WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alliance Unichem IP Limited v. Domain Administrator, Fundacion Privacy Services LTD
Case No. D2020-2629
1. The Parties
The Complainant is Alliance Unichem IP Limited, United Kingdom (“UK”), represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.
2. The Domain Name and Registrar
The disputed domain name <alliance-unichem.net> (“Disputed Domain Name”) is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2020. On October 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 12, 2020, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2020.
The Center appointed Martin Schwimmer as the sole panelist in this matter on November 9, 2020. 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, Alliance Unichem IP Limited owns registrations for the ALLIANCE UNICHEM trademark, including the European Union Trademark No. 004576385 for ALLIANCE UNICHEM registered on April 25, 2014.
The Complainant is a wholly owned subsidiary of Walgreen Boots Alliance, a large holding company for pharmaceutical manufacturing, wholesale, distributorship, and retail companies. The Complainant is a successor-in-interest to trademark rights from, among other entities, a U.K. company, Unichem, founded in 1938. Unichem merged with the Alliance Sante Group in 1997 to form Alliance Unichem plc. “Alliance Unichem” was the trading name of the merged company until 2006 when it merged with the Boots Group in 2006. Although the Alliance Unichem trading name appears to have been retired in favor of the mark ALLIANCE HEALTHCARE, the Alliance Unichem corporate name still appears to the public, and registrations for the ALLIANCE UNICHEM trademark are maintained.
The Respondent registered the Disputed Domain Name on July 17, 2020. The Disputed Domain Name resolves to pay-per-click page displaying links to keyword advertisements, using keywords competitive with or related to the goods and services of the Complainant. The Disputed Domain Name is offered for sale on the “Sedo” domain name market.
5. Parties’ Contentions
The Complainant is the owner of trademark registrations across various jurisdictions covering the ALLIANCE UNICHEM trademark.
One of the Complainant’s predecessors-in-interest, Unichem, was founded in 1938. In 1997, Unichem merged with Alliance Sante Group to form Alliance Unichem plc. Alliance Unichem merged with Boots, plc., to form Alliance Boots. Subsequent mergers led to the present day Walgreens Boots Alliance, the owner of the Complainant. The trademark ALLIANCE HEALTHCARE was adopted for various businesses related to the Complainant, however the Trademark is still displayed to the public.
The Second Level Domain of the Disputed Domain Name consists solely of the Complainant’s ALLIANCE UNICHEM trademark, resulting in a domain name that is identical to the Trademark but for a hyphen, thus meeting the requirements under 4(a)(i) of the Policy.
The Respondent is not sponsored by or affiliated with the Complainant in any way. Furthermore, the Complainant has not given the Respondent license, authorization or permission to use the Complainant’s trademark in any manner, including in domain names. “In the absence of any license or permission from the Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the Disputed Domain Name could reasonably be claimed.” See Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875. The Respondent is not commonly known by the Disputed Domain Name, which evinces a lack of rights or legitimate interests.
In the instant case, the pertinent WhoIsinformation identifies the Registrant as “Domain Administrator/Fundacion Privacy Services LTD”, which does not resemble the Disputed Domain Name in any manner. Thus, where no evidence, including the WhoIs record for the Disputed Domain Name, suggests that the Respondent is commonly known by the Disputed Domain Name, then the Respondent cannot be regarded as having acquired rights to or legitimate interests in the Disputed Domain Name within the meaning of c4(c)(ii).
The Respondent is currently using the Disputed Domain Name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with the Complainant's business. For instance, the website at which the Disputed Domain Name resolves has featured or features multiple third-party links for “Invisalign Payment Plan”, “Online Medical Coding and Billing Course”, and “Wholesale Distributors”.
Presumably, the Respondent receives pay-per-click fees from the linked websites that are listed at the Disputed Domain Name’s website.
The Respondent registered the Disputed Domain Name shortly after the Complainant inadvertently allowed the Disputed Domain Name to lapse, which serves as further evidence of the Respondent’s lack of rights or legitimate interests. The Disputed Domain Name was registered and owned by the Complainant’s UK retail pharmacy business, Moss Pharmacy (previously known as Alliance Pharmacy), from August 21, 2001 to August 21, 2019.
