Publix Asset Management Company v. ieWeb
Claim Number: FA0909001282607
Complainant is Publix Asset Management Company (“Complainant”), represented by
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <publixdeli.com>, registered with Enom, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 1, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 2, 2009.
On September 2, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <publixdeli.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 September 3, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 23, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on September 23, 2009.
An Additional Submission was received from Complainant on September 28, 2009 that was determined to be timely and complete pursuant to Supplemental Rule 7.
On September 30, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant alleges that the domain name <publixdeli.com> should no longer be registered with Respondent but that it should be transferred to Complainant.
It contends that this should be done because, within the meaning of Policy ¶ 4, the domain name is confusingly similar to Complainant’s registered trademark PUBLIX, Respondent has no rights or legitimate interests in the domain name and it has been registered and subsequently used in bad faith. Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to Complainant.
In support of its case on the first of these three elements, Complainant relies on the registered PUBLIX trademark to which reference has already been made (“the PUBLIX mark”) and says that the domain name is confusingly similar to the trademark. That is so, it contends, because the domain name incorporates the whole of the PUBLIX mark and has merely had added to it the generic word “ deli” which does not negate the confusing similarity with the trademark, but emphasizes it, because Complainant is known to operate deli services.
Complainant then contends, to establish the second element, that Respondent has no rights or legitimate interests in the domain name because it is not being used for a bona fide offering of goods or services, Respondent is not associated with any legitimate use of the PUBLIX mark, is not known as “publixdeli.com” and has no authorisation to use Complainant’s mark in a domain name or anywhere else.
Finally, Complainant contends that the domain name was registered and is being used in bad faith. It contends that this is so because the PUBLIX mark is not a name in common use and is associated only with the legitimate business activities of Complainant. Moreover, Respondent could have registered the disputed domain name only to make money from it by an improper purpose. As the domain name is not being used for a website or any other legitimate purpose and as Respondent has not replied to Complainant’s request to cease and desist from retaining the domain name, the conclusion should be reached that the domain name was registered and is being used in bad faith.
The Respondent contends as follows:
1. The domain
name is not confusingly similar to service marks or trademarks in which the
Complainant has rights. The domain publix.com was registered in 1995. 7 years
after Complainant purchased the domain name publix.com, Respondent purchased
the domain publixdeli.com. Previous to owning this domain publixdeli.com, and
based on public whois records, the domain was previously owned for at least 1
year by someone other than Respondent. Respondent owned the domain for nearly 7
years before Complainant sent any communication to Respondent. This shows that
Complainant did not feel the need to purchase the domain as it was not part of
their trademark or service mark. The Complainant trademark is for the term
Publix and does not include Deli or any other department that may be found
within Complainant stores. In addition based on Complainant's own website,
"Publix is the largest employee-owned retail grocery chain in the
2. Respondent has rights and legitimate interest in respect of the domain name that is the subject of this Complaint. The rules of the ICANN specifically state a domain making legitimate noncommercial or fair use of a domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark is allowable. While the domain is no longer being used for its originally purchased purpose, it was in fact purchased for fair use. The domain is not being used at all right now, meaning the site is not and has never been used to mislead or divert customers. The fact that the domain is not currently being used does not give Complainant rights to the domain as the Respondent may choose to build a memorial website for the late Judith Landress.
Complainant states that on March 18th, 2009 that they contacted Respondent by electronic mail. This correspondence was never received.
Complainant states that on June 29th, 2009 that they contacted Respondent by electronic mail and again did not receive a reply. In fact a return voicemail was placed with Complainant attorney John Attaway on July 16, 2009, a return phone call and email was received by Complainant attorney Lori DeAngelis on July 17, 2009 based on Respondent phone call, and a reply email was submitted by Respondent to Complaint attorney Lori DeAngelis on July 17, 2009.
3. The domain was not registered and is not being used in bad faith. The domain publixdeli.com has never been up for sale or rent nor has the domain ever been offered to the Complainant in exchange for any money or any other out-of-pocket costs.
