Whole Foods Market IP, L.P. v. HAGHNAZAR VANICK
Claim Number: FA1701001713961
Complainant is Whole Foods Market IP, L.P. (“Complainant”), represented by Rebecca R. Younger of Pirkey Barber PLLC, Texas, USA. Respondent is HAGHNAZAR VANICK (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usawholefoods.com>, registered with OVH sas.
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.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 24, 2017; the Forum received payment on January 24, 2017.
On January 25, 2017, OVH sas confirmed by e-mail to the Forum that the <usawholefoods.com> domain name is registered with OVH sas and that Respondent is the current registrant of the name. OVH sas has verified that Respondent is bound by the OVH sas 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 27, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 2017 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@usawholefoods.com. Also on January 27, 2017, 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 timely Response was received and determined to be complete on February 14, 2017.
Complainant’s Additional Submission was received and determined to be in compliance with the Rules on February 17, 2017.
Respondent’s Additional Submission was received and determined to be in compliance with the Rules on February 18, 2017.
On February 21, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Calvin A. Hamilton as Panelist.
On March 13, 2017, the Panel ordered Respondent’s written submissions in the French language be accompanied by a translation into the English language pursuant to ICANN Rule 11(a).
On March 31, 2017, Respondent provided the requested translated documents.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 is a leading retailer of natural and organic foods. On or in connection with its efforts in this industry, Complainant has registered the WHOLE FOODS MARKET mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,961,586, registered Mar. 12, 1996), establishing rights in the mark. See Compl., at Attached Ex. 3. Complainant is otherwise known as “WHOLE FOODS,” operating <wholefoods.com> where Complainant promotes its retail grocery services since July 30, 2004. Respondent’s <usawholefoods.com> merely appends the geographic descriptor “USA” and the “.com” generic top-level domain (“gTLD”) to Complainant’s mark, creating confusing similarity.
Respondent has no rights or legitimate interests in <usawholefoods.com>. Complainant has not given Respondent authorization to use its marks in any respect. Further, Respondent uses <usawholefoods.com> to compete with Complainant in the sale of food and beverage products. See Compl., at Attached Exs. 5, 8 (representative printouts of Respondent’s website at <usawholefoods.com>). Such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered and used <usawholefoods.com> in bad faith. Respondent has engaged in conduct proscribed by Policy ¶ 4(b)(iv). Further, given the registered marks which predate Respondent’s domain name registration and the fame of Complainant’s marks, Respondent had actual knowledge when registering and using <usawholefoods.com>.
B. Respondent
Respondent has utilized a common name, not intending to profit from any goodwill associated with Complainant’s marks.
Respondent uses logos for its USA WHOLE FOODS mark to brand itself as separate and distinct from Complainant. See Resp., at p.3 (comparison of Respondent’s logo and Complainant’s logo).
Several domain names are registered with a “wholefoods” prefix, suggesting widespread use in the “trademark repository” associated with the phrase as well as domain names.
Respondent offers different products on its website, and should not be considered to compete with Complainant’s “organic” offerings.
C. Additional Submissions-Complainant
The differences in logos have no bearing under Policy ¶ 4(a)(i).
Respondent failed to submit evidence of third party marks incorporating “WHOLE FOODS” to demonstrate that the terms are common.
Respondent admits that <usawholefoods.com> was registered to sell food and beverage products in the USA, Complainant’s country of operation.
Respondent has not alleged it was unaware of Complainant when registering and using the domain name. It is inconceivable that an entity previously engaged in the sale of food and beverages would be unaware of Complainant and its marks.
D. Additional Submission—Respondent
Respondent reiterates how USA WHOLE FOODS is a dictionary term and cannot be confused with Complainant’s marks.
Respondent has been engaged in the sale and trade of food products in France for several generations, and is expanding to American products. Respondent registered the domain name in furtherance of its legitimate business efforts—rather than as an attempt to cyber squat.
