Walgreen Co. v. IBMCGROUP / 许 / 水金 许
Claim Number: FA2011001919682
Complainant is Walgreen Co. (“Complainant”), represented by Tamara A. Miller, Illinois, USA. Respondent is IBMCGROUP / 许 / 水金 许 (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <walgreensr.com>, registered with 1API GmbH.
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 November 5, 2020; the Forum received payment on November 5, 2020.
On November 9, 2020, 1API GmbH confirmed by e-mail to the Forum that the <walgreensr.com> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 16, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 7, 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@walgreensr.com. Also on November 16, 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 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 is one of the United States’ largest drugstore chains, with thousands of stores spread across all 50 U.S. states, the U.S. Virgin Islands, and Puerto Rico.
Complainant has rights in the WALGREENS mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <walgreensr.com> is identical or confusingly similar to Complainant’s WALGREENS mark as it is merely a misspelling of Complainant’s mark paired with the gTLD “.com”.
Respondent lacks rights or legitimate interests in the <walgreensr.com> domain name. Respondent is not commonly known by the at-issue domain name nor has Respondent been authorized by Complainant to use the WALGREENS mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses the at-issue domain name to compete with Complainant.
Respondent registered and uses the <walgreensr.com> domain name in bad faith. Respondent uses the at-issue domain name to compete with Complainant. Furthermore, Respondent had actual knowledge of Complainant’s rights to the WALGREENS mark prior to registering the disputed domain name by virtue of Complainant’s trademark registrations and the famous nature of Complainant’s mark. Finally, Respondent used a proxy service to register the disputed domain name.
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 <walgreensr.com> domain name incorporates Complainant’s WALGREENS trademark, adds the character “r” to the mark and follows all with the generic top-level domain name “.com”. The slight 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). Therefore, the Panel concludes that Respondent’s <walgreensr.com> domain name is confusingly similar to Complainant’s WALGREENS trademark. See Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”).
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 “IBMCGROUP” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <walgreensr.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <walgreensr.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name).
Moreover, Respondent uses the <walgreensr.com> domain name to pass itself off as Complainant so that it may offer products competing with those offered by Complainant. Complainant shows that the at-issue domain name addresses a website having a similar look to that of Complainant’s official website. Further, Respondent’s <walgreensr.com> website promotes goods that compete with, and in some cases that are identical to, those goods Complainant sells via in its physical retail stores and online store at walgreens.com. 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. Additionally, Respondent’s confusingly similar domain name functions to improperly exploit Complainant’s trademark so as to advance Respondent’s sale of products competing with Complainant. Doing indicates neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i) nor a non-commercial or fair use of the <walgreensr.com> domain name pursuant to Policy ¶ 4(c)(iii). 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).”); see also, Walgreen Co. v. Usama Nizamani, FA 1767423 (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).
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 <walgreensr.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 name is used to address a website setup to look like Complainant’s official website so that it may pass itself off as being sponsored by or affiliated with Complainant when it is not. The website is ultimately used 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 <walgreensr.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).
Finally, Respondent registered <walgreensr.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 trade dress on the <walgreensr.com> website, and from Respondent’s offering of products that directly compete with Complainant’s products on such website. The Panel thus concludes 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 its <walgreensr.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 <walgreensr.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 9, 2020
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