Complainant is Walgreen Co. of Deerfield, Illinois, United States of America (“United States or U.S.”), represented by CSC Digital Brand Services AB, Sweden.
Respondent is Lin yanxiao / Linyanxiao of Guangzhou, Guangdong, China.
The disputed domain names <walgereens.com> and <walgreene.com> are registered with 22net, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2016. On August 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 8, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on August 15, 2016.
On August 12, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On August 15, 2016, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in both Chinese and English of the Complaint, and the proceeding commenced on August 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 9, 2016.
The Center appointed Yijun Tian as the sole panelist in this matter on September 14, 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.
Complainant, Walgreen Co., is a company incorporated in of Deerfield, Illinois, United States. Founded in 1901, Complainant is the United States’ largest drugstore chain, with over 8,000 stores spread across all 50 U.S. states, the District of Columbia, Puerto Rico (Unincorporated Territory of the U.S.) and the U.S. Virgin Islands (Unincorporated Territory of the U.S.). In fiscal year 2015, Complainant had sales of USD 81 billion. In the same year, Complainant served 6.1 million customers daily and employed more than 250,000 people across the United States.
Complainant has exclusive rights in the WALGREENS marks. It is the owner of various trademark registrations that comprise WALGREENS worldwide, including in the United States since 1977, in the European Union since 2004 and in China since 2000 (Annex 1 to the Complaint).
Complainant advertises the products and services offered under the WALGREENS trademark in a variety of ways, such as television, radio, print advertising, newspaper inserts and via its website located at Complainant’s primary domain name <walgreens.com>.
Respondent, Lin yanxiao / Linyanxiao of Guangzhou, Guangdong, China, registered the disputed domain names <walgereens.com> and <walgreene.com> with the Registrar on June 13, 2014 and March 30, 2009 respectively, which are long after the WALGREENS marks were registered.
The websites at the disputed domain names display the message “Redirecting” before taking users to various, unrelated websites, including Complainant’s website at “www.walgreens.com”. Each time a user types in the URL a different website will be displayed. Moreover, the disputed domains names occasionally redirects Internet users to a website offering visitors the opportunity to obtain “exclusive rewards worth at least $50” or “worth at least $129” by filling out a survey about Complainant.
Complainant contends that the disputed domain names <walgereens.com> and <walgreene.com> are identical or confusingly similar to its trademark WALGREENS, the registration and use of which by Complainant precedes the registration of the disputed domain names.
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain names.
Complainant contends that the disputed domain names were registered and are being used in bad faith.
Complainant requests that the disputed domain names <walgereens.com> and <walgreene.com> be transferred to it.
Respondent did not reply to Complainant’s contentions.
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. According to information from the Registrar, the language of the Registration Agreements for the disputed domain names is Chinese. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. However, Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
(a) Complainant is unable to communicate in Chinese and translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings and adjudication of this matter;
(b) The disputed domain names are comprised of Latin characters;
(c) The websites resolved by the disputed domain names features various phrases, in English including “exclusive rewards worth at least $50” and “This is a .net frame work file missing due to some harmfull virus”;
(d) Complainant previously sent a cease-and-desist letter to Respondent, as provided in the Complaint, and Respondent had ample time and opportunity to respond to such letter and request that communications continue in Chinese. Respondent neither issued such a request nor responded to Complainant in any matter whatsoever;
(e) To allow Respondent to dictate the course of this matter and further burden Complainant at this juncture would contravene the spirit of the UDRP and disadvantage Complainant; and
(f) It would unduly burden Complainant to have to arrange and pay for translation where Respondent has demonstrated behavior that disrupts Complainant’s business and has already required Complainant to devote significant time and resources to addressing this instance of abuse.
Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:
“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. Munhyunja, WIPO Case No. D2003-0585).
The Panel has taken into consideration in this case the facts that Complainant is a company from the United States, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the disputed domain names include the Latin characters “walgereens” and “walgreene” rather than the Chinese characters (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).
On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant: (a) the disputed domain names <walgereens.com> and <walgreene.com> are registered in Latin characters, rather than Chinese script; (b) the websites at the disputed domain names resolve to two English-based websites; 1 (c) the websites appear to have been directed to users worldwide (particularly English speakers) rather than Chinese speakers; (d) the Center has notified Respondent of the proceeding in both Chinese and English; (e) the Center informed Respondent that it would accept a Response in either English or Chinese.
Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name be transferred:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of paragraphs 4(a), (b), (c) of the Policy, the Panel concludes as follows:
The disputed domain name <walgereens.com> differs from Complainant’s trademark WALGREENS by only one letter – Respondent has changed the spelling of “walgreens” by one letter (inserting an extra “e”). The disputed domain name <walgreene.com> differs from Complainant’s trademark WALGREENS by only one letter also – Respondent has changed the spelling of “walgreens” by one letter (replacing the “s” with an “e”). These do not eliminate the confusing similarity between Complainant’s registered trademark and the disputed domain names.
Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
Moreover, as to “typosquatting”, paragraph 1.10 of WIPO Overview 2.0 states:
“A domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name.”
As the disputed domain names are a one letter typographical error of Complainant’s WALGREENS marks, the Panel finds the disputed domain names must be considered a prototypical example of typosquatting.
Thus, the Panel finds that the one letter typographical error of Complainant’s WALGREENS marks is not sufficient to negate the confusing similarity between the disputed domain names and the WALGREENS marks.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain names:
(i) use of, or preparations to use, the disputed domain names in connection with a bona fide offering of goods or services;
(ii) the fact that Respondent has commonly been known by the disputed domain names; or
(iii) legitimate noncommercial or fair use of the disputed domain names.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and the cases cited therein).
Complainant has rights in the WALGREENS marks, including registrations in the United States (since 1977) and in China (since 2000), which precede Respondent’s registration of the disputed domain names in 2009 and 2014 respectively.
According to the Complainant, founded in 1901, Complainant is the United States’ largest drugstore chain, with over 8,000 stores spread across all 50 U.S. states, the District of Columbia, Puerto Rico (Unincorporated Territory of the U.S.) and the U.S. Virgin Islands (Unincorporated Territory of the U.S.). In fiscal year 2015, Complainant had sales of USD 81 billion and employed more than 250,000 people across the United States.
Moreover, Respondent is not an authorized dealer of WALGREENS branded products or services. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain names in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain names or a reason to justify the choice of the words “walgereens” and “walgreene” in its business operation or the use of the WALGREENS marks and design on its websites (without disclaimer or other clarifying details). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the WALGREENS marks or to apply for or use any domain name incorporating the WALGREENS marks.
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain names. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain names. Respondent registered the disputed domain names in 2009 and 2014 respectively, after Complainant’s registrations of the WALGREENS marks (in the United States since 1977 and in China since 2000). The disputed domain names are confusingly similar to Complainant’s WALGREENS marks.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain names. By contrast, according to the information provided by Complainant, the websites at the disputed domain names display the message “Redirecting” before taking users to various, unrelated websites, including Complainant’s website at “www.walgreens.com”. Each time a user types in the URL a different website will be displayed. Moreover, the disputed domains names occasionally redirects Internet users to a website offering visitors the opportunity to obtain “exclusive rewards worth at least $50” or “worth at least $129” by filling out a survey about Complainant.
The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain names. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain names in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product or service on Respondent’s website or location.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain names in bad faith.
a) Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the WALGREENS marks with regard to its products and services. Complainant has registered its WALGREENS marks in the United States since 1977 and in China since 2000. Based on the information provided by Complainant, Complainant advertises the products and services offered under the WALGREENS trademark in a variety of ways, such as television, radio, print advertising, newspaper inserts and via its website located at Complainant’s primary domain name <walgreens.com>. Moreover, the websites resolved by the disputed domain names have been used to redirect users to various unrelated websites, including the website attracting users to complete an online survey, which offers visitors the opportunity to obtain “exclusive rewards worth at least $50” or “worth at least $129” by filling out a survey about Complainant.
Respondent would likely not have provided an online survey about Complainant if it was unaware of Complainant’s reputation. In the other words, it is not conceivable for this Panel that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain names. The Panel therefore finds that the WALGREENS mark is not one that a trader could legitimately adopt other than for the purpose of creating an impression of an association with Complainant (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Thus, the Panel concludes that the disputed domain names were registered in bad faith with the intent to create an impression of an association with Complainant’s WALGREENS branded services.
b) Use in Bad Faith
Complainant has adduced evidence to prove that by using the confusingly similar disputed domain names, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites” by providing links to unrelated websites, including the Complainant’s website, as per paragraph 4(b)(iv) of the Policy.
To establish an “intention for commercial gain” for the purpose of the Policy, evidence is required to indicate that it is “more likely than not” that intention existed (See The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Given the widespread reputation of the WALGREENS marks as well as the content on the websites at the disputed domain names (link to Complainant’s website and an online survey about Complainant), the Panel finds that the public is likely to be confused as to the source, sponsorship, affiliation or endorsement of the websites to which the disputed domain names are resolved. In other words, Respondent has through the use of confusingly similar domain names created a likelihood of confusion with the WALGREENS marks. The Panel therefore concludes that the disputed domain names are used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use the disputed domain names which are confusingly similar to Complainant’s trademark, intended to free ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of sufficient evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain names and the conduct of Respondent as far as the websites to which the disputed domain names resolve are indicative of registration and use of the disputed domain names in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.
For all 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 <walgereens.com> and <walgreene.com> be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: September 28, 2016
1 “www.walgereens.com” and “www.walgreene.com”.