WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Walgreen Company v. Soesja Gilissen
Case No. D2012-0781
1. The Parties
The Complainant is Walgreen Company of Deerfield, Illinois, United States of America, internally represented.
The Respondent is Soesja Gilissen of Maastricht, Netherlands.
2. The Domain Name and Registrar
The disputed domain name <walgreensmailorderpharmacy.com> is registered with Nics Telekomünikasyon Ticaret Ltd. Sti.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2012. On April 17, 2012, the Center transmitted by email to Nics Telekomünikasyon Ticaret Ltd. Sti. a request for registrar verification in connection with the disputed domain name. On April 25, 2012, Nics Telekomünikasyon Ticaret Ltd. Sti. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 April 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2012.
The Center appointed Andrew F. Christie as the sole panelist in this matter on June 1, 2012. 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 is the United States of America’s largest drugstore chain, with over 8,000 stores across the 50 states and Puerto Rico. The Complainant opened its first store in 1901 and has since continuously used the WALGREENS name and trademark for its products and services. In 2010, the Complainant had sales of over USD 67 billion. Through the Complainant’s website, at “www.walgreens.com”, consumers can view products for sale in the Complainant’s stores, make online purchases and have them shipped to their homes, obtain information relating to their prescription medication, and obtain information and advice about various health and wellness topics.
The Complainant owns a large number of trademark registrations for WALGREENS throughout the world, dating from at least as early as 1992.
The disputed domain name was registered on November 22, 2011. According to screenshots provided by the Complainant, at some point prior to commencement of this Complaint the disputed domain name resolved to a website purporting to be for “Walgreens Pharmacy” and purporting to offer for sale and shipping around the world and in the United States of America various prescription medications.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its WALGREENS trademark because the addition of the non-distinctive terms “mail order pharmacy” does not serve to distinguish it. Moreover, this descriptive phrase relates directly to the pharmacy services offered by the Complainant to the general public, thereby reinforcing a link between the disputed domain name and the Complainant rather than distinguishing it.
The Complainant contends that the Respondent does not have rights or legitimate interests in the disputed domain name because: (i) the Respondent did not obtain authorization from the Complainant to use the WALGREENS trademark or anything confusingly similar to it prior to the registration and use of the disputed domain name; (ii) the disputed domain name incorporates the Complainant’s famous WALGREENS trademark in its entirety; (iii) the Respondent is not commonly known by the disputed domain name; (iv) the disputed domain name was registered over 100 years after the Complainant started using its WALGREENS trademark; and (v) the Respondent is not using the disputed domain name for a legitimate noncommercial or fair use, as the services offered on the website to which the disputed domain name resolved are in direct competition to those of the Complainant.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith because: (i) the Respondent had actual or constructive knowledge of the Complainant’s rights in the WALGREENS trademark by virtue of the Complainant’s many trademark registrations; and (ii) the Respondent is using the exact same distinctive stylized logo used by the Complainant on its website, indicating that the Respondent had actual knowledge of the Complainant’s trademark prior to the registration and use of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name incorporates the whole of the Complainant’s registered trademark WALGREENS, and adds the descriptive words “mail order pharmacy”. The addition of these words does not lessen the inevitable confusion of the disputed domain name with the Complainant’s trademark. This is especially so given that the Complainant operates a pharmacy goods and services business under the WALGREENS trademark in relation to, in part, online sales and information provision. Accordingly, this Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its WALGREENS trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The disputed domain name was registered more than a century after the Complainant’s first use of the trademark with respect to which the disputed domain name is confusingly similar. The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a website purporting to sell similar or identical products to those that the Complainant sells in its stores and via its own website. According to the present record, the disputed domain name is not being used in connection with a bona fide offering of goods and services, or for a legitimate noncommercial or fair use. Accordingly, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name was registered in the Respondent’s name more than a century after the Complainant first used its WALGREENS trademark. The evidence on the record provided by the Complainant with respect to the use of its WALGREENS trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy this Panel that, at the time the disputed domain name was registered, the Respondent most likely knew of the Complainant’s trademark and knew that it had no rights or legitimate interests in the disputed domain name. Furthermore, the evidence on the record provided by the Complainant with respect to the Respondent’s use of the disputed domain name indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion with the Complainant’s trademark as to the affiliation of that website. For all these reasons, this Panel is satisfied that the disputed domain name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <walgreensmailorderpharmacy.com> be transferred to the Complainant.
Andrew F. Christie
Dated: June 15, 2012