The Complainant is Walgreen Co. of Deerfield, Illinois, United States of America (“United States” or “US”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Domain Privacy Service FBO Registrant of United States / Name Redacted1 . 2. The Domain Names and Registrar
The disputed domain names and are registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2017. On August 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name . On the same day, 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 14, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 15, 2017, in which the additional disputed domain name was added. On August 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name . On the same day, 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 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 the Respondent of the Complaint, and the proceedings commenced on August 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 10, 2017. On August 24, 2017, a third party sent an email communication to the Center regarding identity theft. The Center informed the Parties by email of the third party communication on August 30, 2017. The Respondent did not submit any response. The Center proceeded to Panel Appointment on September 11, 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 US trademarks for WALGREENS, including no. 1057249 registered on January 25, 1977. It offers its products through the domain name, , registered on May 4, 1995.
The disputed domain names were registered on June 10, 2017. The Respondent has used (“the first disputed domain name”) to market pharmaceutical products. The website at the disputed domain name, (“the second disputed domain name”), resolves to a blank page. 5. Parties’ Contentions A. Complainant
The Complainant owns trademark registration 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 names for the purpose of determining whether they are confusingly similar to the Complainant’s trademark.
The Respondent has omitted the “s” from and added the generic descriptive term “pharmacy” to the Complainant’s trademark in both disputed domain names. The fact that such a term is closely associated with the Complainant’s brand and trademark only increases the confusing similarity between the disputed domain name and the Complainant’s trademark.
The addition of the word “store” to the first disputed domain name merely reflects the fact that the Complainant’s principal activity is providing shops or “stores” in which it sells its products. In the second disputed domain name, the substitution of the letter “e” for the letter “a” and the removal of the “s” on the end of the Complainant’s trademark make this case a classic example of typosquatting, a device designed to take advantage of Internet users that inadvertently type an incorrect address when seeking to access the trademark owner’s website.
The Respondent is not affiliated with the Complainant’s 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 names.
The Respondent has used the first disputed domain name to host an online pharmacy website that aims to pass itself off as the Complainant but is actually selling products in direct competition to those sold by the Complainant. This 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.
By registering and the way in which it has used the first disputed domain name, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s business. The Respondent has used the first disputed domain name to pass itself off as the Complainant, using the Complainant’s logo and trademark. It is using the first disputed domain name to sell products competing with the Complainant’s offerings.
The registration of the second disputed domain name in itself demonstrates bad faith registration and use since the Respondent demonstrated its knowledge of the Complainant’s trademarks through its registration of the first disputed domain name. Typosquatting is by its nature bad faith use and registration. B. Respondent
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 as regards each of the disputed domain names namely that:
(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 first disputed domain name consists of the Complainant’s trademark less the final “s” and the addition of the generic words “pharmacy” and “store” along with “.com”. The generic words describe a large part of the Complainant’s business. The Complainant’s trademark is a made up word which even without its final “s” remains highly distinctive. The additional generic words do nothing to draw attention away from the near reproduction of the Complainant’s trademark in the first part of the disputed domain name. For these reasons, the first disputed domain name is confusingly similar to the Complainant’s trademark.
The second disputed domain name involves a double misspelling of the Complainant’s trademark by the omission of the letter “s” and the replacement of the letter “a” with an “e”. To this the Respondent has added the word “pharmacy” and the generic Top-Level Domain (“gTLD”) “.com”. The addition of the word “pharmacy” which reflects the Complainant’s principal business activity to the misspelt version of the Complainant’s trademark has the effect of placing the focus on the first part of the second disputed domain name and associating it with the Complainant’s brand of pharmacy to which the name “welgreen” appears close.
For these reasons, the second disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
The Respondent is not called “Walgreen”, “Welgreen” 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 names. C. Registered and Used in Bad Faith
The Respondent demonstrated by its use of the first disputed domain name that it knew all about the Complainant’s business. It appears to have used the Complainant’s trademark intentionally to do business without the Complainant’s authority. The website to which the disputed domain name resolved used to sell pharmaceutical products and displayed the Complainant’s trademark in a sufficiently prominent way as to create confusion as to whether the website belonged in some way to the Complainant.
There are three possible motives for the Respondent’s decision to register and use the disputed domain name in this way: 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.
The Respondent’s knowledge of the Complainant’s brand and trademark illustrated by its use of the first disputed domain name demonstrates that the double typographical error in the spelling of the Complainant’s trademark when registering the second disputed domain name was intentional. This conclusion is reinforced by the addition of the word that describes the Complainant’s business “pharmacy” to the second disputed domain name. For these reasons, the Panel concludes that the second disputed domain name is an example of typosquatting, the registration of a domain name intentionally to disrupt the Complainant’s relationship with their actual or potential customers who may mistype the Complainant’s trademark. This is evidence of registration and use 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 names, and , be transferred to the Complainant.
Adam Samuel
Sole Panelist
Date: September 28, 2017
1 The Respondent may have used the name and contact details of a third party when registering the disputed domain names. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain names which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. B / Name Redacted,WIPO Case No. D2009-1788.
Full & Egal Universal Law Academy