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: Language of the Proceedings
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstances of the present case, the Panel decides that the proceeding should be in English.
Identical and/or Confusingly Similar (Policy ¶ 4(a)(i)).
Complainant is a leading retailer of natural and organic foods. In connection with its efforts in this industry, Complainant registered the WHOLE FOODS MARKET mark with the USPTO (e.g., Reg. No. 1,961,586, registered Mar. 12, 1996), establishing rights in the mark. See Compl., at Attached Ex. 3. USPTO registrations have been considered prima facie evidence of rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office).
Rights or Legitimate Interests (Policy ¶ 4(a)(ii)).
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 (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 (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 has no rights or legitimate interests in <usawholefoods.com>. Under Policy ¶ 4(c)(ii), Complainant claims it has not given Respondent authorization to use its marks in any respect. This has supported Complainants’ prima facie burden. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Complainant recognizes on pages 5 and 6 that Respondent’s website associated with <usawholefoods.com> uses the USA WHOLE FOODS wording “as a mark.” See Compl., at Attached Ex. 8 (copy of Respondent’s website). Use of the terms of a domain name to conduct business may represent rights and legitimate interests for a respondent. See World Publ’ns, Inc. v. World Pen, D2000-0736 (WIPO Sept. 14, 2000) (finding that as the respondent registered the trade name "WORLD PEN" in July 1996 and had been conducting business under that name since that date, it had rights or legitimate interests in the disputed domain name).
Notwithstanding, the Panel is concerned for a number of reasons:
a) Respondent could not have been unaware that Claimant had registered its mark, nor unaware of the notoriety of Claimant’s mark in the US market;
b) Respondent admits that its site is currently inactive when it states that, “Given that the site is currently inactive, we have not consulted the messages, and have not been aware of Whole foods Market's complaint.” This would seem to indicate that Respondent is not currently conducting business at the site, rather, it attempts to attract, for commercial gain, Internet users to the said website, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website, in violation of Policy ¶ 4(b)(iv);
c) the evidence submitted by Respondent does not show that it uses the Whole
Foods mark in France or elsewhere in the world, except the US;
d) Respondent’s use of <usawholefoods.com> in connection with the sale of food and beverage products, the same services offered by Complainant under its famous WHOLE FOODS Marks could not therefore be a coincidence. Such use has been considered as not representative of rights and legitimate interests. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”).
Respondent argues that several domain names are registered with a “wholefoods” prefix, suggesting widespread use in the “trademark repository” associated with the phrase as well as domain names. Respondent also argues that the terms of <usawholefoods.com> are common and generic/descriptive, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet.
The Panel is not swayed by Respondent’s arguments and accordingly, the Panel agrees that Respondent’s use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). Accordingly, the Panel finds that Respondent has not met its burden under Policy ¶ 4(c)(ii).
Registration and Use in Bad Faith (Policy ¶ 4(a)(iii)).
Complainant argues that Respondent registered and used <usawholefoods.com> in bad faith. Specifically, Complainant argues that, given the registered marks which predate Respondent’s domain name registration and the fame of Complainant’s marks, Respondent had actual knowledge when registering and using <usawholefoods.com>. Actual knowledge may be demonstrated by the “name used for the domain and the use made of it.” Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014).
The Panel agrees that Complainant has adduced sufficient evidence to support a finding that Respondent had actual knowledge of the WHOLE FOODS MARKET [and WHOLE FOODS] mark(s), when registering and using the domain name, which is bad faith under nonexclusive Policy ¶ 4(a)(iii). See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation).
Further, “the ‘usa’ portion of the disputed domain name is a generic geographic term, as such the internet user in all likelihood will assume that the domain name deals with the activities of Complainant in the USA and that it will lead to a website dealing with that subject.
The Panel finds that Respondent’s acts demonstrate bad faith registration under 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 <usawholefoods.com> domain name be TRANSFERRED from Respondent to Complainant.
Calvin A. Hamilton, Panelist
Dated: April 20, 2017
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