Albertson's, Inc v. Vinamy
Claim Number: FA0109000100123
Complainant is Albertson's Inc., Boise, ID ("Complainant") represented by David J. Steele, of Christie, Parker & Hale LLP. Respondent is Vinamy, Batavia, IL ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jewel-osco.com>, registered with Network Solutions.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 24, 2001; the Forum received a hard copy of the Complaint on September 24, 2001.
On September 25, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <jewel-osco.com> is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 26, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 16, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On October 22, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from the Respondent to the Complainant.
The <jewel-osco.com> domain name is identical to Complainant’s JEWEL-OSCO mark.
Respondent has no rights or legitimate interests in respect to <jewel-osco.com>.
Respondent registered <jewel-osco.com> in bad faith.
No Response was received.
Complainant has used the JEWEL-OSCO trade and service mark since 1961. Complainant has 191 stores in the Midwest under the trademark. Complainant also has 4 U.S. trademark registrations for the JEWEL-OSCO mark.
Further, Complainant operates a Jewel-Osco website at <jewelosco.com> where consumers can shop online and receive store information.
Respondent registered the domain name at issue on December 9, 1999. There is a Jewel-Osco store in Respondent’s hometown of Batavia, Ill. Respondent’s site at the <jewel-osco.com> location is a website relating to a "program" to raise funds for police departments in order to assist in buying equipment for police officers. The site makes no mention of either "jewel", "osco", or "jewel-osco".
Finally, Respondent offered to sell the domain name at issue to Complainant for $10,000.
Paragraph 15(a) of the Rules instructs this Panel to "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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The <jewel-osco.com> domain name is identical to Complainant’s JEWEL-OSCO mark. See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark); see also The Fed’n of Gay Games, Inc. v. Hodgson & Scanlon, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to Complainant's registered trademark GAY GAMES); see also Amherst v. IFC Corp., FA 96768 (Nat. Arb. Forum Apr. 3, 2001) (finding that Respondent’s domain name <customcommerce.com> is identical to Complainant’s CUSTOM COMMERCE trademark registration).
The Panel finds that Policy 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent does not have any rights or legitimate interests in <jewel-osco.com> because it did not make an offering of bona fide goods. Respondent’s use of the Complainant’s well-known mark to attract Internet users to its site is not a bona fide offering of goods. See Household Int’l Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (finding that use of someone else’s well-known business name undermines any claims of legitimate interests); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites).
Respondent does not have any rights or legitimate interests in <jewel-osco.com> because
Respondent was not commonly known by the name. Respondent did not conduct business under the JEWEL-OSCO name, nor did its website have any connection to the famous name. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
Respondent did not have any rights or legitimate interests in <jewel-osco.com> because
it did not make a fair use of the domain name by using Complainant’s name to divert Complainant’s potential customers to its own site. See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).
The Panel finds that Policy 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent’s attempt to sell the domain name at issue to Complainant for $10,000 is evidence of bad faith. See Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy paragraph 4(b)(i) where Respondent stated in communication with Complainant, "if you are interested in buying this domain name, we would be ready to sell it for $10,000"); see also Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the Respondent demonstrated bad faith when he requested monetary compensation beyond out of pocket costs in exchange for the registered domain name).
Respondent’s use of the Complainant’s obviously famous mark for its unrelated domain name is evidence of bad faith. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that ICQ mark is so obviously connected with Complainant and its products that the use of the domain names by Respondent, who has no connection with Complainant, suggests opportunistic bad faith); see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous).
The Panel finds that Policy 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN policy, the Panel
concludes that the requested relief shall be granted.
Accordingly, it is Ordered that the domain name <jewel-osco.com> be transferred from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 27, 2001
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