Albertson's, Inc. v. West Corp.
Claim Number: FA0208000117895
PARTIES
Complainant
is Albertson's Inc., Boise, ID
(“Complainant”) represented by David J.
Steele, of Christie, Parker &
Hale LLP. Respondent is West Corp., San Francisco, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <savondrug.com>,
registered with Tucows, Inc.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Sandra
Franklin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 6, 2002; the Forum received a hard copy of the
Complaint on August 8, 2002.
On
August 8, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain
name <savondrug.com> is
registered with Tucows, Inc. and that Respondent is the current registrant of
the name. Tucows, Inc. has verified
that Respondent is bound by the Tucows, Inc. 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
August 9, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 29,
2002 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 postmaster@savondrug.com 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
September 18, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Sandra Franklin 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
averments:
1. Respondent’s <savondrug.com> domain
name is confusingly similar to Complainant’s SAV-ON DRUGS mark.
2. Respondent does not have any rights or
legitimate interests in the <savondrug.com> domain name.
3. Respondent registered and used the <savondrug.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant asserts that it “owns the
service mark and trade name SAV-ON DRUGS,” in connection with goods and
services associated with retail drug stores. However, no evidence of service
mark registration is provided in Complainant’s Submission, if such registration
actually exists.
Complainant has been operating under the
SAV-ON DRUGS trade name since 1945, and operates over 400 drug stores and
pharmacy departments under said mark. Complainant has expended “millions of
dollars” in advertising the SAV-ON DRUGS trade name and mark, thereby acquiring
significant goodwill and reputation among customers, as well as the health care
community. In addition to the numerous drug stores and pharmacy departments
operated under the SAV-ON DRUGS mark, Complainant is also the registrant of the
<sav-ondrugs.com> and <savon.com> domain names. Complainant further
contends, “Many of Complainant’s several million customers have accessed the
Sav-ondrugs.com website in search of various information. . .”
Respondent registered the <savondrug.com>
domain name on June 8, 2002. Complainant’s investigation of Respondent’s use of
the subject domain name indicates that <savondrug.com> resolves to
a website that contains banner ads and other advertisements, including
<efunny.com>, <freestamps.com>, <dvdshopper.com> and Discount
Electronics, among others. Complainant’s Submission also reveals that Respondent
has previously engaged in a pattern of registering infringing domain names and
using them in a similar fashion as in the present dispute. Some of Respondent’s
previous registrations are: <cingulor.com> (similar to the Cingular
cellular telephone service company); <lego-land.com> (similar to the Lego
Land theme park); and, <michron.com> (similar to Micron memory chip
manufacturing company).
DISCUSSION
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 and
draw such inferences it considers appropriate pursuant to paragraph 14(b) 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; and
(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.
As previously stated in the Findings, Complainant
makes reference to a SAV-ON DRUG service mark. However, because no evidence was
provided corroborating the statement, the Panel determines it is more
appropriate to determine whether Complainant has established rights in the
SAV-ON DRUG trade name under a Policy ¶ 4(a)(i) analysis.
Complainant’s Submission contains
evidence supporting a finding of rights in the SAV-ON DRUG trade name, more
specifically, Complainant has conducted substantial operations under the mark
for over half a century. Significantly, Complainant’s assertions have gone
unopposed. Therefore, the Panel may accept all of Complainant’s reasonable
allegations as true. See Talk
City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate
to accept as true all allegations of the Complaint”). Further, the ICANN
dispute resolution policy is “broad in scope” in that “the reference to a
trademark or service mark ‘in which the complainant has rights’ means that
ownership of a registered mark is not required–unregistered or common law
trademark or service mark rights will suffice” to support a domain name
Complaint under the policy. See McCarthy on Trademarks and Unfair
Competition, § 25:74.2, Vol. 4 (2000). The Panel finds that Complainant has
established rights in the SAV-ON DRUG mark sufficient to bring a claim.
Respondent’s <savondrug.com> domain
name is confusingly similar to Complainant’s SAV-ON DRUG mark. Respondent’s
domain name incorporates Complainant’s mark in its entirety, but for the
inconsequential deletion of the hyphen and the letter “s.” Slight grammatical
alterations, such as the removal of a hyphen or letter from an established
mark, fail to distinguish the domain name from the mark; thus, rendering
Respondent’s domain name confusingly similar to Complainant’s mark. See Chernow Communications Inc. v. Kimball,
D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation
marks, such as hyphens, does not alter the fact that a name is identical to a
mark"); see also Universal
City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000)
(finding that deleting the letter “s” from the Complainant’s UNIVERSAL STUDIOS
STORE mark did not change the overall impression of the mark and thus made the
disputed domain name confusingly similar to it).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
As stated, Respondent failed to submit a
Response in this proceeding, thereby succumbing to Complainant’s allegations
and submitted evidence. Respondent has failed to invoke any circumstances that
could demonstrate rights or legitimate interests in the domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By
not submitting a [R]esponse, Respondent has failed to invoke any circumstance
which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or
legitimate interests in the domain name”).
