Albertson's, Inc. v. West Corp.
Claim Number: FA0208000117895
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.
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.
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 email@example.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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
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.
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).
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.
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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