Walgreen Co. v. BLACK ROSE
Claim Number: FA2006001898554
Complainant is Walgreen Co. (“Complainant”), represented by Tamara A. Miller, United States. Respondent is BLACK ROSE (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <walgreenscorp.com>, registered with Web4Africa Inc..
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 1, 2020; the Forum received payment on June 1, 2020.
On June 3, 2020, Web4Africa Inc. confirmed by e-mail to the Forum that the <walgreenscorp.com> domain name is registered with Web4Africa Inc. and that Respondent is the current registrant of the name. Web4Africa Inc. has verified that Respondent is bound by the Web4Africa 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 June 9, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 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@walgreenscorp.com. Also on June 9, 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.
Complainant filed an Additional Submission with the Forum on June 1, 2020. As the deadline for submissions had passed, it has been deemed deficient by the Forum pursuant to Supplemental Rule 7. The Panel may accordingly determine what amount of weight, if any, should be given to Complainant’s deficient Additional Submission.
On July 2, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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.
Preliminary Issue: Additional Submissions
As noted above, the Panel may determine what amount of weight, if any, should be given to Complainant’s deficient Additional Submissions. See, e.g., Bd. of Governors of the Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a panel may consider a response which was one day late, and received before a panelist was appointed and any consideration made); see also SuNyx Surface Nanotechnologies GmbH v. Primmer, D2002-0968 (WIPO Jan. 20, 2003) (choosing not to consider either the complainant’s or the respondent’s additional submissions that were received after the stated deadline where neither set out any new facts or other circumstances that would justify the late submissions).
In the present case, the Additional Submissions do not concern the disputed domain name. Rather, they concern a second, different domain name. Complainant alleges, but does not provide evidence, that the Registrant of the second domain name (who is protected by a privacy service) is the same as the Registrant of the disputed domain name. Complaint also alleges, again without providing evidence, that the second disputed domain name has been used in fraudulent emails. The contact listed in the WHOIS for the second domain name (that is, the privacy service) has not been served with a UDRP notification or complaint by the Forum.
Consequently, the Panel declines to consider Complainant’s Additional Submissions. Complainant may file a separate Complaint under the Policy regarding the second domain name.
A. Complainant
Complainant states that it is one of the United States’ largest drugstore chains, with more than 8,500 spread across all 50 U.S. states, the U.S. Virgin Islands, and Puerto Rico. Complainant offers pharmacy and retail store services, as well as a wide variety of products, under the WALGREENS name and trademark. Complainant opened its first store in 1901, and has since continuously used the WALGREENS name and trademark for its products and services. In its fiscal year 2014, Complainant had sales of over $76 billion. Also in fiscal year 2014, Complainant served 6.2 million customers daily and filled approximately 699 million prescriptions. As a market leader, as of August 31, 2019, approximately 78% of the U.S. population lived within five miles of one of Complainant’s stores. Complainant has rights in the WALGREENS mark through its registration of the mark in the United States in 2007.
Complainant alleges that the disputed domain name is confusingly similar to its WALGREENS mark as it incorporates the mark in its entirety and merely adds the generic term “corp” and the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent lacks rights and legitimate interest in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent’s use of the WALGREENS mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Rather, Respondent makes no active use of the website at the disputed domain but uses the domain name in connection with a fraudulent email scheme. Specifically, Respondent uses an email address ending with the disputed domain name and the name of an actual employee of Complainant’ parent company to perpetrate a fraud through the impersonation of a human resource employee of Complainant’s parent company. This fraud includes seeking sensitive and detailed personal information.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent uses the domain name to pass off as Complainant in furtherance of a fraudulent scheme. Additionally, Respondent conceals their identity which is further evidence of bad faith. Finally, Respondent had knowledge of Complainant’s rights in the WALGREENS mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark WALGREENS and uses it to offer pharmacy and retail store services.
Complainant’s rights in its mark date back to at least 2007.
The disputed domain name was registered in 2019.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name is used in a fraudulent email scheme.
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 disputed domain name incorporates Complainant’s WALGREENS mark in its entirety and merely adds the generic term “corp” and the “.com” gTLD. The addition of a generic or descriptive term and a gTLD is not sufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). 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).). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its WALGREENS mark. Respondent is not commonly known by the disputed domain name: where a response is lacking, relevant WHOIS information can be used to determine if a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Here, the WHOIS information for the disputed domain name lists the registrant as “BLACK ROSE”. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Respondent uses the disputed domain name to impersonate Complainant’s employees in a fraudulent email; this is not indicative of rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA1403001550388 (Forum May 5, 2014) (“Respondent is using the domain name in emails to various IT hardware suppliers in an attempt to impersonate Complainant and defraud its customers. The domain name also resolved to a website similar to Complainant's website. The Panel found that such actions precluded a bona fide offer or fair use.”). Consequently, the Panel finds that complainant fails to use the disputed domain name to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). And the Panel finds that Respondent goes not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent uses the disputed domain name to impersonate Complainant’s employees in furtherance of a fraudulent scheme. Use of a disputed domain name to pass off as a complainant through email may be evidence of bad faith under Policy ¶ 4(b)(iii) and (iv). See Microsoft Corporation v. Terrence Green, FA 1661030 (Forum Apr. 4, 2016)(finding the Respondent’s use of the disputed domain names to send fraudulent emails supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)); see also The Hackett Group, Inc. v. Brian Herns/The Hackett Group, FA 1597465 (Forum, Feb. 6, 2015)(finding that the use of emails associated with the domain name to send fraudulent emails contains the requisite competitive nature under Policy ¶ 4(b)(iii) and this is evidence of bad faith disruption); see also National Oilwell Varco, L.P. v. Craig Wood/NOV, FA 1575951 (Forum September 22, 2014) (“We are persuaded by the evidence that Respondent’s use of the <nov-inc.com> domain name to commit a commercial fraud while purporting to act in the name of the Complainant, all as alleged in the Complaint, demonstrates bad faith in the registration and use of the domain name”). The Panel therefore finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the signature block of the fraudulent email displays the URL for Complainant’s legitimate website. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); 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). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(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 <walgreenscorp.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: July 2, 2020
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