Publix Asset Management Company v. Warren Spahn
Claim Number: FA0911001295749
Complainant is Publix Asset Management Company (“Complainant”), represented by
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <publixbakery.com>, registered with Aim High!, Inc. d/b/a Get Yer Name.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 23, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 23, 2009.
On December 15, 2009, Aim High!, Inc. d/b/a Get Yer Name confirmed by e-mail to the National Arbitration Forum that the <publixbakery.com> domain name is registered with Aim High!, Inc. d/b/a Get Yer Name and that Respondent is the current registrant of the name. Aim High!, Inc. d/b/a Get Yer Name has verified that Respondent is bound by the Aim High!, Inc. d/b/a Get Yer Name 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 December 17, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 6, 2010 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@publixbakery.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 15, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <publixbakery.com> domain name is confusingly similar to Complainant’s PUBLIX mark.
2. Respondent does not have any rights or legitimate interests in the <publixbakery.com> domain name.
3. Respondent registered and used the <publixbakery.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Publix Asset
Management Company, holds multiple trademark registrations with the United
States Patent and Trademark Office (“USPTO”) for the PUBLIX mark (e.g., Reg. No. 1,339,762 issued June 4,
1985) in connection with retail grocery store services, including bakery
services.
Respondent, Warren Spahn, registered the <publixbakery.com> domain name on April 29, 2009. The disputed domain name resolves to a website that features commercial links to other websites, some of which directly compete with Complainant.
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.
Complainant asserts rights in its PUBLIX mark through its
holding of multiple trademark registrations for the PUBLIX mark with the USPTO (e.g., Reg.
No. 1,339,762 issued June 4, 1985). The
Panel finds that Complainant has established rights in its PUBLIX mark under
Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See
Expedia, Inc. v. Tan, FA 991075 (Nat.
Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered
with the USPTO, [the] complainant has met the requirements of Policy ¶
4(a)(i).”); see also
Complainant argues that Respondent’s <publixbakery.com> domain name is confusingly
similar to Complainant’s PUBLIX mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name is
confusingly similar to Complainant’s PUBLIX mark because Respondent’s disputed
domain name incorporates the entirety of Complainant’s mark and adds the
descriptive term “bakery” and the generic top-level domain (“gTLD”)
“.com.” The Panel finds that the
addition of the descriptive term “bakery,” which has an obvious relationship to
Complainant’s business, creates a confusing similarity between the disputed
domain name and Complainant’s mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000)
(finding confusing similarity where the respondent’s domain name combines the
complainant’s mark with a generic term that has an obvious relationship to the
complainant’s business); see
also 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).”). The Panel also
finds that the addition of a gTLD to a registered mark is irrelevant in
distinguishing a disputed domain name and a mark. See
Trip
Network Inc. v. Alviera, FA 914943
(Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a
domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Jerry Damson, Inc.
v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Nevertheless, the Panel will examine the record to determine if Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
The WHOIS information lists the registrant as “Warren Spahn.”
Complainant asserts that Respondent is not commonly known by the
disputed domain name and has no history of being associated with or operating a
business under the disputed domain name. Without evidence to the contrary, the
Panel finds that Respondent is not commonly known by the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See
Respondent’s disputed domain name was registered on April 29, 2009. The disputed domain name resolves to a website that features commercial links to other websites, some of which directly compete with Complainant. The Panel finds that Respondent’s use of the disputed domain name is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s registration and use of
the disputed domain name to link Internet users to a website featuring
third-party links which are in competition with Complainant constitutes a
disruption of Complainant’s business and constitutes bad faith registration and
use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain
Mgmt. Servs., FA 877982
(Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly
similar domain name to attract Internet users to a directory website containing
commercial links to the websites of a complainant’s competitors represents bad
faith registration and use under Policy ¶ 4(b)(iii)); see also
The Panel finds Respondent’s use of the disputed domain name and Respondent’s attempt to intentionally attract Internet users and profit through the receipt of pay-per-click fees by creating a strong likelihood of confusion with Complainant’s PUBLIX mark is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <publixbakery.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: January 28, 2010
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