The Grocers Supply Co., Inc. v. Bargin Register, Inc. - Client Services
Claim Number: FA1206001447902
Complainant is The Grocers Supply Co., Inc. (“Complainant”), represented by Matthew D. Schneller of Bracewell & Giuliani LLP, Washington, USA. Respondent is Bargin Register, Inc. - Client Services (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <grocerssupply.net>, registered with Bargin Register, Inc.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 8, 2012; the National Arbitration Forum received payment on June 8, 2012.
On June 27, 2012, Bargin Register, Inc. confirmed by e-mail to the National Arbitration Forum that the <grocerssupply.net> domain name is registered with Bargin Register, Inc. and that Respondent is the current registrant of the name. Bargin Register, Inc. has verified that Respondent is bound by the Bargin Register, Inc. 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 June 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 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@grocerssupply.net. Also on June 28, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 25, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
1) Complainant has common law rights in the GROCERS SUPPLY mark and uses it in connection with retail and wholesale grocery services;
2) The <grocerssupply.net> domain name is identical to Complainant’s GROCERS SUPPLY mark;
3) Respondent is not commonly known by the <grocerssupply.net> domain name;
4) The <grocerssupply.net> domain name resolves to a website where competing links are displayed;
5) The <grocerssupply.net> domain name intentionally attracts, for commercial gain, Internet users by creating a likelihood of confusion as to the source of the <grocerssupply.net> domain name.
B. Respondent
Respondent did not submit a Response.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.
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.”).
Complainant asserts that it has rights in the GROCERS SUPPLY mark. Panels have held that, although registration of a mark with a trademark authority is strong evidence of having rights in the mark, registration of a mark is unnecessary. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel considers all facts and circumstances to determine if Complainant has generated public awareness and secondary meaning with its common law rights.
Complainant contends that it has common law rights in the GROCERS SUPPLY mark, which Complainant claims it uses in connection with a wide range of grocery store and convenience store services, including wholesale retail sales of food, drinks, and convenience store items, as well as warehousing and distribution services, shipping and logistics services, advertising and printing services, and more. Complainant states that the business, and thus the use of the mark, began in 1923 when Joe Levit founded Complainant’s business. Complainant notes that the business was incorporated in the State of Texas in 1938. Complainant asserts that it has fleets of trucks bearing its mark, over 1,150 grocery or convenience stores, and over 40 other wholesalers or distributors. Complainant contends that it has over 10,000 employees and generates over $3 billion in sales annually. Additionally, Complainant notes that it has received positive press in many trade magazines and general publications, and Complainant argues that the unpaid media attention indicates that the GROCERS SUPPLY mark has established substantial notoriety and secondary meaning. Complainant further provided the Panel with evidence of its trademark applications with the United States Patent and Trademark Office (“USPTO”) for the GROCERS SUPPLY mark (e.g., Serial. No. 85,636,003 filed May 25, 2012). Therefore, the Panel finds that Complainant has common law rights in the GROCERS SUPPLY mark pursuant to Policy ¶ 4(a)(i) by demonstrating that the mark acquired secondary meaning. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Complainant contends that Respondent’s <grocerssupply.net> domain name is identical to the GROCERS SUPPLY mark. The Panel finds that the deletion of a space in a mark and the addition of the generic top-level domain (“gTLD”) “.net” are changes required of all domain names, do not substantially change the incorporated mark, and thus are irrelevant to a Policy ¶ 4(a)(i) analysis. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Therefore, the Panel finds that Respondent’s <grocerssupply.net> domain name is identical to the GROCERS SUPPLY mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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 contends that Respondent is not commonly known by the <grocerssupply.net> domain name. Complainant notes that the WHOIS record for the disputed domain name lists “Bargin Register, Inc. – Client Services” as the domain name registrant. Additionally, Complainant alleges that Respondent is not licensed or authorized to use the GROCERS SUPPLY mark in any fashion. The panel in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), found that a lack of authorization and an unsupportive WHOIS record are evidence of a lack of rights and legitimate interests. Therefore, the Panel finds that Respondent is not commonly known by the <grocerssupply.net> domain name under Policy ¶ 4(c)(ii).
Complainant suggests that Respondent’s lack of rights and legitimate interests is further demonstrated by the use to which the <grocerssupply.net> domain name has been put. Complainant asserts that the <grocerssupply.net> domain name resolves to a website featuring pay-per-click advertisements to grocery and warehouse services that are directly competitive with Complainant’s offerings. Panels have previously held that the display of competing links on a website resolving from a disputed domain name is not a use that provides the respondent with rights and legitimate interests. See 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)). Therefore, the Panel finds that Respondent’s use of the <grocerssupply.net> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant has proven this element.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith. Complainant argues that the <grocerssupply.net> domain name resolves to a website that displays pay-per-click links to websites that are unaffiliated with Complainant and offer competing goods and services. Complainant argues that Respondent creates a likelihood of confusion by using Complainant’s mark and that Respondent profits from the click-through fees and other revenue sources from the <grocerssupply.net> domain name. Therefore, the Panel finds that Respondent registered and is using, in bad faith, the <grocerssupply.net> domain name to take commercial advantage of Internet users’ mistakes under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <grocerssupply.net> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 2, 2012
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