Walgreen Co. v jianwen liu

WIPO Case No. D2022-3690

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Walgreen Co. v. jianwen liu

Case No. D2022-3690

1. The Parties

The Complainant is Walgreen Co., United States of America (“United States” or “U.S.”), represented by

Winterfeldt IP Group PLLC, United States.

The Respondent is jianwen liu, China.

2. The Domain Name and Registrar

The disputed domain name <walgreensewallet.com> is registered with Hong Kong Juming Network

Technology Co., Ltd (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2022. On October 4, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 6, 2022, 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 (Redacted for privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 10, 2022 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 October 14, 2022.

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 October 18, 2022. In accordance with the Rules, paragraph
5, the due date for Response was November 7, 2022. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on November 8, 2022.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on July 7, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The Complainant operates one of the largest retail pharmacy chains in the United States, with approximately valuable U.S. brand by Brand Finance in 2022.

9,000 retail stores across the United States. The Complainant employs more than 240,000 people. The

The Complainant owns a large, international portfolio of trademarks for WALGREENS, including, for example, United States trademark registration number 1057249, registered on January 25, 1977 and United States trademark registration number 2077524, registered on July 8, 1997. The Complainant furthermore has registered trademarks for WALGREENS in China, where the Respondent resides (such as Chinese trademark registration number 12188931, registered October 7, 2017). The Complainant also has a strong online presence, including through the websites located at its official domain names, including <walgreens.com>.

The disputed domain name was registered on July 13, 2022. The Complainant submits evidence that the disputed domain name directed to an active website redirecting Internet users to a website requesting registration or login for the provision of purported mobile lottery services. However, on the date of this Decision, the disputed domain name directs to an inactive webpage.

5. Parties’ Contentions

A. Complainant

The Complainant essentially contends that the disputed domain name is confusingly similar to its trademarks
for WALGREENS, that the Respondent has no rights or legitimate interests in respect of the disputed

domain name, and that the disputed domain name was registered, and is being used in bad faith.

The Complainant claims that its trademarks are distinctive, used intensively and globally famous, and refers
to prior UDRP decisions which have recognized that the Complainant’s trademarks for WALGREENS are
well-known trademarks, for instance Walgreen Co. v. Registration Private, Domains By Proxy, LLC / Nitish
Masheshwari, The lead Generators, WIPO Case No. D2017-1601. The Complainant particularly submits
that that there are no justifications for the use of its trademarks in the disputed domain name and that the
Respondent is not making any bona fide use of the disputed domain name. The Complainant also argues
that the Respondent has linked the disputed domain name to a website providing commercial lottery
services, which, it argues, means that the Respondent is intentionally attracting Internet users for commercial
gain to the Respondent’s website, and contends that such use does not confer any rights or legitimate

interests in respect of the disputed domain name and constitutes use in bad faith.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy requires the Complainant to prove three elements:

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(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.

Based on the evidence and arguments submitted, the Panel’s findings are as follows:

A. Identical or Confusingly Similar

The Panel finds that the Complainant has shown that it has rights in the mark WALGREENS based on its intensive use and registration of the same as a trademark in a number of jurisdictions.

Moreover, as to confusing similarity, the disputed domain name consists of the Complainant’s registered trademark WALGREENS, followed by the word “ewallet”. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, states: “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant

mark is recognizable in the domain name, the domain name will normally be considered confusingly similar entirety of the Complainant’s trademark, as its clearly recognizable dominant feature. The addition of the word “ewallet” after the Complainant’s trademark does not avoid a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark, and that the Complainant has satisfied the requirements of the first element under the Policy.

to that mark for purposes of UDRP standing” (see also Wal-Mart Stores, Inc. v. Richard McLeod d/b/a For

B. Rights or Legitimate Interests

On the basis of the evidence and arguments submitted, the Panel finds that the Complainant makes out a prima facie case that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, is not a bona fide provider of goods or services under the disputed

domain name and is not making a legitimate noncommercial or fair use of the disputed domain name. The Panel also notes that the Respondent is not commonly known by the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO

Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply.

