WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Walgreen Co. v. Jerry O'Steen
Case No. D2014-0985
1. The Parties
The Complainant is Walgreen Co. of Deerfield, Illinois, United States of America (“USA”), represented by Neal, Gerber & Eisenberg, USA.
The Respondent is Jerry O’Steen, Izagg Incorporated of Cedar Hill, Texas, USA.
2. The Domain Name and Registrar
The disputed domain name <walgreenscloud.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2014. On June 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 11, 2014, the Registrar 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 June 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2014.
The Center appointed Michelle Brownlee as the sole panelist in this matter on July 17, 2014. 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 owns numerous registrations for the trademark WALGREENS and WALGREENS (Stylized) in connection with retail pharmacy services and a wide variety of goods in the USA and other countries throughout the world, including:
United States Registration Number 2,096,551;
United States Registration Number 2,077,524;
United States Registration Number 2,292,545;
United States Registration Number 2,876,500; and
United States Registration Number 3,303,249.
The Domain Name was registered on March 22, 2014.
5. Parties’ Contentions
The Complainant states that it is the largest drugstore chain in the USA, which operates over 8,000 stores in all 50 states and Puerto Rico. The Complainant opened its first store in 1901 and has used the WALGREENS trademark for its goods and services continuously since that time. In its fiscal year 2013, Walgreens had sales of USD 72 billion. The Complainant has garnered high-profile industry awards and rankings, such as its inclusion in Fortune Magazine’s list of the 500 largest companies in the USA and the 500 largest companies in the world. In 2010, the Complainant was ranked sixth in Fortune Magazine’s survey of the most admired companies in the Food and Drug Stores category.
The Complainant advertises its products and services under the WALGREENS mark in a number of ways, including television, radio, print advertising and inserts in newspapers. The Complainant arranges for more than 40 million copies of newspaper insert advertisements to be delivered to consumers every week in Sunday newspapers. The WALGREENS mark is also promoted on web sites maintained by the Complainant, including a web site at the domain name <walgreens.com>. The Complainant submits that its extensive use and promotion of the WALGREENS mark has caused the mark to become famous.
The Complainant contends that the Domain Name is confusingly similar to its WALGREENS mark, that the Respondent has no legitimate rights or legitimate interests in respect of the Domain Name, and that the Respondent has registered and is using the Domain Name in bad faith. The Complainant offers evidence that the Respondent is using the Domain Name to host a website captioned “FOE Family of Eagles, Inc. silver coins” that offers to sell silver coins as an investment opportunity. The Complainant presents additional evidence of consumer complaints against the Respondent and his companies to suggest that the Respondent is engaging in deceptive and fraudulent activities. The Complainant states that it has sent a demand letter to the Respondent on May 20, 2014 requesting transfer of the Domain Name, and it also left a voicemail message at the telephone number listed in the WhoIs record for the Domain Name, but the Respondent did not respond.
The Complainant states that the Respondent's companies "Izagg Inc.", "Izagg Energy" and "Family of Eagles, Inc." have been cited by consumers and entities alike for engaging in deceptive and fraudulent activities.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns rights in the WALGREENS trademark. There are many previous UDRP decisions that find that the pairing of a distinctive trademark with less distinctive terms is confusingly similar to the distinctive trademark. See, e.g., MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions, WIPO Case No. D2007-1140; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 (<christiandiorcosmetics.com> and <christiandiorfashions.com> confusingly similar to CHRISTIAN DIOR); Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032 (<leasinglexus.com> and <lexuselite.com> confusingly similar to LEXUS). Accordingly, the Panel finds that the Domain Name, which pairs the well-known WALGREENS trademark with the generic term “cloud”, is confusingly similar to the Complainant’s WALGREENS trademark and that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name at issue in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue.
In this case, the Panel is satisfied that the Complainant has made out a prima facie case, thus shifting the burden of production to the Respondent to demonstrate any rights or legitimate interests in the Domain Name. The Respondent has not presented evidence that the Respondent used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services; that the Respondent is commonly known by the Domain Name; that the Respondent is making a legitimate noncommercial or fair use of the Domain Name; or in any other way refuted the Complainants’ prima facie case.
The Complainant has presented evidence, which was not refuted by the Respondent, that the Respondent is using the Domain Name in connection with a web site that offers silver coins for sale under the name “Family of Eagles Inc.,” and there is nothing in the web site printout to suggest that the name of the Respondent or the site is “WalgreensCloud.” This activity cannot under the circumstances be considered a bona fide offering of goods or services. Accordingly, the Panel finds that the Respondent does not have any rights to or legitimate interests in the Domain Name and that the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following non-exhaustive circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name at issue primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Panel is satisfied that the Complainant has demonstrated that the Respondent registered and is using the Domain Name in bad faith under paragraph 4(b)(iv) of the Policy. The Complainant has demonstrated that the Respondent is using the Domain Name to promote its silver coin website by creating a likelihood of confusion with the Complainant’s WALGREENS mark and websites which seems to have been subsequently changed to a standard pay-per-click page. This activity presumably results, in this Panel’s view, in commercial gain to the Respondent. Thus, the Panel finds that the Respondent registered and is using the Domain Name in bad faith and thus, that the Complainant has satisfied the third element of the Policy.
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 <walgreenscloud.com> be transferred to the Complainant.
Date: July 31, 2014