Unified Grocers, Inc. v. Unified Grocers Inc / Unified Grocerss
Claim Number: FA1211001473280
Complainant is Unified Grocers, Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is Unified Grocers Inc / Unified Grocerss (“Respondent”), South Africa.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <unifiedgrocerinc.com> and <unifiedgrocerss.com>, registered with GoDaddy.com, LLC.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 28, 2012; the National Arbitration Forum received payment on November 28, 2012.
On November 30, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <unifiedgrocerinc.com> and <unifiedgrocerss.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 December 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 24, 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@unifiedgrocerinc.com, postmaster@unifiedgrocerss.com. Also on December 3, 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 January 4, 2013, 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" 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <unifiedgrocerinc.com> and <unifiedgrocerss.com> domain names, the domain names at issue, are confusingly similar to Complainant’s UNITED GROCERS mark.
2. Respondent does not have any rights or legitimate interests in the domain names at issue.
3. Respondent registered and used the domain names at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
PRELIMINARY ISSUE – MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the WHOIS record for each of the domain names lists a unique name and address, the telephone number, fax number, and e-mail address for both domain names that are identical. Complainant asserts that both domain names are registered through GoDaddy.com, LLC, are hosted on the same web server, and display the same content. Complainant asserts that each of the subject domain names was registered and are being used by the same person, Respondent.
The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.
Complainant, Unified Grocers, Inc., is the largest wholesale grocery distributor in the Western United States and supplies grocery products and professional services to thousands of independent grocery retailers in Alaska, Arizona, California, Colorado, Hawaii, Nevada, New Mexico, Oregon, Texas, Washington, and internationally. Complainant operates a website accessible at <www.unifiedgrocers.com>, which provides information about the services and resources offered to independent grocery retailers under the UNIFIED GROCERS marks. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the UNIFIED GROCERS mark (e.g., Reg. No. 3,521,609 registered Oct. 21, 2008). Respondent’s <unifiedgrocerinc.com> and <unifiedgrocerss.com> domain names are confusingly similar to Complainant’s UNIFIED GROCERS mark. The domain name <unifiedgrocerinc.com> features a common mistyping or misspelling of Complainant’s mark, merely omits the last letter “s” for the mark, and adds the generic term “Inc.” The domain name <unifiedgrocerss.com> is confusingly similar as it features Complainant’s entire UNIFIED GROCERS mark as the dominant portion of the name, and merely adds one additional letter, “s.” Likewise, the addition of the generic top-level domain (“gTLD”) “.com” to the disputed domain names is irrelevant to the confusingly similar analysis. Respondent is not commonly known by the disputed domain names despite the fact that the WHOIS information identifies “Unified Grocers Inc / Unified Grocerss” as the registrants. Complainant has not given Respondent permission to use its UNIFIED GROCERS mark. Respondent is using the domain name <unifiedgrocerinc.com> to commit Internet fraud by attempting to pass itself off as Complainant. Respondent’s disputed domain names currently resolve to inactive websites. Respondent’s registration and use of the <unifiedgrocerinc.com> domain name disrupts Complainant’s business by using the domain name itself to pass itself off as Complainant for Respondent’s fraudulent commercial gain. Respondent’s registration and use of the <unifiedgrocerinc.com> domain name is for its own commercial gain by creating a likelihood of confusion with Complainant and its UNIFIED GROCERS mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent and its activities. Respondent, at the time that it registered the disputed domain names, had actual or constructive knowledge of Complainant’s rights in the mark. Respondent registered the <unifiedgrocerinc.com> domain name on March 26, 2012 and registered the <unifiedgrocerss.com> domain name on August 30, 2012.