Respondent does not engage in a pattern of purchasing domain names so trademark and service marks cannot market or advertise their marks.
purchased the domain on April 17th, 2002 for the purpose of assisting
Respondent’s mother’s coworkers in getting updates about her health.
Respondent’s mother, Judith Landress, was a manager of a Publix Deli in
C. Additional Submissions
Complainant has filed an Additional Submission and has submitted that it should be received and taken into account by the Panel. The Panel has discretion whether to accept unsolicited additional submissions, a discretion that must be exercised on proper grounds. In the present case, the Panel will accept the additional submission and take it into account as the proceeding is defended, Respondent has advanced some significant arguments that Complainant should be able to reply to and the Panel feels that it would be of advantage to have before it everything that the parties wish to advance, particularly on some of the contentious issues that this proceeding raises.
In its Additional Submission, Complainant replies to Respondent’s argument that Complainant had not registered the domain name <publixdeli.com> itself and that consequently the name was available to Respondent and others to register. Complainant rejects that argument as being unsupported by the law and as giving scope for the extensive infringement of trademark rights.
Complainant then replies to Respondent’s contention that it purchased the disputed domain name “for fair use”. Complainant rejects that argument on the ground that it is an allegation unsupported by evidence and that such an argument has not been accepted by prior UDRP panels.
Complainant also contends that Respondent cannot claim a right or legitimate interest in the domain name on the ground that it was acquired “on behalf of” a former employee and stockholder of Complainant, namely the mother of Jared Landress who filed the Response on behalf of Respondent. This claim, Complainant argues, has never been accepted in the past but has in fact been rejected in prior decisions.
Complainant also replies to Respondent’s argument that it did not register and use the domain name in bad faith because it had bought the domain name to assist Judith Landress’ fellow workers in learning about her health. Complainant submits that such an argument is not supported by past practice or by the facts of the present case.
Complainant also maintains that Respondent’s and Mr. Landress’ large holding of domain names suggests a practice of infringement and hence the conclusion that the domain name in the present case was not registered in good faith.
Finally, Complainant notes that the domain name is now dormant and that in the absence of any better explanation, the Panel should infer bad faith and in particular that it should conclude that Respondent has been motivated by a desire to impede Complainant’s use of the domain name.
Complainant was established in 1930 and is a
large and well known supplier of grocery store services in the
Complainant through an associated company is the registered proprietor of the trademark Registered No. 1,339,762 for PUBLIX, registered with the United States Patent and Trademark Office (“USPTO”) on June 4, 1985, with a first use in commerce on December 31, 1930 and the Complainant is the registered proprietor of numerous other trademarks also registered with USPTO for PUBLIX.
The Complainant also registered the domain name <publix.com> on January 31, 1995 and has continually used it for the purposes of its business since then.
Respondent acquired the disputed domain name by transfer on April 17, 2002.
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 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 Panel finds first that
Complainant has established rights in the PUBLIX mark pursuant to Policy ¶ 4(a)(i) through the registration of the mark with the United
States Patent and Trademark Office (“USPTO”) (Reg. No. 1,339,762, registered on
June 4, 1985) together with numerous other trademarks registered for PUBLIX,
evidence of which has been provided and which is accepted by the Panel. See
Complainant argues in its Complaint and Additional Submission that the domain name <publixdeli.com> is confusingly similar to Complainant’s PUBLIX mark pursuant to Policy ¶ 4(a)(i). The Panel accepts that submission as the domain name contains Complainant’s mark, adds the generic term “deli,” and adds the generic top-level domain (“gTLD”) “.com.”
Complainant operates a chain of grocery stores, some of which contain delis and, indeed, part of its business in that regard is conducted under the name “Publix Deli”. Accordingly, it has long been held that a disputed domain name which contains a mark, together with a generic term with an obvious relationship to Complainant’s business, creates a confusing similarity between the disputed domain name and the registered mark. See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)).
addition of a gTLD is irrelevant in distinguishing a disputed domain name from
an established mark. See Reese v. Morgan, FA 917029 (Nat.
Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic
top-level domain “.com” is insufficient to differentiate a disputed domain name
from a mark); see also Jerry Damson, Inc. v.
