HEB Grocery Company, L.P. v. Igor Avramenko
Claim Number: FA1402001545303
Complainant is HEB Grocery Company, L.P. (“Complainant”), represented by Tyson D. Smith of Pirkey Barber PLLC, Texas, USA. Respondent is Igor Avramenko (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hebapplication.net>, registered with GODADDY.COM, LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically February 24, 2014; the National Arbitration Forum received payment February 24, 2014.
On February 25, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <hebapplication.net> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC verified that Respondent is bound by the GODADDY.COM, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 17, 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@hebapplication.net. Also on February 25, 2014, 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 March 24, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
i. Complainant, HEB Grocery Company, L.P., began providing grocery services over one hundred years ago with a single family-owned store in Kerrville, Texas. Complainant’s grocery chain now has more than 350 stores, 76,000 employees, and more than $20 billion in annual sales.
ii. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the HEB mark (e.g., Reg. No. 2,863,076, registered July 13, 2004).
iii. The domain name incorporates the mark HEB in its entirety, merely tacking on the descriptive or generic term “application.”
i. Respondent has no rights or legitimate interests in the domain name.
ii. Respondent is not commonly known by the domain name.
iii. Respondent is using the domain name for a website prominently displaying the HEB marks and featuring what is represented on the site as information about applications for jobs at HEB, as well as other information related to HEB and its products.
i. Respondent registered and is using the domain name in bad faith.
ii. Respondent uses the disputed domain name for a website creating an association with Complainant, and then uses a click-through advertisement for finding jobs to lead to a website of another business promoting job-search services and collecting Internet users’ personal information.
Complainant established that it has rights and legitimate interests in the disputed domain name.
Respondent has no rights or legitimate interests in the disputed domain containing in its entirety Complainant’s protected mark.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and is using the disputed domain name in bad faith.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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 or Confusingly Similar
Complainant claims that it began providing grocery services over one hundred years ago with a single family-owned store in Kerrville, Texas. Complainant alleges that its grocery chain now has more than 350 stores, 76,000 employees, and more than $20 billion in annual sales. Complainant contends that it owns trademark registrations with the USPTO for the HEB mark (e.g., Reg. No. 2,863,076, registered July 13, 2004). The Panel finds that although Respondent purportedly lives in the Ukraine, Policy ¶ 4(a)(i) does not require that Complainant register its mark in the country of Respondent’s residence. 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). Accordingly, the Panel finds that Complainant showed that it has rights in the HEB mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant contends that Respondent’s <hebapplication.net> domain name incorporates the mark HEB in its entirety, merely tacking on the descriptive or generic term “application.” The Panel finds that Respondent’s inclusion of a descriptive or generic term is insufficient to distinguish a domain name from a charge of confusing similarity under a Policy ¶ 4(a)(i) analysis. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel notes that Respondent adds the generic top-level domain (“gTLD”) “.net” to Complainant’s mark in the disputed domain name. The Panel finds that Respondent’s inclusion of a gTLD with Complainant’s mark is inconsequential to a Policy ¶ 4(a)(i) determination. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Thus, the Panel finds that Respondent’s <hebapplication.net> domain name is confusingly similar to Complainant’s HEB mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
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 of proof shifts to Respondent to show it does have such 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 asserts that Respondent is not commonly known by the <hebapplication.net> domain name. Complainant argues that it has not licensed or otherwise permitted Respondent to use its HEB mark, or any other mark owned by Complainant. Additionally, the Panel notes that the WHOIS information identifies “Igor Avramenko” as the registrant of the disputed domain name. Based on the lack of evidence in the record showing that Respondent is known by the disputed domain name, the Panel finds that Respondent is not commonly known under the <hebapplication.net> domain name according to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant contends that Respondent is using the <hebapplication.net> domain name for a website prominently displaying the HEB marks and featuring what is represented on the site as information about applications for jobs at HEB, as well as other information related to HEB and its products. See Complainant’s Exhibit D. Complainant asserts that the top of each page of the website prominently displays a logo featuring the words “HEB APPLICATION.” Id. Complainant also argues that the site contains a menu bar with links such as “H-E-B,” “Heb Application,” “ Heb careers,” “Heb Job,” “Heb Plus,” and “Heb Application Online.” Id. Complainant claims that the “Contact Us” page solicits contact information from Internet users visiting the site. The Panel notes that Respondent may be attempting to phish for consumers’ personal and financial information. Thus, the Panel finds that Respondent’s attempt to pass itself off as Complainant through the <hebapplication.net> domain name to phish for consumer information is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant asserts that Respondent uses the <hebapplication.net> domain name for a website creating the appearance of an association with Complainant, and then uses a click-through advertisement for finding jobs that leads to a website of another business promoting job-search services and collecting Internet users’ personal information. Complainant asserts that the top of each page of the website prominently displays a logo featuring the words “HEB APPLICATION,” as well as links titled “H-E-B,” “Heb Application,” “ Heb careers,” “Heb Job,” “Heb Plus,” and “Heb Application Online.” See Complainant’s Exhibit F. Complainant contends that the “Contact Us” page phishes for personal information from consumers visiting Respondent’s site. Complainant argues that Respondent is using the <hebapplication.net> domain name to deceive consumers into believing that Respondent is HEB, or is associated with HEB. The Panel finds that Respondent is attempting to pass itself off as Complainant to phish for personal information, and the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”); see also Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <hebapplication.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 7, 2014.
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