The Disputed Domain Name is also being offered for sale at “Sedo” for a minimum offer of USD 899, an amount that far exceeds the Respondent’s out-of-pocket expenses in registering the domain, which further evidences the Respondent’s lack of rights and legitimate interests.
The Complainant has been in business for over 80 years and is considered as one of the UK's leading pharmaceutical wholesalers and distributors. Further, performing searches across a number of Internet search engines for “Alliance Unichem” returns multiple links referencing the Complainant and its business.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has submitted evidence of its ownership of a registration for the ALLIANCE UNICHEM mark. As such, the Complainant has established that it has rights in the trademark. See section 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) which states “If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.”.
The Complainant has also established that the Disputed Domain Name is confusingly similar to this mark in that it incorporates the mark in its entirety. See, e.g., Starwood Hotels & Resorts Worldwide, Inc., Sheraton International IP, LLC and The Sheraton LLC v. Robert Tokich, WIPO Case No. D2015-0927. The addition of a hyphen and of the generic Top-Level Domain (“gTLD”) “.net” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Trademark. See section 1.8. of the WIPO Overview 3.0 which states that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.
The Panel therefore concludes that the Disputed Domain Name is confusingly similar to the Complainant’s ALLIANCE UNICHEM mark. Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made the requisite prima facie showing that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Complainant has demonstrated that it owns the Trademark and that it has not granted the Respondent any right to use the Trademark. The Complainant further alleges that the Respondent has not been commonly known by, nor acquired trademark rights in, the ALLIANCE UNICHEM mark. The Complainant also alleges that the Respondent did not use the Disputed Domain Name for legitimate noncommercial or fair use purposes. Instead, the website to which the Disputed Domain Name resolves to pay-per-click page displaying advertisement services competitive to goods and services of the Complainant.
The Complainant also asserts that it has previously owned the Disputed Domain Name, and that the Respondent registered it when the Complainant inadvertently allowed its registration to lapse. Previous UDRP panels have held that where a domain name belonging to a well-known company has inadvertently lapsed and subsequently been registered by an unrelated third-party, this may evince a lack of rights and legitimate interests. See Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319 (Finding that the respondent could not rely on equitable doctrines under the Policy to defend its registration of the disputed domain name after the registration was inadvertently permitted to lapse by the complainant, noting that “Respondent was aware of the Complainant’s well-known business and its mark and intended to exploit the mark”).
For these reasons, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name, which has not been rebutted by the Respondent to avoid such a finding. Therefore, the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Trademark is a unique combination of the dictionary term ‘alliance’ and the coined term ‘unichem,’ which mark had been used as the corporate and trading name of a worldwide corporation. There is no plausible good-faith reason or logic for the Respondent to have registered the Disputed Domain Name, and “…the only feasible explanation for Respondent’s registration of the disputed domain name is that Respondent intends to cause confusion, mistake and deception by means of the disputed domain name. Accordingly, any use of the disputed domain name for an actual website could only be in bad faith.” See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Additionally, the Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which previous UDRP panels have held serves as further evidence of bad faith registration and use. See Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy, Inc and Sabatino Andreoni, WIPO Case No. D2003-0230. See also section 3.6 of the WIPO Overview 3.0, which states that “Panels have also viewed a respondent’s use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant as an indication of bad faith.”
Furthermore, the Respondent has ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding (see Annex 9 of the complaint). Previous UDRP panels have held that failure to respond to a cease-and desist letter may properly be considered a factor in finding bad faith registration and use of a domain name. See Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330 stating that “failure to positively respond to a demand letter provides “strong support for a determination of ‘bad faith’ registration and use”. See also RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242 (finding bad faith where “The Complainant alleges that it sent numerous cease and desist letters to [r]espondent without receiving a response”.
By using the Complainant’s unique and distinctive trademark as the sole element of the Disputed Domain Name, the Respondent creates a risk of confusion that the Internet users of the website will initially expect either to access a website operated by the Complainant, or that the advertisements promoted on the website are associated with or endorsed by the Complainant.
The Panel therefore concludes that the Respondent has registered and used the Disputed Domain Name in bad faith and therefore, the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 Disputed Domain Name <alliance-unichem.net> be transferred to the Complainant.
Date: November 23, 2020