WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Walgreen Co. v. Registration Private, Domains By Proxy, LLC / Nitish Maheshwari, The lead Generators
Case No. D2017-1601
1. The Parties
The Complainant is Walgreen Co. of Deerfield, Illinois, United States of America ("United States"), represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Nitish Maheshwari, The lead Generators, Nitish Maheshwari, The lead Generators of Noida, Uttar Pradesh, India.
2. The Domain Name and Registrar
The disputed domain name <walgreens-online.com> 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 August 17, 2017. On August 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 18, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 21, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on August 23, 2017.
The Center verified that the Complaint together with the amended Complaint (hereinafter named both together as 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 12, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 13, 2017.
The Center appointed Adam Samuel as the sole panelist in this matter on September 26, 2017. 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 offers pharmacy and retail store services. It owns a number of United States trademarks for WALGREENS, including no. 1057249 registered on January 25, 1977. It offers its products through the domain name, <walgreens.com>, registered on May 4, 1995.
The disputed domain name was registered on May 14, 2017. The website at the disputed domain name is currently inactive although in the past it has contained a page seeking to sell the Complainant's products.
5. Parties' Contentions
The Complainant owns trademark registrations in various jurisdictions for the name WALGREENS ("the Complainant's trademark"). It is the largest drugstore chain in the United States. It is irrelevant as to whether the Complainant has registered its trademark in the country in which the Respondent resides. The Top-Level Domain does not affect the disputed domain name for the purpose of determining whether it is confusingly similar to the Complainant's trademark. The Respondent has added the generic descriptive term "online" to the Complainant's trademark. The fact that such a term is closely linked and associated with the Complainant's brand and trademark only increases the confusing similarity between the disputed domain name and the Complainant's trademark. The Respondent's addition of a hyphen does nothing to distinguish the disputed domain name from the Complainant's trademark. It does not diminish the confusing similarity between the disputed domain name and the Complainant's trademarks.
The Respondent is not affiliated with the Complainant in any way and has not been given permission by the Complainant to use its trademarks including in domain names. The Respondent is not commonly known by the disputed domain name.
The Respondent has used the disputed domain name to duplicate the Complainant's official website, by copying the design, colour scheme, pictures, text, products and services found in the Complainant's website which suggests that the Respondent intended the disputed domain name to be confusingly similar to the Complainant's trademark as a means of furthering consumer confusion. The Respondent's purpose was to fool unsuspecting visitors into divulging their personal information by registering a new account or logging into their existing Walgreens' account. The Respondent also employed a privacy service to hide its identity.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name consists of the Complainant's trademark and three additional elements: a hyphen, the generic word "online" and the generic Top-Level Domain ("gTLD") ".com". The generic word "online" and the descriptive hyphen before it merely reflect the fact that the Complainant does a considerable amount of its business online. The gTLD is irrelevant here because it does not affect the meaning of the disputed domain name. For all these reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademark.
B. Rights or Legitimate Interests
The Respondent is not called "Walgreens" or anything similar. There is no evidence that the Complainant has ever authorized the Respondent to use its trademark. For these reasons, and in the absence of any response on this point, notably one contradicting the Complainant's claim that the Respondent has never been connected to it in any way, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant's trademark is a made-up name and is known throughout the world as a famous brand. The screenshot of the website to which the dispute domain name resolves shows the Complainant's logo and products of the type associated with it. This demonstrates that the Respondent knew of the Complainant and was using the disputed domain name to exploit the Complainant's trademark in order to sell products to customers who would have assumed that they were dealing with the Complainant.
In this Panel's view, one is left with three possible motives for the Respondent's decision to register and use the disputed domain name: to disrupt the Complainant's relationship with their customers or potential customers, attempt to attract Internet users for potential gain or persuade the Complainant to buy the disputed domain name from him for an amount in excess of the Respondent's out-of-pocket expenses. These all constitute evidence of registration and use in bad faith. The Respondent's motivation may have been more than one of these and perhaps all three.
For these reasons, the Panel concludes that the disputed domain name was registered and is being used in bad faith for the purposes of the Policy. The Panel does not need to reach a decision on any of the other allegations made by the Complainant.
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 <walgreens-online.com> be transferred to the Complainant.
Date: September 28, 2017