Walgreen Co. v. daniel goldsmith / alpha marketing
Claim Number: FA2011001919685
Complainant is Walgreen Co. (“Complainant”), represented by Tamara A. Miller, United States. Respondent is daniel goldsmith / alpha marketing (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <walgreenssurvey.us>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard 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 <walgreenssurvey.us> 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 the U.S. Department of Commerce’s usTLD 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@walgreenssurvey.us. 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 9, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the National Arbitration 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 U.S. states, the U.S. Virgin Islands, and Puerto Rico.
Complainant holds a registration for the WALGREENS trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,303,249, registered October 2, 2007.
Respondent registered the domain name <walgreenssurvey.us> on or about March 1, 2020.
The domain name is confusingly similar to Complainant’s WALGREENS mark.
Respondent has not been commonly known by the domain name.
Respondent has not been authorized by Complainant to use the WALGREENS mark.
Respondent does not use the domain name in connection with a bona fide offering of goods or services.
Instead, Respondent uses the domain name to pass itself off as Complainant online while purporting to conduct a survey that redirects Internet users desiring to become Complainant’s customers to third-party websites functioning in competition with the business of Complainant, from the operation of which redirection process Respondent receives click-through fee income.
Respondent lacks rights to and legitimate interests in the domain name.
Respondent knew of Complainant’s rights in the WALGREENS mark prior to registering the domain name.
Respondent used a proxy service to conceal its identity when it registered the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered or is being used by Respondent in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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”).
Complainant has rights in the WALGREENS trademark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum December 30, 2018):
Complainant’s ownership of a USPTO registration for … [its mark] … demonstrate[s] its rights in such mark for the purposes of Policy ¶ 4(a)(i).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <walgreenssurvey.us> domain name is confusingly similar to Complainant’s WALGREENS trademark. The domain name incorporates the mark in its entirety, with only the addition of the generic term “survey,” which can be taken to relate to an aspect of Complainant’s business, plus the country code Top-Level Domain (“ccTLD”) “.us.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum January 21, 2016) (finding that confusing similarity existed where a disputed domain name contained a UDRP complainant’s entire mark and differed from it only by the addition of a generic phrase and a top-level domain, the differences between the domain name and the trademark being insufficient to distinguish one from the other for purposes of the Policy).
See also Dansko, LLC v. zhang wu, FA 1757745 (Forum December 12, 2017) (finding the <danskoshoes.us.com> domain name to be confusingly similar to a UDRP complainant’s DANSKO mark under Policy ¶ 4(a)(i), despite the addition of the term “shoes,” which identified that complainant’s product line, plus the ccTLD “.us” and the gTLD “.com”).
Further see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks both rights to and legitimate interests in the challenged <walgreenssurvey.us> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <walgreenssurvey.us> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the WALGREENS mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “daniel goldsmith,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <walgreenssurvey.us> domain name to pass itself off as Complainant online while purporting to conduct a survey that redirects Internet users wishing to become Complainant’s customers to third-party websites operating in competition with the business of Complainant, from the operation of which redirection process Respondent receives click-through fee income. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Victoria’s Secret Stores Brand Mgmt., Inc. v. egyGossip.com, FA 1288062 (Forum November 20, 2009) (finding that a respondent lacked both rights to and legitimate interests in a contested domain name where the domain name was used to solicit Internet users to participate in completion of a purported survey). See also Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (finding that a respondent’s use of a disputed domain name did not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use where that respondent used the domain name to sell services competing with those offered by a UDRP complainant).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent uses the disputed <walgreenssurvey.us> domain name, which we have found to be confusingly similar to Complainant’s WALGREENS mark, to attempt to profit from the confusion thus caused among Internet users as to the possibility of an association between Complainant and the domain name. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Weight Watchers Int’l, Inc. v. Private Registration, FA1596215 (Forum January 15, 2015):
… Complainant claims that Respondent is seeking to profit through a likelihood [that] Internet users will believe the surveys offered on the domain name’s website have some association with [this] Complainant’s… business…. In Victoria’s Secret Stores Brand Mgmt., Inc. v. Above.com Domain Privacy, FA 1393078, the panel found that there was a likelihood for the respondent to profit through a likelihood of consumer confusion as to the association between the survey and the complainant’s mark in Policy¶4(b)(iv) bad faith. This Panel similarly finds that Respondent has acted in Policy¶4(b)(iv) bad faith here based on use of the domain name for surveys.
We are also convinced by the evidence that Respondent knew of Complainant’s rights in the WALGREENS mark when it registered the <walgreenssurvey.us> domain name. This further illustrates Respondent’s bad faith in registering the domain name. See, for example, Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel…here finds actual knowledge [of a UDRP complainant’s rights in a mark from which a respondent constructed a confusingly similar domain name, and thus that respondent’s bad faith in registering it] through the name used for the domain and the use made of it.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the usTLD Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <walgreenssurvey.us> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 21, 2020
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