Walgreen Co. v Jiri Capcuch

WIPO Case No. D2023-3692

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Walgreen Co. v. Jiri Capcuch

Case No. D2023-3692

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 Jiri Capcuch, Czech Republic.

2. The Domain Name and Registrar

The disputed domain name <walgreenweeklyad.com> (the “Disputed Domain Name”) is registered with

Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2023. On September 4, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 5, 2023, 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 September 6, 2023, 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 September 7, 2023.

On September 6, 2023, the Center transmitted an email to the Registrar regarding the Disputed Domain Name very next expiry and requesting the Registrar to place it in Registrar LOCK status until the UDRP proceedings are concluded. On September 8, 2023, the Center notified to the Parties and the Registrar that

certain action including payment of a renewal needs to be taken by one of the Parties to the dispute to
ensure that Disputed Domain Name remains active so that the administrative procedure can continue as

required under the UDRP. On September 24, 2023, the Complainant renewed the Disputed Domain Name.

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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 27, 2023. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2023.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on October 24, 2023. 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 operates one of the largest retail pharmacy chains in the US, with approximately 9 000 retail stores. The Complainant provides pharmacy and healthcare-related services through thousands of retail drugstores, including prescription medicine refills, on-site pharmacy services, vaccinations, and

immunizations.

The Complainant also provides pharmacy and healthcare-related services through its <walgreens.com> domain name since 1995.

The Complainant is the owner of several registered trademarks on the term “WALGREENS” in many jurisdictions throughout the world (the “WALGREENS Trademarks”), including:

- U.S. word trademark WALGREENS registration no. 1057249, registered on January 25, 1977, and
regularly renewed, in class 42;
- U.S. word trademark WALGREENS registration no. 2077524, registered on July 8, 1997, and regularly
renewed, in class 42;
- U.S. word trademark WALGREENS registration no. 2096551, registered on September 16, 1997, and
regularly renewed, in classes 3, 5, 9, 10, 11, 21, 25 and 42;
- U.S. trademark WALGREENS SPECIALTY PHARMACY registration no. 3456190, registered on July 1,
2008, in class 35;

- U.S. trademark registration no. 3303249, registered on October 2, 2007, in class

35; and

- International trademark WALGREENS registration no. 1100522, registered on August 19, 2011, in class 42.

The Disputed Domain Name was registered on September 12, 2022, and, resolved to rotating content, including an English-language Rakuten webpage offering coupons and promo codes, a blank webpage, and a webpage with fake virus warnings and pop-up malware (the “Respondent’s Website”).

5. Parties’ Contentions

A. Complainant

First, the Complainant states that the Disputed Domain Name is confusingly similar to its WALGREENS addition of the terms “weekly” and “ad” and the generic Top-Level Domain (“gTLD”) “.com”.

Trademarks, which it incorporates entirely. The Complainant indicates that the only difference between the
Then the Complainant states that the Respondent has no rights or legitimate interests in respect of the
Disputed Domain Name. The Complainant indicates that the Respondent has never been authorized by the
Complainant to use the WALGREENS Trademarks in any manner and that the Disputed Domain Name was
registered well after the Complainant had registered the WALGREENS Trademarks. In addition, the
Complainant explains that the Disputed Domain Name does not reflect the Respondent’s common name.

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Moreover, the Complainant points out that the Respondent is using the Disputed Domain Name to infringe and cybersquat upon the Complainant’s rights in the WALGREENS Trademarks. The Complainant finally adds that the use of the Disputed Domain Name through the Respondent’s Website does not constitute any

bona fide

legitimate sale of goods or services or legitimate noncommercial or fair use. Indeed, the goodwill associated with the WALGREENS Trademarks used in the Disputed Domain Name to draw Internet users to the Respondent’s Website and generate revenue, including via fake virus warnings, and to draw users to websites distributing malware.

Finally, the Complainant states that the Disputed Domain Name was registered and is being used in bad faith. The Complainant explains that the Respondent has engaged in a bad faith pattern of preventing trademark owners from reflecting their marks in corresponding domain names, having registered, and used numerous domain names in similar fashion. The Complainant adds that the Respondent has been involved in at least six prior UDRP proceedings in which the Respondent was found to have registered numerous domains in bad faith. Furthermore, the Complainant considers that the Respondent used the Disputed Domain Name to redirect Internet users to rotating website content featuring the Complainant’s WALGREENS Trademarks, offering Walgreens coupons, thus generating revenue, which unfairly trades on the goodwill associated with the Complainant’s WALGREENS Trademarks, and websites with fake virus warnings and pop-up malware. Accordingly, the Respondent disrupted the Complainant’s business by diverting business and prospective business away from the Complainant and its goods and services to towards websites which generate revenue for the Respondent, and which illegally distribute malware. The Complainant also adds that the Respondent’s Website intended to attract Internet users for commercial gain by creating a likelihood of confusion with the WALGREENS Trademarks. Finally, the Complainant underlines that there is no evidence of any conceivable good faith use of the Disputed Domain Name and that the Respondent’s activity clearly constitutes bad faith under the Policy.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the Complainant shall prove the following three elements:

(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

According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

First of all, the Panel finds that the Complainant has provided evidence that it has rights in the WALGREENS
Trademarks.