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 is the largest wholesale grocery distributor in the Western United States, and it supplies grocery products and professional services to thousands of independent grocery retailers in Alaska, Arizona, California, Colorado, Hawaii, Nevada, New Mexico, Oregon, Texas, Washington, and internationally. Complainant operates a website accessible at <www.unifiedgrocers.com>, which provides information about the services and resources offered to independent grocery retailers under the UNIFIED GROCERS marks. Complainant owns trademark registrations with the USPTO for the UNIFIED GROCERS mark (e.g., Reg. No. 3,521,609 registered Oct. 21, 2008). The Panel notes that although Respondent appears to reside in South Africa, Policy ¶ 4(a)(i) only requires that Complainant establish its rights in the UNIFIED GROCERS mark in some jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, Complainant’s registration of the UNIFIED GROCERS mark with the USPTO adequately establishes its rights in the mark under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Respondent’s <unifiedgrocerinc.com> and <unifiedgrocerss.com> domain names are confusingly similar to Complainant’s UNIFIED GROCERS mark. The domain name <unifiedgrocerinc.com> features a common mistyping or misspelling of Complainant’s mark. Respondent merely omits the last letter “s” from the mark in the <unifiedgrocerinc.com> domain name. The removal of the letter “s” does not differentiate Respondent’s disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it). Respondent adds the generic term “Inc” to the <unifiedgrocerinc.com> domain name. The addition of a generic term is irrelevant in determining whether Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity). Respondent’s domain name <unifiedgrocerss.com> features Complainant’s entire UNIFIED GROCERS mark as the dominant portion of the name and merely adds one additional letter, “s”. The addition of an “s” to the disputed domain name does not distinguish the domain name from Complainant’s mark under Policy ¶ 4(a)(i). See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)). Lastly, the addition of the gTLD “.com” to the disputed domain names is irrelevant to a confusing similarity analysis. Respondent removes the space in Complainant’s mark between “UNIFIED” and “GROCERS.” The removal of spaces and the addition of a gTLD does not adequately distinguish Respondent’s disputed domain names from Complainant’s marks under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Thus, Respondent’s <unifiedgrocerinc.com> and <unifiedgrocerss.com> domain names are confusingly similar to Complainant’s UNIFIED GROCERS mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent is not commonly known by the disputed domain names despite the fact that the WHOIS information identifies “Unified Grocers Inc / Unified Grocerss” as the registrants. Additionally, Complainant has not given Respondent permission to use its UNIFIED GROCERS mark. Respondent submits no additional evidence showing that it is commonly known by the disputed domain names. Thus, Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that, although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).
Respondent is using the domain name <unifiedgrocerinc.com> to commit Internet fraud by attempting to pass itself off as Complainant. Complainant asserts that Respondent has placed a large order for computer equipment from the e-mail addresses <account@unifiedgrocerinc.com> and <customercare@unifiedgrocerinc.com>. The signature from one of Respondent’s e-mails lists shows “Alfred Plamann, Unified Grocers Inc., 5200 Sheila Street, Commerce, CA 90040, Tel: 800-531-1598 Ext: 113, Fax: 800-305-4412.” Alfred Plamann is Complainant’s Chief Executive Officer, and the signature block lists Complainant’s trade name, address, telephone, and fax numbers. However, Mr. Plamann did not send these emails, nor did anyone else associated with Complainant. The person whose credit card information was used to place the order, “Lisa R Belliveau,” is not associated with Complainant in any way. Respondent’s e-mails are part of its fraudulent activities, and Respondent is attempting to place orders for goods in Complainant’s name using a stolen or false credit card. Respondent’s use of the disputed domain name to pass itself off as Complainant is 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). See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”).
Additionally, Respondent’s disputed domain names currently resolve to inactive websites. Respondent’s disputed domain names resolve to “Site Under Construction” websites. Respondent’s failure to make an active use of the disputed domain names is not 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). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under 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 established.
Respondent’s registration and use of the disputed domain names disrupts Complainant’s business by using the domain names to pass itself off as Complainant for Respondent’s fraudulent commercial gain. Respondent’s registration and use of the disputed domain names is for its own commercial gain by creating a likelihood of confusion with Complainant and its UNIFIED GROCERS mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent and its activities. Respondent presumably confuses and commercially gains when it places orders for goods under Complainant’s name. Respondent’s use of the disputed domain names to place orders for goods using a stolen or false credit card number constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Respondent is failing to make an active use of the disputed domain names, evidencing bad faith under Policy ¶ 4(a)(iii). Respondent’s disputed domain names resolve to “Site Under Construction” webpages. Respondent’s failure to make an active use of the disputed domain names evidences bad faith registration and use under Policy ¶ 4(a)(iii). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).
Respondent, at the time that it registered the disputed domain names, had actual or constructive knowledge of Complainant’s rights in the mark. Complainant’s registration of the UNIFIED GROCERS mark with the USPTO may have provided Respondent with constructive notice of Complainant’s rights in the mark. While some panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to Respondent’s apparent knowledge of Complainant’s business and its employees, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under 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 Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <unifiedgrocerinc.com> and <unifiedgrocerss.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 13, 2013
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