Hy-Vee, Inc. v.
Claim Number: FA0810001228507
Complainant is Hy-Vee, Inc. (“Complainant”), represented by Timothy
J. Zarley, of Zarley Law Firm, PLC,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hyveefloral.com> and <hyvee-floral.com>, registered with Compana, LLC.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 9, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 9, 2008.
On October 10, 2008, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <hyveefloral.com> and <hyvee-floral.com> domain names are registered with Compana, LLC and that the Respondent is the current registrant of the names. Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 October 20, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 10, 2008 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 and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on November 10, 2008.
On November 17, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed R.
Complainant requests that the domain names be transferred from Respondent to Complainant.
In its Complaint, Hy-Vee, Inc., alleges that the domain names <hyveefloral.com> and <hyvee-floral.com> are identical to or confusingly similar to its trademarks, which include the trademark HY-VEE. The Complainant asserts that this mark has been used in commerce since 1957 and was registered with the U.S. Patent and Trademark Office (“USPTO”) in 1967. It also has registered related marks. The mark is used by a grocery chain to sell, among other items, flowers.
The Complainant asserts that the addition of the word floral is a description of services with minimal trademark significance. Therefore, the operative comparison is between the mark and the use of “hyvee” or “hy-vee” in the two domain names. Complainant asserts that it sells flowers and that the domain name is being used by Respondent to advertise the sale of flowers, as if Respondent were a retail flower shop.
Complainant asserts that Respondent has no rights in the name. General assertions about Respondent’s use of the name and rights in the name are made both in the Complaint and in the Affidavit attached as Exhibit 1.
Complainant also asserts bad faith by Respondent. Complainant asserts that “Respondent is a known cybersquatter that has shown a pattern of behavior of continuous attempts to cash in on other’s businesses.” Complainant has attached a number of exhibits reflecting litigation between other trademark owners and the Respondent or companies associated with the Respondent.
Respondent, Texas International Property Associates, NA NA, asserts first that the domain name and the mark are not identical or confusingly similar. Respondent asserts that the addition of the word “floral” is significant and asserts that Complainant has not established that the mark and names are at all similar.
As to Respondent’s interest in the disputed domain name, Respondent points out that the allegations contained in the Complaint are limited. It asserts that those allegations do not establish a prima facie case, as required in domain dispute proceedings. Respondent also asserts that its use of the domain name to establish what is generally referred to as a “click-through” site or service has been found by a number of panels to constitute a “bona fide offering of services.” Respondent further asserts that it has legitimate rights in the name because the domain name is composed of generic or descriptive terms. Respondent does note that it has registered and used the domain names in question for four and two years without any complaint by Complainant.
As to bad faith, Respondent asserts that the ICANN policies require showing that the domain name was “both registered and is being used in bad faith” The response asserts that Respondent was unaware of the existence of the HY-VEE mark and notes that the area in which the mark is used is located over 700 miles from Respondent.
As to the number of cases in which Respondent has been involved, Respondent asserts that is has actually won some of those cases. It also asserts that those cases in which it voluntarily agreed to transfer domain names cannot be considered as evidence of “bad faith.”
Respondent also asserts that “click-through” sites are not evidence of bad faith, according to some panels.
Finally, Respondent asserts that there is no evidence that it “specifically intended to confuse customers seeking out complainant.”
Certainly the Complainant has established rights to the HY-VEE mark, for it has clearly shown that it has registered this mark and similar marks with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
The Panelist finds that the two domain names are confusingly similar to the HY-VEE mark. The addition of the word “floral” is not enough to distinguish the disputed domain names from Complainant’s mark for the purposes of confusing similarity under Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”). This is particularly true because the HY-VEE mark is fanciful or whimsical, making the mark itself far from a common name or word.
While Respondent asserts that Complainant has not made a prima facie case that Respondent has no rights in the name, the Panelist must disagree. The allegations contained in the Complaint and the Affidavit attached as Exhibit 1 are sufficient for a prima facie showing. Complainant contends that it does not know of any use of the HY-VEE mark other than in the disputed domain names. Essentially, Complainant asserts that Respondent has not shown any other evidence that it is commonly known by either the <hyveefloral.com> or <hyvee-floral.com> domain names. Respondent clearly is not commonly known by the <hyveefloral.com> or <hyvee-floral.com> domain names under Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Respondent, in its Response, asserts that it is displaying hyperlinks and receives click-through fees for the hyperlinks. This use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a noncommercial or fair use under Policy ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names). The Panelist respectfully disagrees with decisions to the contrary.
Respondent does assert that a third-party provides the hyperlinks displayed on the resolving website, so it is not responsible for such hyperlinks, and thus does not lack rights or legitimate interests under Policy ¶ 4(a)(ii). This argument is rejected. Respondent is “responsible.” See Notebooks, Inc. v. Lionheart Publ’g, FA 1069901 (Nat’l Arb. Forum Oct. 18, 2007 (“The Panel notes that Respondent is responsible for the content of any website using the domain name at issue and cannot pass that responsibility off to its registrar or domain service provider.”) These links are not unauthorized, as Respondent admits. Compare Costas Spiliadis v. Androulidakis, FA 1072907 (Nat. Arb. Forum Oct. 17, 2007) (finding that the respondent did not lack rights or legitimate interests under Policy ¶ 4(a)(ii) because its registrar “had posted unauthorized third party links on the website [without Respondent’s knowledge or authorization] and that when [Respondent] discovered this fact it was ‘shocked,’ demanded that they be removed and when they were not removed, Respondent changed its registrar.”).
As for bad faith, Respondent has a
history of registering domain names that UDRP panels have found to infringe upon
the marks of legitimate businesses. See e.g., Bond & Co. Jewelers, Inc. v.
Complainant asserts that Respondent is responsible for the content on its resolving website, and that Respondent’s use of an alleged confusingly similar domain name for a parked site is evidence of bad faith. See MASAI S.A. v. Colman, D2007-0509 (WIPO July 19, 2007) (finding that the respondent’s registration and use of the disputed domain name to host a parked website constituted bad faith because “[t]he use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy … This is regardless of the fact that the Respondent had no knowledge of the exact content of the sponsored links that appeared on the website.”); see also XM Satellite Radio Inc. v. Kennedy, FA 796199 (Nat. Arb. Forum Nov. 7, 2006) (“While Respondent undoubtedly parked the domain names with GoDaddy, he is responsible for the content he allows GoDaddy to put on his domains. Respondent could have equally well set up his own ‘parked’ page without any inappropriate content.”).
Further, the Panelist notes that Respondent is in the business of registering domain names for profit. As the Response indicates, “Respondent is the registrant of 1,000 of domain names . . . .” While Respondent asserts that it had no knowledge of Complainant’s mark, HY-VEE, a person in Respondent’s business cannot bury its head in the sand when attempting to register a domain name with a fanciful, distinctive, obviously made up name like “HY-VEE.” Respondent is a sophisticated business entity, and Respondent is represented by extremely able counsel, as clearly shown by the pleadings filed by counsel in this case. The Panelist simply cannot ignore the ease with which Respondent could have determined that “HY-VEE” was a registered mark.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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.
The Panelist finds that the mark and the two domain names are confusingly similar, although not identical.
The Panelist finds, for the reasons stated, that the Respondent has no rights or legitimate interests in the name.
Finally, the Panelist determines that the registration and use is in bad faith.
Having established all three elements required under the ICANN Policy, the Panelist concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hyveefloral.com> and <hyvee-floral.com> domain names be TRANSFERRED from Respondent to Complainant.
Dated: December 1, 2008
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