Then, the Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.

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This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. 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 to that mark for purposes of the UDRP (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)).

The Panel finds that the Disputed Domain Name is composed of:

- the WALGREENS Trademark with removal of the last letter “s”;
- the additional terms “weekly” and “ad”; and
- the gTLD “.com.”

According to prior UDRP panel decisions, it is sufficient that the domain name incorporates the entirety of a trademark, in order to consider the domain name as confusingly similar to that mark for purposes of UDRP standing.

Moreover, a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element (see section 1.9 of the WIPO Overview 3.0). Here, the Panel considers that the removal of the last letter of the WALGREENS Trademark does not prevent a finding of confusing similarity.

Furthermore, the mere addition of a term to a trademark does not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview 3.0; Hoffmann-La Roche Inc., Roche Products Limited v. Vladimir Ulyanov, WIPO Case No. D2011-1474; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No.

D2002-0615; Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150; and RapidShare
AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059).

Therefore, the Panel considers that the combination of the WALGREENS Trademark to the terms “weekly”, and “ad” which may constitute the abbreviation of the word “advertising”, does not prevent the finding of confusingly similarity between the Disputed Domain Name and the Complainant’s trademarks.

Lastly, the Panel adds that the gTLD, such as “.com”, in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark. See section 1.11.1 of the WIPO Overview 3.0

Finally, the Panefinds that the Disputed Domain Name is confusingly similar to the WALGREENS

Trademarks, and that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name.

These circumstances are:

(i)      before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

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(ii)     the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii)   the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

According to prior UDRP panel decisions, it is sufficient that a complainant shows prima facie that a respondent lacks rights or legitimate interests in a domain name in order to shift the burden of production to the respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Indeed, while the overall burden of proof in a UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the

knowledge or control of the respondent. As such, where a complainant makes out prima facie that a
respondent lacks rights or legitimate interests, the burden of production on this element shifts to the
respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain
name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to
have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).

According to the Panel, the Complainant has shown prima facie case that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

Indeed, it appears that the Complainant has not given any license or authorization of any kind to the Respondent to use the WALGREENS Trademarks. Moreover, the Panel finds that there is no evidence that the Respondent is commonly known by the Disputed Domain Name or that the Respondent has the intent to use the Disputed Domain Name in connection with a bona fide offering of goods or services.

On the contrary, the Disputed Domain Name resolved to rotating content, including an English-language webpage offering coupons and promo codes, a blank webpage, and a webpage with fake virus warnings and pop-up malware, and, according to prior UDRP panel decisions, panels have categorically held that the use of a domain name for illegal activity (e.g., distributing malware, impersonation/passing off) can never confer rights or legitimate interests on a respondent (see section 2.13.1 of the WIPO Overview 3.0).

Finally, the Respondent did not reply to the Complainant’s contentions, and consequently, did not rebut the

Complainant’s prima facie case.

Therefore, according to the Policy, paragraphs 4(a)(ii) and 4(c), the Panel considers that the Complainant
has established that the Respondent does not have any rights or legitimate interests in the Disputed Domain

Name.

C. Registered and Used in Bad Faith

According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the Disputed Domain Name has been registered and is being used in bad faith.

Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:

(i)      circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable

consideration in excess of the respondent’s documented out-of-pocket costs directly related to the
domain name; or

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(ii)     the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii)   the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)   by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

First, according to prior UDRP decisions, the mere registration of a domain name that is identical or confusingly similar to a widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith (see section 3.1.4 of the WIPO Overview 3.0). Indeed, the Panel considers that it is established that the WALGREENS Trademarks were registered and used well before the registration of the Disputed Domain Name. By removing the last letter of the WALGREENS Trademarks, the Respondent has intentionally attempted to confuse Internet users and capitalized on the fame of the Complainant’s WALGREENS Trademarks. This constitutes an act of typosquatting that must be considered as a bad faith registration of the Disputed Domain Name.

Moreover, as discussed in section 6.B above, the Panel points out the fact that the Disputed Domain Name redirected visitors to a variety of unrelated websites, including websites that appear to be designed to distribute malware or otherwise endanger Internet users also constitutes a use in bad faith.

The Panel points out that this use of the Disputed Domain Name by the Respondent demonstrates that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s WALGREENS Trademarks as to the source, sponsorship, affiliation, or endorsement.

Furthermore, the Panel notes that the Respondent has engaged in a pattern of abusive domain name
registration. (See for example previous recent decisions involving the same Respondent Verizon Trademark
Services LLC v. Jiri Capcuch, WIPO Case No. D2023-1621; France Télévisions v. Jiri Capcuch, WIPO

Case No. D2023-1503 and Meta Platforms, Inc. v. Jiri Capcuch, WIPO Case No. D2023-1258).

Finally, the Respondent has not provided any response to the Complainant’s contentions.

Therefore, in view of all the circumstances of this case, the Panel holds that the Respondent has registered and is using the Disputed Domain Name in bad faith according to the Policy, paragraphs 4(a)(iii) and 4(b).

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, <walgreenweeklyad.com>, be transferred to the Complainant.

/Christiane Féral-Schuhl/
Christiane Féral-Schuhl
Sole Panelist
Date: October 30, 2023