Applying those principles to the present case, the Panel concludes that the disputed domain name consists of Complainant’s trademark and a generic expression describing part of Complainant’s business and that, accordingly, the domain name is confusingly similar to the trademark.
Complainant has therefore made out the first of the three elements that it must establish.
Under Policy ¶ 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the disputed domain name.
But by virtue of Policy ¶ 4(c), it is open to a respondent to establish its rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Thus, if Respondent proves any of these elements or indeed anything else that shows that it has a right or interest in the disputed domain name, Complainant will have failed to discharge its onus and the Complaint will fail.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy and then the burden shifts to Respondent to show that it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Panel finds that Complainant has made out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. That prima facie case arises from the following circumstances:
(a) the domain name incorporates the whole of the PUBLIX mark with the addition of the word “deli” which suggests that whoever registered the domain name and the Respondent who subsequently bought it were seeking to evoke the name and trademark of Complainant and a division of its business;
(b) the name PUBLIX had been in use by Complainant since 1930 and the trademark itself had been issued in 1985, thus giving trademark a long provenance;
(c) the parties have never had a business relationship;
(d) at least prima facie, the domain name has not been used for a bona fide offering of goods or services, Respondent is not associated with any legitimate use of the PUBLIX mark, is not known as “publixdeli.com” and has no authorisation to use Complainant’s mark in a domain name or anywhere else.
The question then arises whether Respondent has rebutted the prima facie finding.
It will be recalled that Respondent essentially relied on the following matters to establish its right or legitimate interest in the domain name, namely that it was “making legitimate noncommercial or fair use of a domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark …”, that the domain name was “purchased for fair use” and that “the Respondent may choose to build a memorial website for the late Judith Landress”.
The Panel appreciates the motives of Respondent, especially as they relate to the memory of Mr. Landress’ late mother. The difficulty with accepting Respondent’s submissions on this issue, however, is that they fall short of what UDRP panels have come to expect to make out a case of a right or legitimate interest in a domain name. The UDRP process itself, conducted as it is on the papers and without the benefit of seeing and hearing witnesses, is such that reasonable evidence must be brought forward in submissions to support a claim that a registrant has a right to or a legitimate interest in a domain name. The evidence need not be unanswerable or even overwhelming, but it must show that the claim is probably right. Unfortunately for Respondent in the present case, the points it makes do not show that it probably has a right or legitimate interest in the domain name. Taking each of the points relied on by Respondent to show the right or legitimate interest, the Panel finds:
(a) the claim that it was “making legitimate noncommercial or fair use of a domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark …” is not made out, as it is not sufficient simply to repeat the provisions of the Policy without providing evidence to bring the case within those provisions ; see Wal-Mart Stores Inc. v. Yoon, FA 1076575 ( Nat. Arb. Forum Nov 21, 2007) and the other cases cited by Complainant;
(b) the claim that the domain name was “purchased for fair use” is not made out, as there is nothing to show what the “ fair use” is; and
(c) the claim that “the Respondent may choose to build a memorial website for the late Judith Landress”, although undoubtedly well motivated, is likewise short on evidence. It is true that a memorial site, like the tribute sites and fan sites now often set up in support of celebrities, may give rise to a right or legitimate interest in a domain name and there are numerous cases where that result has been achieved. But in weighing up such cases and in deciding what to make of sometimes inadequate evidence, panels have regularly rejected claims, as they must, when all that is said is that there is an intention or a hope to set up the site in the future, without any evidence of demonstrable preparations having been made. Regrettably for Respondent, the present case comes within that category of cases and the panel must find that the claim has not been made out.
Finally, against the equivocal nature of Respondent’s claim are two facts that make it difficult to accept Respondent’s submission. The first is that it has bought and kept, without using, a domain name that evokes a famous brand and part of its business. That fact calls for a good explanation that the Panel has been unable to discern. The second fact is that it is inherently unlikely that a website with the name <publixdeli.com> would serve the purpose that Respondent cites as a possible use of the domain name in the future, as any objective observer would assume that the website dealt with the deli business of Complainant and nothing else.
