Walgreen Company v. Chad Overman
Claim Number: FA1701001712211
Complainant is Walgreen Company (“Complainant”), represented by Tamara A. Miller, Illinois, USA. Respondent is Chad Overman (“Respondent”), Iowa, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <walgreensoptical.com> and <walgreensvision.com>, registered with GoDaddy.com, LLC.
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.
James Bridgeman as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 12, 2017; the Forum received payment on January 12, 2017.
On January 13, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <walgreensoptical.com> and <walgreensvision.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 January 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 2017 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@walgreensoptical.com, postmaster@walgreensvision.com. Also on January 17, 2017, 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.
A timely Response was received and determined to be complete on February 6, 2017.
An Additional Submission was received from Complainant on February 9 2017 which complied with rule 7 of Forum's Supplemental Rules to ICANN's Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
On February 16, 2017 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman 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.
Complainant requests that the domain names <walgreensoptical.com> and <walgreensvision.com> be transferred from Respondent to Complainant.
A. Complainant
Complainant has provided evidence that it owns the largest drugstore chain in the United States, with over 8,000 stores spread across all 50 U.S. states and Puerto Rico offering a wide variety of products as well as pharmacy and retail store services under the WALGREENS name and trademark and is the owner of the registered trademarks and service marks in the United States listed below.
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, served 6.2 million customers daily, filled approximately 699 million prescriptions, and employed 251,000 people across the United States. It is ranked by Fortune Magazine among the 500 largest companies in the United States.
Complainant submits that it has established a protectable goodwill and reputation in the WALGREENS mark at common law through the advertising of its products using the trademark in a variety of ways, including radio, print advertising, its online website located at <walgreens.com>, inserts in newspapers across the U.S., and a weekly distribution of over 40 million copies of its print advertisement to consumers throughout the U.S. in Sunday newspaper inserts. Complainant operates a website and online retail store at the <walgreens.com> address, which is typically visited by people in over 225 countries each year, and received an average of approximately 59.7 million visits per month in fiscal year 2014.
Products sold by Complainant through its brick-and-mortar stores and online retail stores under the WALGREENS name and trademark, include optical and vision products such as contact solutions, contact cases, eye glasses, eye glass wipes and cleaning supplies, eye rewetting drops, and eye health supplements under both the WALGREENS brand as well as under third party brands. Complainant also sells contact lenses under the brands of third parties to consumers. Complainant has recently opened a retail vision care center in its flagship store in Chicago, Illinois.
Complainant submits that it has a long established and extensive reputation and goodwill throughout the United States in the WALGREENS mark and relies on its rights as owner of the United States registered trademarks and service marks which are listed below and at common law established though long and extensive use of the mark described above.
Complainant submits that the disputed domain names are similar and almost identical to Complainant’s well-known and registered WALGREENS mark. The addition of the non-distinctive terms “optical” and “vision” and the gTLD <.com> extension does not serve to distinguish either of the disputed domain names <walgreensoptical.com> and <walgreensivision.com> domain names from Complainant’s mark. The combination of a well-known trademark with a non-distinctive, generic, or descriptive term does not change the overall impression of a complainant’s mark. Citing Walgreen Co. v. Ernst Petersen, FA 1402592 (FORUM Sept. 22, 2011) (holding that walgreenspharmacyrx.com was confusingly similar to the WALGREENS mark); Am. Int’l Group, Inc. v. Lobsang Marques a/k/a AIG Financial Guarantee Corp., FA 126832 (FORUM, December 6, 2002) (holding that the domain aigfinancial.net was confusingly similar to Complainant’s “AIG” mark, despite the addition of the descriptive term “financial”); see also Am. Express Marketing & Development Corp. v. Andreas Emmanuel, FA 1228531 (FORUM December 4, 2008) (the addition of generic terms does not negate confusing similarity between the disputed domain names and Complainant’s mark); Am. Int’l Group, Inc. v. Free Space Image Consultants Inc. a/k/a Mark Stever, FA 411737 (FORUM March 22, 2005) (transferring aigpartners.com); Am. Int’l Group, Inc. v. Kim Chung, FA 161315 (FORUM July 14, 2003) (transferring aigprivatebankonline.com).
Moreover, Complainant submits that these generic terms that are incorporated into the disputed domain names relate directly to the vision/optical-related products and services offered by Complainant under the WALGREENS mark.
Complainant asserts that Respondent has no rights or a legitimate interest in the disputed domain names. Respondent did not obtain authorization from Complainant to use the WALGREENS mark or anything confusingly similar prior to registration and use of the disputed domain names. Complainant argues that failure to obtain authorization from a trademark holder prior to the registration or use of a domain name incorporating that trademark is evidence that a respondent has no legitimate interest in that domain name. In addition, the disputed domain names incorporate Complainant’s famous WALGREENS mark in its entirety. See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use).
