national arbitration forum

 

DECISION

 

Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon

Claim Number: FA1312001532854

 

PARTIES

Complainant is Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. (“Complainant”), represented by David T. O'Malia, Indiana, USA.  Respondent is Choi Sungyeon (“Respondent”), South Korea.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <marshsupermarkets.com>, registered with Korea Information Certificate Authority, Inc. dba DomainCA.com.

 

PANEL

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 4, 2013; the National Arbitration Forum received payment on January 3, 2014. The Complaint was received in both Korean and English.

 

On December 6, 2013, Korea Information Certificate Authority, Inc. dba DomainCA.com confirmed by e-mail to the National Arbitration Forum that the <marshsupermarkets.com> domain name is registered with Korea Information Certificate Authority, Inc. dba DomainCA.com and that Respondent is the current registrant of the name.  Korea Information Certificate Authority, Inc. dba DomainCA.com has verified that Respondent is bound by the Korea Information Certificate Authority, Inc. dba DomainCA.com 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 January 16, 2014, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of February 5, 2014 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@marshsupermarkets.com.  Also on January 16, 2014, the Korean language 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 February 11, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

a.    Complainant has been in business since 1931. Complainant operates supermarkets and has become one of the largest food retailers in the Midwestern United States. Complainant currently operates fifty-three supermarkets.

b.    Complainant has rights in the MARSH mark, used in connection with retail food store services. Complainant owns registrations for the MARSH mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 874,895 registered August 12, 1969).

c.    Respondent’s <marshsupermarkets.com> domain name is confusingly similar to Complainant’s MARSH mark.

d.    Respondent does not have any rights or legitimate interests in the <marshsupermarkets.com> domain name.

e.    Respondent is not commonly known by the disputed domain name.

f.      The disputed domain name diverts Internet users searching for Complainant to Respondent’s website.

g.    The resolving website does not include any substantive or meaningful content. 

h.    Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith.

i.      The resolving website includes evidence of Respondent’s intent to sell the disputed domain name. .

j.      Respondent is not selling any products or services or conducting any other type of activity via the <marshsupermarkets.com> domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.[1]

 

FINDINGS

Complainant holds trademark rights for the MARSH mark.  Respondent’s domain name is confusingly similar to Complainant’s MARSH mark.  Complainant has established that Respondent lacks rights or legitimate interests in the use of the <marshsupermarkets.com> domain name, and that Respondent registered and uses the domain name in bad faith. 

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

Complainant owns registrations for the MARSH mark with the USPTO (e.g., Reg. No. 874,895 registered August 12, 1969). Respondent resides or operates in a different country than that in which Complainant holds its trademark registrations; however, a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country. 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; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the MARSH mark pursuant to Policy ¶ 4(a)(i) because Complainant owns a valid trademark registration with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).

 

Complainant alleges that Respondent’s <marshsupermarkets.com> domain name is confusingly similar to Complainant’s MARSH mark. The disputed domain name includes Complainant’s mark in its entirety while adding the descriptive term “supermarkets” and the generic top-level domain (“gTLD”) “.com.” The addition of a generic term to a trademark in a disputed domain name does not differentiate the disputed domain name from the trademark. See Am. Int’l Group, Inc. v. Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Next, the addition of a gTLD is irrelevant for the purposes of confusing similarity analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that  Respondent’s <marshsupermarkets.com> domain name is confusingly similar to Complainant’s MARSH mark under Policy ¶ 4(a)(i).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.

 

Complainant claims Respondent does not have any rights or legitimate interests in the <marshsupermarkets.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name. The WHOIS record for the disputed domain name lists “Choi Sungyeon” as the domain name registrant. Respondent failed to provide a response in this case and thus has not provided any evidence to show that it is in fact commonly known by the disputed domain name. Where the WHOIS information and other evidence in the record did not suggest otherwise, the Panel may infer that the respondent is not commonly known by the disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). Therefore, the Panel finds that Respondent is not commonly known by the <marshsupermarkets.com>  domain name under Policy ¶ 4(c)(ii).

 

The Panel notes that the resolving website contains a header offering the disputed domain name for sale, which would produce a commercial benefit for Respondent. Therefore, the Panel finds that Respondent’s attempts to divert Internet users seeking Complainant do not constitute a bona fide offering a goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

 

Furthermore, Complainant notes that the resolving website does not include any substantive or meaningful content. The failire to make an active use of a domain name demonstrates a lack of a bona fide offering a goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy  ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) and its use is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because Respondent has failed to make an active use of the <marshsupermarkets.com> domain name.

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant claims Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith. Complainant asserts that the resolving website includes evidence of Respondent’s intent to sell the disputed domain name. The domain name includes a general offer to sell in a header on the resolving website. Making a general offer to sell a disputed domain name demonstrates bad faith under Policy ¶ 4(a)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith under Policy ¶ 4(b)(i) because the resolving website includes a general offer for sale in the header.

 

Complainant alleges that Respondent is not selling any products or services or conducting any other type of activity via the <marshsupermarkets.com> domain name.  Failing to make an active use of a disputed domain name (in this case since 2001) constitutes bad faith under Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii)). Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <marshsupermarkets.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  February 25, 2014