Complainant is Walgreen Co. of Deerfield, Illinois, United States of America (hereinafter referred to as "Complainant"), represented by CSC Digital Brand Services AB, Sweden.
Respondent is Whois Agent / Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America / Joe Melody of Pleasant, South Carolina, United States of America (hereinafter referred to as "Respondent.") 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 15, 2016. On March 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 17, 2016, 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 Complainant on March 21, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 25, 2016.
The Center verified that the Complaint together with 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 24, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 26, 2016.
The Center appointed M. Scott Donahey as the sole panelist in this matter on May 3, 2016. 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
Complainant is the owner of numerous trademark and service mark registrations for the mark WALGREEN'S, the earliest of which issued on January 25, 1977. Complaint, annex 1.
Complainant has over 8,000 retail outlets in the United States and its territories. As of August 31, 2015, approximately 76% of the population of the United States of America ("United States") lived within five miles of a Walgreen's retail dispensary. Complainant has used its service mark in commerce continuously for over 100 years. In the fiscal year 2015, Complainant had sales of more than USD 51 billion, served 6.1 million customers daily, and employed more than 250,000 people. Complainant has spent substantial sums in the promotion of its goods and services. Complaint, annexes 6.1, 6.2, 6.3, and 6.4.
Complainant's domain name resolves to a web site at which a customer can fulfill prescriptions and order merchandise. From October 2014 to October 2015 Complainant's web site had over ten million unique visitors per month. Complaint, annexes 4, 5, and 8.
The disputed domain name was first registered on November 8, 2014. Complaint, annex 2. The disputed domain name does not resolve to an active web site. Respondent has used the disputed domain name to generate emails that had the appearance of coming from Complainant and purported to place orders for products and requested information concerning pricing and availability of the products ordered. The email "orders" indicated that they came from "Joe Melody, Purchasing Manager, Walgreen Co." at the address of Complainant's corporate headquarters in Deerfield, Illinois.
Complainant filed a phishing takedown request with the Registrar. Complaint, annex 9.
Respondent is currently using the disputed domain name to redirect users to a web site whose page is blank. 5. Parties' Contentions A. Complainant
Complainant alleges that the disputed domain name is confusingly similar to Complainant's WALGREENS mark, that Respondent has no right or legitimate interest in respect of the domain name in that Respondent is not sponsored by nor affiliated with Complainant in any way, nor has Complainant given Respondent permission to uses its marks in any manner. Finally, Complainant asserts that Respondent has registered and is using the domain name in bad faith, in that Complainant's trademark and service mark is readily recognized in the United States, and indeed, around the world, and was so at the time Respondent registered the disputed domain name. Moreover, Respondent has used the disputed domain name to generate emails which lead email recipients to believe that Complainant was interested in placing orders with them. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) that the disputed domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) that the respondent has no rights or legitimate interests in respect of the disputed domain name; and,
3) that 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 Complainant's famous mark to which has been added a hyphen and the string "corp," which is regularly used to denote a United States business adopting the corporate form.
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant's registered trademark and service mark. B. Rights or Legitimate Interests
The consensus view of WIPO UDRP panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore, a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP."
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview, 2.0"), paragraph 2.1.
In the present case, Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Respondent has used the disputed domain name to resolve to a blank web site which it has used as a base for emails which have been sent under the address of Complainant at its corporate headquarters, and which emails purportedly originate from Complainant's "Purchasing Manager."
Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith. 7. Decision
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, , be transferred to the Complainant.
M. Scott Donahey
Sole Panelist
Date: May 9, 2016
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