national arbitration forum

 

DECISION

 

Publix Asset Management Company v. Leslie Purdy, P.A.

Claim Number: FA0901001241453

 

PARTIES

Complainant is Publix Asset Management Company (“Complainant”), represented by James B. Lake, Florida, USA.  Respondent is Leslie Purdy, P.A. (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <greenwisesupermarket.com>, <greenwisesupermarket.net>, <greenwisesupermarket.info>, and <greenwisesupermarket.mobi>, registered with Godaddy.com, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 7, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 7, 2009.

 

On January 8, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <greenwisesupermarket.com>, <greenwisesupermarket.net>, <greenwisesupermarket.info>, and <greenwisesupermarket.mobi> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names.  Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 January 19, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 9, 2009 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@greenwisesupermarket.com, postmaster@greenwisesupermarket.net, postmaster@greenwisesupermarket.info, and postmaster@greenwisesupermarket.mobi by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On February 12, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <greenwisesupermarket.com>, <greenwisesupermarket.net>, <greenwisesupermarket.info>, and <greenwisesupermarket.mobi> domain names are confusingly similar to Complainant’s GREENWISE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <greenwisesupermarket.com>, <greenwisesupermarket.net>, <greenwisesupermarket.info>, and <greenwisesupermarket.mobi> domain names.

 

3.      Respondent registered and used the <greenwisesupermarket.com>, <greenwisesupermarket.net>, <greenwisesupermarket.info>, and <greenwisesupermarket.mobi> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Publix Asset Management Company, has registered the GREENWISE mark with the United States Patent and Trademark Office (“USPTO”) in connection with Complainant’s grocery stores.  (Reg. No. 2,520,595 issued Dec. 18, 2001.)

 

Respondent registered the disputed domain names on November 11, 2008.  The <greenwisesupermarket.com>, <greenwisesupermarket.net>, and <greenwisesupermarket.info> domain names resolve to websites that list links for third-party websites, which directly compete with Complainant.  The <greenwisesupermarket.mobi> domain name resolves to a website parked by the Registrar, Godaddy.com, Inc., displaying a box to search for domain names for sale by the Registrar.

 

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 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.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).

 

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)   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 Panel finds that Complainant has established rights in the GREENWISE mark pursuant to Policy ¶ 4(a)(i) by registering the mark with the USPTO.  See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).

 

The <greenwisesupermarket.com>, <greenwisesupermarket.net>, <greenwisesupermarket.info>, and <greenwisesupermarket.mobi> domain names consist of Complainant’s GREENWISE mark, the generic term “supermarket,” and a generic top-level domain (gTLD).  The word “supermarket” describes Complainant’s business and therefore adds to, rather than detracts from, the confusing similarity that results from using Complainant’s GREENWISE mark.  The addition of a gTLD is irrelevant to an analysis under Policy ¶ 4(a)(i).  Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s GREENWISE mark.  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights.  The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names.  If the Panel finds that Complainant’s allegations establish such a prima facie case, the burden shifts to Respondent to show that it does indeed have rights or legitimate interests in the disputed domain names pursuant to the guidelines in Policy ¶ 4(c).  The Panel finds that Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  Since no response was submitted in this case, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain names.  However, the Panel will still examine the record in consideration of the factors listed in Policy ¶ 4(c).  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). 

 

The Panel finds no evidence in the record suggesting that Respondent is commonly known by the disputed domain names.  Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the GREENWISE mark, and the WHOIS information identifies Respondent as “Leslie Purdy, P.A.”  Thus, Respondent has not established rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).

 

The <greenwisesupermarket.com>, <greenwisesupermarket.net>, and <greenwisesupermarket.info> domain names are being used to direct Internet users to a parking website with a list of links to third-party websites that presumably generate referral fees for Respondent.  Using a domain name that is confusingly similar to Complainant’s mark to direct Internet users to a list of links competing with Complainant is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.  Therefore, the Panel finds Respondent does not have any rights or legitimate interests in the disputed domain names pursuant to Policy ¶¶ 4(c)(i) or (iii).  See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).

 

The <greenwisesupermarket.mobi> domain name is being parked by the domain name Registrar with a link to buy domain names available through the Registrar.  The Panel finds that Respondent has failed to make an active use of the <greenwisesupermarket.mobi> domain name and therefore has not established any rights of legitimate interests pursuant to Policy ¶¶ 4(c)(i) or (iii).  See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent is using the <greenwisesupermarket.com>, <greenwisesupermarket.net>, and <greenwisesupermarket.info> domain names to resolve to websites that contain links for third-party websites.  Some of these links directly compete with Complainant.  The Panel finds Respondent is using the disputed domain name to divert Internet users to Complainant’s competitors.  This is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).

 

The Panel infers that Respondent receives click-through fees for diverting Internet users to third-party websites via the <greenwisesupermarket.com>, <greenwisesupermarket.net>, and <greenwisesupermarket.info> domain names.  Because the disputed domain names are confusingly similar to Complainant’s mark, Internet users accessing Respondent’s disputed domain names may become confused as to Complainant’s affiliation with the disputed domain names and resulting websites.  Respondent is attempting to profit from this confusion.  Thus, Respondent’s use of the disputed domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

The Panel finds that it may consider the totality of the circumstances when conducting a Policy ¶ 4(a)(iii) analysis, and that it is not limited to the enumerated factors in Policy ¶ 4(b).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).  The Panel finds that Respondent has failed to make an active use of the <greenwisesupermarket.mobi> domain name and concludes that this is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <greenwisesupermarket.com>, <greenwisesupermarket.net>, <greenwisesupermarket.info>, and <greenwisesupermarket.mobi> domain names be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  February 24, 2009

 

 

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