Moreover, upon review of the facts and the Complainant’s evidence, the Panel notes that the disputed domain name directed to an active website redirecting Internet users to a website requesting registration or login for the provision of purported mobile lottery services. In the Panel’s view, no rights or legitimate interests derive from using a third party trademark to divert Internet users for commercial gain to a lottery and/or gambling website, see in this regard also several prior UDRP decisions such as OSRAM GmbH v. Xue Chun, WIPO Case No. D2019-3171; and Barnes Europe Consulting Kft., and Heidi Barnes-Watson v. jianhua Wang, WIPO Case No. D2022-3059.

However, the Panel notes that on the date of this decision, the disputed domain name directs to an inactive webpage. In this regard, the Panel finds that holding a domain name passively, without making any use of it, also does not confer any rights or legitimate interests in the disputed domain name on the Respondent (see in this regard earlier UDRP decisions such as Bollore SE v. 赵竹飞 (Zhao Zhu Fei), WIPO Case No. D2020-0691 and Vente-Privee.Com and Vente-Privee.com IP S.à.r.l. v. 崔郡 (jun cui), WIPO Case No. D2021-1685).

On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate

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interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the

requirements of the second element under the Policy.

C. Registered and Used in Bad Faith

The Complainant’s trademark registrations predate the disputed domain name. The Panel finds that the registration of the disputed domain name, which is confusingly similar to the Complainant’s well-known trademarks for WALGREENS, is clearly intended to mislead and divert consumers away from the Complainant’s official website to the Respondent’s web website which may be linked to the disputed domain name by the Respondent. The Panel has also considered that the Complainant has a strong Internet presence and has established a business partnership with the Alibaba Group to provide the Alipay payment option to Chinese consumers in the Complainant’s stores and that, as the Complainant points out, the website which was previously linked to the disputed domain name seemed to copy that feature. Furthermore, previous panels under the UDRP have also recognized the WALGREENS marks as internationally well-known (see for instance Walgreen Co. v. Registration Private, Domains By Proxy, LLC / Nitish Masheshwari, The lead Generators, WIPO Case No. D2017-1601). Based on these facts, the Panel finds that the Respondent’s registration of the disputed domain name constitutes an intentional attempt to target the Complainant’s well-known trademark, of which the Respondent could not reasonably be unaware. Furthermore, even a cursory Internet search at the time of registration of the disputed domain name would have shown that the Complainant owned the registered trademarks in WALGREENS and uses them extensively. Based on the above elements, the Panel finds that the registration of the disputed domain name was obtained in bad faith.

As to use of the disputed domain name in bad faith, the disputed domain name currently links to an inactive
website. In this regard, the WIPO Overview 3.0, section 3.3 provides: “From the inception of the UDRP,
panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not
prevent a finding of bad faith under the doctrine of passive holding”. The Panel has reviewed all elements of
this case, and in particular: the confusing similarity of the disputed domain name to the Complainant’s
trademarks, the high degree of distinctiveness and international fame of the Complainant’s trademarks, and
the fact that, based on the evidence in the procedure, the Respondent had initially linked the disputed
domain name to a registration and login page for online lottery services, which means that the Respondent
was intentionally attracting Internet users for commercial gain to the previous website associated with the
disputed domain name, by creating consumer confusion between the website associated with the disputed
domain name and the Complainant’s trademarks. Such acts constitute direct evidence of the Respondent’s
bad faith under paragraphs 4(b)(iii) and (iv) of the Policy. The preceding elements lead the Panel to
conclude that the Respondent is using the disputed domain name in bad faith. The Panel therefore finds
that it has been sufficiently demonstrated that the Respondent has used, and is using the disputed domain
name in bad faith.

Finally, the Respondent failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under the Policy.

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 <walgreensewallet.com> be transferred to the Complainant.

/Deanna Wong Wai Man/
Deanna Wong Wai Man
Sole Panelist
Date: July 14, 2023