Rite Aid Corporation and Name Rite, L.L.C. v. Daniel Kim
Claim Number: FA1205001445979
Complainant is Rite Aid Corporation and Name Rite, L.L.C. (“Complainant”), represented by Dana S. Gross of Morgan, Lewis & Bockius LLP, Washington, D.C., USA. Respondent is Daniel Kim (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue is <riteaid.xxx>, registered with Mesh Digital Limited.
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.
Hugues G. Richard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 25, 2012; the National Arbitration Forum received payment on May 29, 2012.
On May 31, 2012, Mesh Digital Limited confirmed by e-mail to the National Arbitration Forum that the <riteaid.xxx> domain name is registered with Mesh Digital Limited and that Respondent is the current registrant of the name. Mesh Digital Limited has verified that Respondent is bound by the Mesh Digital Limited registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 31, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 20, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@riteaid.xxx. Also on May 31, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A Response was received and determined to be deficient on June 21, 2012.
On June 27, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hugues G. Richard 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns various trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its RITE AID marks (e.g., Reg. No. 1,280,221 registered May 29, 1984). Complainant also has trademark registrations in countries worldwide, including with the Japanese Patent Office (“JPO”) (Reg. No. 5,236,733 registered June 5, 2009), and with Russia’s Federal Service for Intellectual Property (“ROSPTENT”) (Reg. No. 390,480 registered October 2, 2009). Complainant founded the retail pharmacy and convenience store RITE AID and currently operates a chain of RITE AID stores. Complainant’s stores offer prescription and non-prescription pharmaceuticals, health care and personal hygiene products, food and beverage products, electronics, periodicals, and other products, marketed under the RITE AID mark. Complainant has expended extensive resources to market the goods and services available under the RITE AID marks. Complainant is widely recognized by its RITE AID mark in relation to its goods and services.
Respondent registered the <riteaid.xxx> domain name on December 6, 2011. The disputed domain name is identical to the RITE AID mark, and was registered long after Complainant began using its mark. Respondent has no rights or legitimate interests in the <riteaid.xxx> domain name, as evidenced by the variety of “pay-per-click” hyperlinks to third-party adult-oriented commercial websites displayed on the resolving website, as well as Respondent’s attempt to sell the disputed domain name for a sum in excess of out-of-pocket registration costs associated with the domain name. Respondent is not commonly known by the disputed domain name and does not have authorization to use the RITE AID mark in a domain name or otherwise. Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. Respondent makes a profit from his use of the disputed domain name. Respondent had constructive and actual notice of Complainant’s RITE AID mark at the time he registered the <riteaid.xxx> domain name. Respondent registered and uses the disputed domain name in bad faith, as demonstrated by the use of an identical domain name to misdirect Internet traffic in order to make a profit. Respondent displays hyperlinks on the resolving website that divert Internet users to adult-oriented websites.
B. Respondent
Respondent argues that the <riteaid.xxx> domain name is not confusingly similar to Complainant’s RITE AID mark, and asserts that Complainant operates in an unrelated industry to that for which the disputed domain name was created. Respondent did not develop the website associated with the disputed domain name because he was enrolled in school and did not have time to create the website himself. Respondent hired a “web hosting site” to create the <riteaid.xxx> domain name on his behalf. Respondent enrolled the disputed domain name in a web hosting company for the purpose of creating a bona fide service at the resolving website, but put such plans “on hold” once he received notice of the present dispute.
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."
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.
Preliminary Issue: Deficient Response
The Response was received on June 21, 2012, after the deadline to file a response. Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5. The Panel however chooses to accept and consider this Response. See Victoria’s Secret Stores Brand Management, Inc. v. LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: Rite Aid Corporation and Name Rite, L.C.C. Complainant Name Rite is a wholly-owned subsidiary of Rite Aid, and owns the RITE AID mark.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The Complainant submits little evidence to establish a sufficient nexus or link between Rite Aid Corporation and Name Rite, L.C.C. However, since it was not denied by the Respondent within his Response, the Panel is ready to treat them all as a single entity in this proceeding. The Complainants will be collectively referred to as “Complainant.”
Complainant asserts that it owns trademark rights in the RITE AID mark through registration with the USPTO (e.g., Reg. No. 1,280,221 registered May 29, 1984). Further, Complainant contends that it has trademark registrations in countries worldwide, including with the JPO (Reg. No. 5,236,733 registered June 5, 2009), and with the ROSPTENT (Reg. No. 390,480 registered October 2, 2009). In Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007), the panel explained that a complainant’s trademark registration with the USPTO demonstrates its rights in a mark under Policy ¶ 4(a)(i). In Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005), the panel found that by registering a mark with several trademark authorities internationally, including with the USPTO, the complainant secures rights in its mark. The Panel finds that Complainant successfully established rights in its RITE AID mark through its trademark registrations with the USPTO, JPO, and ROSPTENT pursuant to Policy ¶ 4(a)(i).
Complainant alleges that the <riteaid.xxx> domain name is identical to the RITE AID mark. Complainant argues that the disputed domain name consists entirely of Complainant’s RITE AID mark, with the spaces removed and the top-level domain (“TLD”) “.xxx” added. The panel in Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000), stated that the domain name <croatiaairlines.com> is identical to the complainant’s CROATIA AIRLINES mark despite the removal of a space. In HEB Grocery Co. v. Gonzales, FA 1421851 (Nat. Arb. Forum Feb. 7, 2012), the panel found that merely adding “.xxx” to the complainant’s entire mark does not differentiate the domain name at all, and renders it identical to the mark.
