brandon, FA 1783001 (Forum June 5, 2018) (“Respondent’s <westernalliancebcorporation.info> domain name is confusingly similar to Complainant’s WESTERN ALLIANCE BANCORPORATION mark because it merely appends the gTLD ‘.info’ to a misspelled version of Complainant’s mark.”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”). In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not respond to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard pressed to furnish availing arguments had it chosen to respond:
Specifically, Respondent is not commonly known by the disputed domain name, Complainant has not authorized, licensed, or otherwise permitted Respondent to use the WALGREENS Mark and Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Furthermore, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services, or in connection with a legitimate noncommercial or fair use because the disputed domain name resolves to a webpage containing competing goods that the Complainant also offers on its official website. Specifically, Respondent’s website offers prescription drugs that customers can obtain without a prescription, which is most likely illegal. In addition, to further confuse consumers, Respondent’s website lists the contact email as “info@walgreencare.com”, which would lead consumers to believe that the disputed domain name is affiliated with or sponsored by Complainant. Such use neither qualifies as a bona fide offering of goods or services nor a legitimate commercial or fair use. See Walgreen Co. v. Usama Nizamani, FA 1801001767423 (Forum Feb. 18, 2018) (holding that respondent’s use of <wallgreenpharmacy.xyz> for a website offering prescription medications in competition with complainant’s pharmacy business was not a bona fide offering of goods or services nor a non-commercial or fair use).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel concludes that Respondent registered and is using the disputed domain name in bad faith.
First, Respondent uses the disputed domain name to resolve to a website that competes with Complainant. Using a confusingly similar domain name to divert Internet users to a respondent’s competing website demonstrates bad faith per Policy ¶¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 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)). Here, the goods that Respondent offers through its website directly compete with the goods offered by Complainant through its online store at its official website, which is conduct emblematic of bad faith.
Moreover, the use of a disputed domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion or a false association with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by 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 <walgreencare.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: December 14, 2020
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