Furthermore, previous Panels have
determined that it is proper to draw the following inferences from Respondent’s
failure to contest Complainant’s allegations: (1) that Respondent does not deny
the allegations, and (2) Respondent does not refute the conclusions that
Complainant asserts can be drawn from the facts. See Strum v. Nordic Net Exchange
AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (finding that in accordance
with Paragraph 14(b) of the Policy, the Panel may draw such inferences as it
considers appropriate, if Respondent fails to comply with the Panel's requests
for information); see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it
appropriate for the Panel to draw adverse inferences from Respondent’s failure
to reply to the Complaint).
Complainant’s uncontested evidence
reveals that Respondent uses the infringing domain name as a portal website,
displaying various advertisements and hyperlinks to various businesses offering
goods ranging from stamps to electronics. Respondent uses the <savondrug.com>
domain name to divert Internet traffic to an unrelated website. Such
opportunistic use is not in connection with a bona fide offering of goods or
services under Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb.
Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain
name to confuse and divert Internet traffic is not a legitimate use of the
domain name); see also Toronto-Dominion
Bank v. Karpachev, 188 F.Supp.2d
110, 114 (D.
Mass. 2002) (finding that, because Respondent's sole purpose in selecting the
domain names was to cause confusion with Complainant's website and marks, it's
use of the names was not in connection with the offering of goods or services
or any other fair use).
There is no evidence that
suggests Respondent is commonly known by the <savondrug.com> domain
name pursuant to Policy ¶ 4(c)(ii). Complainant’s Submission provides evidence
that Respondent has engaged in a pattern of infringing on established marks
(e.g., <doubletree.com> and <lego-land.com>), and usually has no
interest in the domain name other than its diversionary purpose. Because
Respondent has not made a legitimate use of the domain name, and Complainant
has operated under the SAV-ON DRUGS mark for over fifty years, it is improbable
that Respondent is commonly known by a domain name that incorporates
Complainant’s mark. Therefore, Respondent cannot establish rights or legitimate
interests in the <savondrug.com> domain name when it has no affiliation
with the “savondrug” second-level domain whatsoever. See Gallup
Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because Respondent is not commonly known by the disputed domain name or using
the domain name in connection with a legitimate or fair use).
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has been satisfied.
For the purpose of showing both bad faith
registration and use, the Panel finds Respondent is in violation of Policy ¶¶
4(b)(ii) and (iv). As Policy paragraph 4(b) states, “For the purposes of
Paragraph 4(a)(iii), the following circumstances, in particular but without
limitation, if found by the Panel to be present, shall be evidence of the
registration and use of a domain name in bad faith.”
As stated in the Findings, Respondent has
apparently engaged in infringing conduct in the past. Complainant’s Submission
contains uncontested evidence that Respondent has previously infringed on other
established marks. Because Respondent’s domain name is confusingly similar to
Complainant’s mark, and incorporates insignificant changes into the mark, it is
probable that Complainant will want to register the subject domain name to
reflect its SAV-ON DRUGS trade name and mark. As stated in the Findings, Complainant
owns the registration to the <savon.com> domain name, which indicates a
desire to register likely variations of its mark in domain names. Respondent’s
attempt to prevent Complainant from reflecting a likely variation of its mark
in a domain name constitutes bad faith registration and use under Policy ¶
4(b)(ii). See Armstrong Holdings,
Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that
Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names
which infringe upon others’ famous and registered trademarks); see also America Online, Inc. v. iDomainNames.com,
FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding a bad faith pattern of
conduct where Respondent registered many domain names unrelated to its business
which infringe on famous marks and websites).
Additionally, Respondent’s <savondrug.com>
domain name resolves to a website that displays numerous advertisements and
hyperlinks that direct unsuspecting Internet users to other businesses. By
using the confusingly similar domain name, Respondent has intentionally
attempted to attract, presumably for commercial gain, Internet users to its
website by creating a likelihood of confusion with Complainant’s mark.
Therefore, Respondent’s registration and use of the domain name evidences bad
faith under Policy ¶ 4(b)(iv). See America
Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21,
2000) (finding bad faith where Respondent registered and used an infringing
domain name to attract users to a website sponsored by Respondent); see also
Drs. Foster & Smith, Inc. v.
Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where
Respondent directed Internet users seeking Complainant’s site to its own
website for commercial gain).
Thus, the Panel finds that Policy ¶
4(a)(iii) has been satisfied.
DECISION
Having established all three elements
under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <savondrug.com>
domain name be TRANSFERRED from Respondent to Complainant.
___________________________________________________
Sandra Franklin, Panelist
Dated: September 27, 2002
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