For all of these reasons the Panel finds on the balance of probabilities that Respondent has not rebutted the prima facie case and that Complainant has thus made out the second of the three elements that it must establish.
Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000‑0003 (WIPO Feb. 18, 2000).
Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
“(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out‑of‑pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on‑line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.”
As already indicated, the Panel may consider the totality of the circumstances when conducting the analysis under Policy ¶ 4(a)(iii) and may make a finding of bad faith that 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.”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”)
In the present case, Complainant relies on Policy ¶ 4(b)(i) and (ii) and the general notion of bad faith that arises from the principle in Telstra Corp., Ltd v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) and the concept of “passive holding” of a domain name.
Each of those grounds overlaps and merge into an inquiry into the real intentions of Respondent. Again it must be said that such questions have to be decided on the evidence submitted and the inferences that the Panel is able to draw from that evidence.
The evidence relied on by Complainant is essentially that the domain name incorporates its prominent trademark and a reference to its deli business and that the domain name is not now being used. Complainant therefore invites the Panel to draw the inference that the domain name was registered and subsequently bought with the intention of selling it and/or preventing Complainant from registering the domain name itself. Complainant also says that such an inference is strengthened by the large inventory of domain names held by both Respondent and Mr. Landress. As to the subsequent history of the domain name, Complainant’s argument is essentially that the domain name is being kept dormant until such a sale can be achieved and that in the meantime Complainant is being prevented from acquiring it.
Respondent’s evidence is that, in the light of Complainant’s statement that it is "the largest employee-owned retail grocery chain in the United States", the domain name was bought for an employee, namely Ms. Landress, thereby making it a purchase in good faith; that it was used “for the purpose of assisting Respondent’s mother’s coworkers in getting updates about her health” and that it may be used in the future as a memorial website for Ms. Landress.
The Panel does not wish to doubt the motives of Mr. Landress, but it finds that a proper analysis of the evidence on the balance of probabilities brings the matter within the provisions of the Policy relied on by Complainant.
The reasons for that conclusion are as follows:
(a) the fact that the domain name itself incorporates Complainant’s well known trademark and a specific reference to its deli business raise a strong inference that the original registrant and, in turn, its subsequent owner by acquiring the domain name, were targeting Complainant and saw an opportunity to sell or rent the domain name to it or otherwise use it for their commercial advantage and in the meantime to prevent Complainant from acquiring it;
(b) such an inference is not conclusive and may be rebutted;
(c) it is, however, not rebutted by the suggestion that the purchase should be seen as legitimate in view of Complainant’s stature as an employee owned company; at best, this suggestion is neutral , for the domain name could have been purchased for any reason , no matter what the structure of the company;
(d) nor is it rebutted by the suggestion that the domain name was bought “for the purpose of assisting Respondent’s mother’s coworkers in getting updates about her health”; that is, of course, possible and well motivated, but it is inherently unlikely, for the reason that people wanting the update would be expected to look under a website that contained Ms. Landress’ name rather than a website about Complainant’s deli business; it is also notable that neither the record as shown from the Wayback Machine at www.archive.org nor, in the absence of that, any evidence of exactly what material was posted on the website, is available to verify Respondent’s submission;
(e) nor is it rebutted by the suggestion that the domain name may be used in the future as a memorial website for Ms. Landress, as the web address would seem to be inappropriate for achieving that purpose;
(f) as there must be some reason for keeping the domain name dormant and for not putting it to use as a memorial site, the inference that it is being held as a “passive holding” within the principle in Tesltra Corp v. Nuclear Mushrooms (supra) becomes stronger. The Panel find that this passive holding consitutes bad faith registration and use within the meaning of Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that failure to make an active use of a domain name permits an inference of registration and use in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).That inference, in the opinion of the Panel, has not been rebutted by evidence or submission;
(g) Respondent’s and Mr. Landress’ inventory of domain names, although not conclusive, also tend to suggest a pattern of such conduct within the meaning of Policy ¶ 4(b)(ii).
For all of these reasons the Panel finds that the domain name was registered and is being used in bad faith and that Complainant has therefore made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <publixdeli.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC Panelist
Dated: October 6, 2009
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