To the best of Complainant’s knowledge, Respondent is not commonly known by either of the disputed domain names Citing, e.g., Academy of Motion Picture Arts and Sciences v. S. Najeeb A. Khan, FA0100142 (FORUM Nov. 14, 2001) (citing Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)). Complainant believes, to the best of its knowledge, that Respondent operates an optometric consulting business under the name “Dr Overman Consulting LLC” and does not use the WALGREENS mark in the course of his business. Thus, Respondent has no legitimate interest in the disputed <walgreensoptical.com> or <walgreensvision.com> domain names.
Respondent first registered the disputed domain names on December 25, 2015 whereas Complainant has been using its WALGREENS mark since at least 1901. As such, Complainant’s rights in domain names incorporating the WALGREENS mark precede Respondent’s registrations by over one hundred years. See, e.g., Prudential Ins. Co. of Am. v. Prudential Mortgage Loans, FA 103880 (FORUM. Mar. 20, 2002) (Prudential Mortgage Loans could not have legitimate rights or interests in the www.prudentialloans.com domain name as “[a] respondent cannot be known by the famous trademark of another for the purposes set out in Paragraph 4(c)(ii)”); Cable News Network LP v. Elie Khouri d/b/a Channel News Network, FA 117876 (FORUM Dec. 16, 2002) (respondent had sought to incorporate and register domain names including the mark “CNN” after having actual knowledge of Cable News Network’s rights in the “CNN” mark).
Accordingly, Respondent’s manner of use of the disputed domain names is not in connection with a bona fide offering of goods or services or for a legitimate non-commercial or fair use.
Complainant submits that Respondent registered the disputed domain names in bad faith. Despite having at least constructive knowledge of Complainant’s rights in the WALGREENS mark (by virtue of Complainant’s many trademark registrations), Respondent proceeded to register the disputed domain names. Complainant submits that registration with actual or constructive knowledge of a trademark holder’s rights in a mark is evidence of bad faith registration. See Digi Int’l v. DDI Sys., FA 124506 (FORUM Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"). Respondent’s constructive knowledge of Complainant’s rights in its “WALGREENS” mark indicates Respondent’s bad faith in registering the disputed domain names.
Complainant asserts that Respondent must have had actual knowledge of Complainant and its rights as there are over 8,000 WALGREENS-branded stores across the U.S.
Furthermore, Respondent is “sitting” on the disputed domain names, each of which link to an inactive site, claiming a website is “coming soon.” Parking these domain names without linking them to active sites for legitimate business purposes for approximately one year constitutes bad faith. Federal Home Loan Mortgage Corp. v. Stroud, FA 155173 (FORUM June 9, 2003) (the inactive use of the domain name, which resolved to a website claiming the site was underdevelopment, warrants a finding of bad faith); Meriter Health Services, Inc. v. Sagamatha LP JJ Monte, FA 1176767 (FORUM, May 20, 2008) (linking domain name to domain name registrar site is evidence of bad faith registration).
Finally, Complainant submits that Respondent has engaged in a pattern of registering numerous domain names that contain the trademarks of others. As noted in the exhibits annexed to the Complaint, Respondent has also registered domain names containing trademarks such as WAL-MART and LUXOTTICA. The registration of several domain names infringing on the rights of others constitutes a pattern of bad faith registration by Respondent. Roche Therapeutics Inc. v. Williams Shorell, FA 1684961 (FORUM Aug. 30, 2016).
B. Respondent
In response Respondent denies that the disputed domain names are confusing. He accepts that they each incorporate the word “Walgreens” but argues that when the disputed domain names were registered Complainant was not carrying on any commercial operation relating to vision and optical services which would cause an Internet user to accidentally add the words “optical” or “vision” when searching for products on the Complainant’s website. If such an aberration occurred, such a customer would have not been directed to a site where similar products to Complainant’s offerings were sold.
He submits that the one pilot location which Complainant is claiming to run in the Optical space has had little to no advertisement and did not exist, to Respondent’s knowledge, at the time of registration.
Respondent argues that as an Optometrist and independent consultant in the optical industry, he has a vested interest in all things “vision” and “optical” related.
He states that he is “also interested in the business side of the Industry” and goes on to state that “registering these domain names, to a part of my chosen Industry, may not make me a nice person but as they were unbelievably available, I thought it to be an interesting conversation piece.”
Respondent states that he never has and never will act in bad faith towards anyone. He submits that “sitting” on these domain names is actually a form of acting in good faith. He states that he has done nothing to disparage the Walgreens name and or business and have simply used them as a conversation piece. He states that “[m]ost individuals I speak with about owning these websites can not believe a company as large as Walgreens would not have had the forethought to register these names, if they truly believed they were in the Optical business or thought they would be in the near future. It is therefore my belief Walgreens has brought forth this complaint out of embarrassment to those who should have registered them first…. For clarification purposes, I did register the Luxottica domain names for the similar purpose/reason described above. However, the Walmart domain names were mistakenly put in my name by a third party vendor I used to create the content of those websites when I was employed by Walmart.”