Respondent denies that the <riteaid.xxx> domain name is confusingly similar or identical to the RITE AID mark. Respondent concedes that the disputed domain name may be similar to the mark, but argues that the “.xxx” gTLD was created for the “pornography” community, and because Complainant does not sell “porn” or “XXX” related material, it is not confusingly similar or identical. The Panel does not agree that the nature of the content on the resolving website creates a new meaning for the disputed domain name.
The Panel concludes that the <riteaid.xxx> domain name is identical to the RITE AID mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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 UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by the <riteaid.xxx> domain name because the WHOIS record identifies “Daniel Kim” as the registrant. Complainant also alleges that Respondent has not received authorization to register or use a domain name containing the RITE AID mark. The Panel finds that without authorization to use the mark, and with a different identification listed on the WHOIS record, Respondent could not be commonly known by the <riteaid.xxx> domain name under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Compaq Info. Techs. Group, L.P. v. Express Tech., Inc., FA 104186 (Nat. Arb. Forum Mar. 13. 2002) (“The Panel finds that due to the distinct nature of Complainant's COMPAQ mark it is not possible for Respondent to be commonly known as < compaqspares.com> pursuant to Policy 4(c)(ii).”).
Complainant alleges that the <riteaid.xxx> domain name resolves to a website that offers “pay-per-click” links to commercial websites hosted by third parties. Complainant argues that hosting “pay-per-click” links does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel finds that hosting hyperlinks to websites offering adult oriented material in exchange for a fee does not demonstrate use of the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); see also Dipaolo v. Genero, FA 203168 (Nat. Arb. Forum Dec. 6, 2003) (“Diversion to [adult-oriented material] is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(i) and (iii).”).
Complainant contends that Respondent’s attempt to sell the <riteaid.xxx> domain name for “substantial profit” suggests that Respondent does not possess rights or legitimate interests in the disputed domain name. Complainant submits evidence that shows an auction page for the <riteaid.xxx> domain name. Complainant also submits evidence of Respondent’s offer to sell the disputed domain name for $100,000. The Panel determines that Respondent’s efforts to sell the disputed domain name in excess of the registration costs do not give rise to any rights or legitimate interests under Policy ¶ 4(a)(ii). See Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (“Moreover, the Panel interprets Respondent’s offer to sell the domain name registration for $100,000 as evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶4(a)(ii).”); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”).
Respondent argues that he did not create the content found at the website to which the <riteaid.xxx> domain name resolves because he was too busy to create the website, and enrolled the disputed domain name at a web hosting site to create the website. Respondent alleges that the website was intended to be used to create a bona fide service. The Panel notes that Respondent does not provide evidence of the service he intended to provide. The Panel finds that Respondent is responsible for the content at the resolving website, and that Respondent failed to establish rights and legitimate interests in the <riteaid.xxx> domain name pursuant to Policy ¶ 4(a)(ii).
Complainant alleges that Respondent is attempting to sell the <riteaid.xxx> domain name in excess of the registration costs associated with the domain name. Complainant submits evidence showing an auction page offering the disputed domain name for sale as well as a screenshot showing the disputed domain name priced at $100,000. The Panel determines that attempting to sell the disputed domain name for more than the costs related to registering the domain name demonstrates that Respondent is engaged in bad faith registration and use under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).
Complainant contends that Respondent’s registration and use of an identical domain name with the purpose of capitalizing on the “fame and notoriety of the RITE AID [m]arks to misdirect consumer traffic in an effort to generate revenues through the receipt of click-through fees” constitutes bad faith under the Policy. Complainant submits evidence that commercial hyperlinks are displayed on the webpage associated with the disputed domain name. In Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006), the panel held that registering and using a confusingly similar domain name to divert Internet users to a page with commercial hyperlinks in order to profit from the fees generated amounts to bad faith registration and use. In Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), the panel stated that displaying links to third-party website at a confusingly similar domain name demonstrates bad faith registration and use. The Panel determines that registering a domain name that is likely to confuse Internet consumers for the purpose of making a financial profit by attracting traffic to its site is evidence that Respondent registered and uses the <riteaid.xxx> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant asserts that Respondent uses a “placeholder” website to host hyperlinks to third-party websites. In State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007), the panel concluded that the owner of the parked domain name is ultimately responsible for the use of the domain name even though the respondent does not control the content at the site. In Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008), the panel stated that the content on a parked domain name and the material appearing on the webpage is the responsibility of the respondent. The Panel finds that regardless of whether Respondent did not create the content at the disputed domain name, Respondent is held accountable for the displayed hyperlinks, and may be found to have registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant claims that Respondent had both constructive and actual knowledge of Complainant’s RITE AID mark prior to registering the <riteaid.xxx> domain name. Complainant argues that Respondent’s use of an identical domain name combined with actual knowledge of Complainant’s rights is evidence of bad faith registration and use. Complainant further argues, in its Policy ¶ 4(a)(ii) section, that Respondent’s constructive knowledge is based on Complainant’s federal and international trademark registrations of the RITE AID mark. The Panel declines to find bad faith based only on constructive notice, but concludes that Respondent’s actual knowledge of Complainant's mark supports a finding of bad faith registration pursuant to Policy ¶4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Respondent contends that the content at the <riteaid.xxx> domain name was not his creation and a “web hosting site” developed the resolving webpage. Respondent claims that the website would eventually host a bona fide service, but that any such plans were waylaid at the filing of the present dispute. The Panel however notes that Respondent does not provide evidence of the service he intended to provide. As previously stated, the Panel finds that Respondent is accountable for the substance at the resolving website, and that Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <riteaid.xxx> domain name be TRANSFERRED from Respondent to Complainant.
Hugues G. Richard, Panelist
Dated: July 10, 2012
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