HEB Grocery Company, LP v. Nikolay Schastenko / SEO Ukraine
Claim Number: FA1805001789019
Complainant is HEB Grocery Company, LP (“Complainant”), represented by Megan R. Myers of Pirkey Barber PLLC, Texas, USA. Respondent is Nikolay Schastenko / SEO Ukraine (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hebcareers.net>, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 29, 2018; the Forum received payment on May 29, 2018.
On May 30, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <hebcareers.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 May 30, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 19, 2018 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@hebcareers.net. Also on May 30, 2018, 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 21, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 operates a highly successful chain of grocery stores and has been operating it for over 75 years. Complainant has rights in the HEB mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,519,398, registered Jan. 3, 1989).
2. Respondent’s <hebcareers.net> domain name[i] is identical and/or confusingly similar to Complainant’s HEB mark as Respondent merely adds the generic term “careers” and a “.net” generic top-level domain (“gTLD”) to Complainant’s mark.
3. Respondent has no rights or legitimate interests in the <hebcareers.net> domain name. Respondent is not licensed or permitted to use Complainant’s HEB mark and is not commonly known by the <hebcareers.net> domain name. Additionally, Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent attempts to generate click-through revenue from links to third party, job-oriented websites.
4. Respondent registered and is using the <hebcareers.net> domain name in bad faith. Respondent attempted to sell the domain name to Complainant for more than out-of-pocket costs. Additionally, Respondent attempts to attract, for commercial gain, Internet users to the disputed domain name by generating click-through revenue from links for third party, job-oriented websites.
5. Furthermore, Respondent had actual knowledge of Complainant’s rights in the HEB mark prior to registering the <hebcareers.net> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the HEB mark. Respondent’s domain name is confusingly similar to Complainant’s HEB mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <hebcareers.net> domain name and that Respondent registered and uses the 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 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(f), 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 (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 has rights in the HEB mark through its trademark registrations with the USPTO. Registering a mark with the USPTO is sufficient to demonstrate rights in the mark under Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015). The record includes copies of Complainant’s USPTO registrations for the HEB mark (e.g., Reg. No. 1,519,398, registered Jan. 3, 1989). Therefore, Complainant has sufficiently demonstrated its rights in the HEB mark per Policy ¶ 4(a)(i).
Next, Complainant contends Respondent’s <hebcareers.net> domain name is identical and/or confusingly similar to Complainant’s HEB mark as Respondent merely adds a generic term and gTLD to the mark. Adding a generic term and/or gTLD to a mark does not negate any confusing similarity between domain name and a mark in which a complainant has rights under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Therefore, Respondent’s <hebcareers.net> domain name is confusingly similar to Complainant’s HEB mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <hebcareers.net> 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 (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 asserts Respondent has no rights or legitimate interests in the <hebcareers.net> domain name. Specifically, Complainant has provided evidence that Respondent is not authorized or permitted to use Complainant’s HEB mark and is not commonly known by the domain name. Where a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (concluding that the respondent was not commonly known by the <amazondevice.org>, <amazondevices.org> and <buyamazondevices.com> domain names under Policy ¶ 4(c)(ii), as the pertinent WHOIS information identified “Timothy Mays,” “Linda Haley,” and “Edith Barberdi” as registrants of the disputed domain names). Additionally, lack of authorization to use a complainant’s mark may indicate a respondent lacks rights or legitimate interests with respect to a domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). WHOIS information for the <hebcareers.net> domain name identifies Respondent as “Nikolay Schanstenko / SEO Ukraine” and there does not appear to be any other evidence to suggest Respondent is authorized to use Complainant’s mark. Therefore, Respondent is not commonly known by the <hebcareers.net> domain name per Policy ¶ 4(c)(ii).
Next, Complainant claims Respondent is not using the <hebcareers.net> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, the record shows that Respondent uses the domain name to generate revenue from click-through links for third party, job-oriented websites. Use of a domain name containing the mark of another to commercially benefit from related or unrelated hyperlinks may not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant provides screenshots of the domain name’s resolving website which redirects users to job-search websites as part of an “Affiliate Program” to generate revenue. Therefore, the Panel finds Respondent’s use of the <hebcareers.net> domain name to generate revenue from hyperlinks is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts Respondent registered and is using the <hebcareers.net> domain name in bad faith. Specifically, Complainant has shown that Respondent attempted to sell the domain name to Complainant for more than out-of-pocket costs. Attempts to sell a domain name under such circumstances for far more than out-of-pocket costs may indicate bad faith under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). Complainant provides email correspondance with Respondent who offered to sell the domain name for $5,000.00. Therefore, the Panel holds that Respondent registered and used the <hebcareers.net> domain name in bad faith per Policy ¶ 4(b)(i).
Additionally, Complainant contends Respondent attempts to attract, for commercial gain, Internet users to the <hebcareers.net> domain name which features click-through links for third party, job-oriented websites. Such use may indicate bad faith under Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). Complainant provides screenshots of the domain name’s resolving website and claims, without contradiction that Respondent commercially benefits from an “Affiliate Program” in which users are redirected to job-oriented websites such as “Snagajob” and “Monster.” Therefore, Respondent’s use of the <hebcareers.net> domain name to attract users for commercial gain demonstrates bad faith per Policy ¶ 4(b)(iv).
Furthermore, Complainant claims Respondent had actual knowledge of Complainant’s rights in the HEB mark prior to registering the <hebcareers.net> domain name. Actual knowledge is sufficient to support a finding of bad faith based on the totality of the circumstances under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Because Respondent incorporated Complainant’s mark entirely in its domain name, Respondent must have had actual knowledge of Complainant’s rights in the mark. Thus, this is further evidence of bad faith per Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <hebcareers.net> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 3, 2018
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