WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Walgreen Company v. Jon Reegy
Case No. D2011-1621
1. The Parties
The Complainant is Walgreen Company, Illinois,United States of America, internally represented.
The Respondent is Jon Reegy, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <walgreens-pharmacy.net> is registered with Center of Ukrainian Internet Names (UKRNAMES).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2011. On September 23, 2011, the Center transmitted by email to Center of Ukrainian Internet Names (UKRNAMES) a request for registrar verification in connection with the disputed domain name. On September 23, 2011, Center of Ukrainian Internet Names (UKRNAMES) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amended Complaint on September 30, 2011.
On September 30, 2011 the Center notified the Parties that as the language of the registration agreement for the disputed domain name was Russian (as per information provided by the Registrar), the Complainant would need to either provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; submit the Complaint translated into Russian; or submit a request for English to be the language of the administrative proceedings. On September 30, 2011 the Complainant indicated that in the Amended Complaint, it requested that the language of the proceedings be English since the Respondent’s address is in Los Angeles, California and the domain name is in English. Additionally, according to the Complainant, the <walgreens-pharmacy.net> domain name resolves to a site that is completely in English, further evidencing the Respondent's familiarity with the English language. The Respondent did not provide any comments in this regard.
The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 26, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2011.
The Center appointed Paul E. Mason as the sole panelist in this matter on November 18, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant indicates in its Complaint that the mark WALGREEN’S has been in constant use in commerce since the company’s first store opened in 1901, giving it legal protection as a trademark under United States law.
The disputed domain name was registered some 110 years later, in 2011.
5. Parties’ Contentions
The Complainant contends that its trademarks are both long-standing and famous because of Walgreen’s corporate size and revenues deriving from its widespread presence as a drugstore in most towns of size in the United States; that the Respondent’s recently acquired domain name is confusingly similar to the Walgreen’s trademarks because adding the suffix “pharmacy” does not alter the similarity; that the Respondent must have known about the Complainant’s marks when registering the domain name; and that the Respondent used the domain name to create an online pharmacy website selling products in direct competition with the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceedings
The Complainant has provided a screenshot of the website to which the disputed domain name resolved, which was also in English. Therefore this Panel concludes that the proceedings shall be held in English because the Respondent’s address is in the United States, the domain name itself is in English, and the website to which the domain name resolves is in English. These factors taken together show that Respondent has or should have adequate knowledge of English to understand these proceedings.
B. Identical or Confusingly Similar
This Panel agrees with the many UDRP cases holding that the existence of prefixes or suffixes which do not materially change the meaning of a domain name therefore do not eliminate the confusing similarity between the domain name and a complainant’s trademark.
Here, the Respondent has added the suffix “pharmacy”. Instead of eliminating the similarity, it actually increases the similarity because the Complainant’s main business is pharmacies for which it is known widely. Therefore this Panel does find the disputed domain name to be confusingly similar to the Complainant’s trademark WALGREENS.
C. Rights or Legitimate Interests
The Complainant confirms in its Complaint that it has given no license or other permission to the Respondent to use the disputed domain name and has made a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name. Therefore the burden shifts to the Respondent to show that it indeed does have rights or legitimate interests in the disputed domain name. Since the Respondent did not respond to this Complaint, it has failed to meet this burden. The Panel therefore finds that it has no such rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
The Complainant’s trademark WALGREEN’s is undoubtedly famous in the United States where the Respondent’s address is listed. As noted earlier, there is at least one Walgreen’s drugstore in most every town of size there. As a result, it is inconceivable that the Respondent did not know of the Complainant’s famous reputation and trademark when registering his domain name in 2011. Therefore the Panel finds that Respondent registered the domain name in bad faith.
On the issue of bad faith use of the disputed domain name, Annex H to the Complaint shows a screenshot of the website to which the disputed domain name resolved, with visit dated September 22, 2011. The screenshot is of an online pharmacy selling products which compete directly with those of the Complainant.
The Panel attempted a view using the disputed domain name, but it did not resolve to a website. The Complainant has submitted graphic evidence of the existence of the website, unrebutted by the Respondent. Therefore the Panel accepts the evidence provided by Complainant regarding this issue.
The very essence of bad faith use of a domain name is treading on the goodwill built up by a trademark holder to create confusion in online consumers’ minds in order to market products or services which compete with those of the trademark holder. This is exactly what we have here.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <walgreens-pharmacy.net> be transferred to the Complainant.
Paul E. Mason
Dated: November 18, 2011