C. Additional Submissions
In Additional Submissions, Complainant submits that Respondent’s assertion that the generic terms “optical” and “vision” distinguish the disputed domain names from Complainant’s WALGREENS trademark is contrary to established precedent in UDRP cases, as noted in the cases cited in Complainant’s Complaint. See, e.g. Walgreen Co. v. Ernst Petersen, FA 1402592 (FORUM Sept. 22, 2011) (holding that walgreenspharmacyrx.com was confusingly similar to the WALGREENS mark); and other cases cited in the Complaint.
Whether or not Complainant was running an optical practice at the time of registration is immaterial to whether or not the disputed domain names are confusingly similar.
Complainant has established, and Respondent has not contested, that Complainant offers products and services in the vision field in addition to its retail vision care center, as well as owns Federal registrations for marks consisting of or including the word WALGREENS for goods and services including eye drops, eye patches, contact lens solutions, contact lens cleaners, saline solutions, eye glass repair kits, contact lens cases, glasses, eye droppers, and retail store services.
Complainant points out that Respondent does not contest the fame of the WALGREENS trademark.
Noting Respondent’s statement that he registered the disputed domain names as a “conversation piece”; that he is an optometrist and independent consultant and registered them because they were “available”, Complainant argues that a domain name’s availability does not mean it does not infringe upon the rights of others or that Respondent has a legitimate interest in them. 24 Hour Fitness USA, Inc. v. veronica rosignoli / veronicareidwebdesign.com, FA 1653945 (FORUM Jan. 28, 2016) (that a disputed domain name was available for registration does not automatically grant respondent a legitimate interest in the registration). Respondent has not shown any legitimate interest in the walgreensoptical.com or walgreensvision.com domain names.
Furthermore Complainant notes Respondent’s admission that he is “sitting on” the disputed domain names and not using them.
Complainant denies that it bears the burden to register all possible combinations of domain names that could use its registered trademarks and submits that Respondent bears the burden to ensure that he registers only non-infringing domain names and uses them in good faith. UDRP Policy § 2 (“It is [the registrant’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”) Respondent has failed so to do with respect to both of the domain names in dispute.
By acknowledging his registration of <luxoticaoptical.com> and <luxotticaoptical.com>, Respondent has admitted a practice of registering domain names in bad faith and in contradiction of third party trademark rights. Respondent’s registration of several domain names infringing on the rights of others constitutes a pattern of bad faith registration. Roche Therapeutics Inc. v. Williams Shorell, FA 1684961 (FORUM Aug. 30, 2016). Complainant has clearly shown, and Respondent cannot contest, his bad faith in registering and holding the <walgreensoptical.com> and <walgreensvision.com> domain names.
Complainant is the largest drugstore chain in the United States’, with over 8,000 stores spread across all 50 U.S. states and Puerto Rico, offering pharmacy and retail store services, selling a wide variety of products, including vision and optical related products under the WALGREENS name and trademark.
Complainant is the owner of the following registered trademarks and service marks in the United States:
U.S. Registered Trademark WALGREENS THE PHARMACY AMERICA TRUSTS and design, registration no. 1,801,715 registered on October 26, 1993 for goods and services in international class 42;
U.S. Registered Trademark WALGREENS, registration no. 2,096,551 registered on September 16 1997 for goods and services in international class 3, 5, 8, 9, 10, 11, 16, 21, 25, 29, 30 and 42;
U.S. Registered Trademark WALGREENS THE PHARMACY AMERICA TRUSTS – SINCE 1901 and design, registration no. 3,294,523 registered on September 18, 2007 for goods and services in international class 35;
U.S. Registered Trademark WALGREENS and design, registration no. 3,303,209 registered on October 2, 2007 services in international class 35;
U.S. Registered Trademark WELL AT WALGREENS, registration no. 4,347,969 registered on June 4, 2013 for goods and services in international classes 35 and 44;
U.S. Registered Trademark WELL AT WALGREENS, registration no. 4,589,125 registered on August 19, 2014 for goods and services in international classes 1, 3, 5, 8, 9, 10 and 21.
The disputed domain names are held by Respondent and were each registered on December 25, 2015 and neither of the disputed domain names resolves to any active website.
Respondent has also registered other domain names including <luxoticaoptical.com>, <luxotticaoptical.com>, <wal-martod.net>, and <wal-martod.org>.
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.
Complainant has provided convincing evidence that it has rights in the WALGREENS mark though long established and extensive use of the mark in connection with its retail business and U.S. Registered Trademark WALGREENS, registration no. 2,096,551 and other registrations listed above.
Each of the disputed domain names consist of a combination of Complainant’s trademark with a generic element, “optical” and “vision” respectively, and the “.com” gTLD extension.
In each case Complainant’s mark in its entirety is the first and dominant element. Neither of the generic elements in any way serve to distinguish the domain name from Complainant’s mark and in fact, insofar as they both relate to goods and services marketed by Complainant, the additional elements adds to the confusing character of the domain names.
This Panel finds that both of the disputed domain names are confusingly similar to the WALGREENS trademark in which Complainant has rights.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii) also.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <walgreensoptical.com> and <walgreensvision.com> domain name be TRANSFERRED from Respondent to Complainant.
________________________________
James Bridgeman, Panelist
Dated: February 21, 2017
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