Walgreen Co. v. Domain Administrator, Medicina Mexico, S.A. de C.V.
Claim Number: FA1602001661648
Complainant is Walgreen Co. (“Complainant”), represented by Sarah E. Aagaard, Illinois, USA. Respondent is Domain Administrator, Medicina Mexico, S.A. de C.V. (“Respondent”), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wallgreenstijuana.com>, registered with Mesh Digital Limited.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 18, 2016; the Forum received payment on February 18, 2016.
On February 19, 2016, Mesh Digital Limited confirmed by e-mail to the Forum that the <wallgreenstijuana.com> domain name is registered with Mesh Digital Limited and that Respondent is the current registrant of the name. Mesh Digital Limited has verified that Respondent is bound by the Mesh Digital Limited 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 February 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 2016 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@wallgreenstijuana.com. Also on February 22, 2016, 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 March 18, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant uses the WALGREENS mark in connection with its retail pharmacy business. Complainant has registered the WALGREENS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,801,715, registered October 26, 1993), which demonstrates rights in the mark, even where Respondent operates in a different country. Complainant has also registered the WALGREENS mark with the Mexican Institute of Industrial Property (“MIIP”) (e.g. Reg. No. 568,413, registered September 30, 2002). Id. Respondent’s <wallgreenstijuana.com> domain name is confusingly similar to Complainant’s WALGREENS mark as it incorporates the mark entirely and adds an extra letter “l,” the geographic term “tijuana,” and the generic top-level domain (“gTLD”) “.com.”
ii) Respondent has no rights or legitimate interests in the <wallgreenstijuana.com> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <wallgreenstijuana.com> domain name. Rather, the domain name resolves to a website containing medicinal products in direct competition with those of Complainant and marketed under Complainant’s WALGREENS mark.
iii) Respondent registered and is using the <wallgreenstijuana.com> domain name in bad faith. Respondent has a pattern of domain name misuse as evidenced by a prior adverse UDRP decision in a dispute between Complainant and Respondent. Further, Respondent had actual or constructive notice of the WALGREENS mark and Complainant’s rights therein.
B. Respondent
Respondent did not submit a response. The Panel notes that the <wallgreenstijuana.com> domain name was registered on November 30, 2014.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used 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 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant uses the WALGREENS mark in connection with its retail pharmacy business. Complainant claims it has registered the WALGREENS mark with the USPTO (e.g., Reg. No. 1,801,715, registered October 26, 1993), which it contends demonstrates rights in the mark. Complainant has also registered the WALGREENS mark with the MIIP (e.g. Reg. No. 568,413, registered September 30, 2002). Id. Past Panels have found a valid USPTO or MIIP registration to be sufficient to establish rights in a trademark. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”); see also Teck Res. Ltd. v. Amexa Ltda., FA 1420960 (Nat. Arb. Forum Jan. 27, 2012) (finding that a trademark registration with the MIIP was sufficient to establish rights in a mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has demonstrated rights in the WALGREENS mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <wallgreenstijuana.com> domain name is confusingly similar to Complainant’s WALGREENS mark as it incorporates the mark entirely and adds an extra letter “l,” the geographic term “tijuana,” and the generic top-level domain (“Gtld”) “.com.” Past Panels have found such alterations to a mark to be insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)); see also Skype Ltd. v. Sacramento, FA 747948 (Nat. Arb. Forum Aug. 30, 2006) (“The addition of the geographic term [“Brasil”] does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel therefore agrees Respondent’s <wallgreenstijuana.com> domain name is confusingly similar to the WALGREENS mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the <wallgreenstijuana.com> domain name. First, Complainant asserts that Respondent is not commonly known by the disputed domain name. The Panel sees that the WHOIS information regarding the disputed domain name lists “Domain Administrator” as registrant. Complainant also asserts that it has not given Respondent permission to use its WALGREENS mark. The Panel also notes that Respondent has not submitted a response in this proceeding. Therefore, in light of the available evidence, the Panel agrees there is no basis to find Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Further, Complainant argues that Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the <wallgreenstijuana.com> domain name. Rather, Complainant contends that the domain name resolves to a website containing medicinal products. These products are in direct competition with the products offered on Complainant’s own website. Past Panels have found a respondent’s use of a complainant’s mark to operate a website selling competing goods to evince neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent’s <wallgreenstijuana.com> domain name constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant contends that Respondent has a pattern of domain name misuse as evinced by a prior UDRP case between Complainant and Respondent regarding the domain name <walgreensmexico.com>, which was decided in Complainant’s favor. The Panel agrees with Complainant and holds that a prior adverse UDRP decision involving the same complainant shows a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Complainant asserts that, due to its extensive list of trademark registrations, Respondent must have had actual and/or constructive knowledge of Complainant's rights in the WALGREENS mark when Respondent registered the disputed domain name. Complainant further argues that the medicinal products on the website, which are the same types of products offered by Complainant, indicate that Respondent had actual knowledge of Complainant and its rights. Complainant also argues that Respondent’s actual knowledge is evident by Respondent’s prior registration of a domain name using the WALGREENS mark and the UDRP case that resulted from the prior registration. The Panel infers due to the manner of use of the disputed domain name by Respondent and notoriety of Complainant's mark that Respondent had actual knowledge of Complainant and its rights, and concludes that Respondent registered the <wallgreenstijuana.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use 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 <wallgreenstijuana.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: March 29, 2016
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