Publix Asset Management Company v. Administrator c/o Domain Admin
Claim Number: FA0611000842940
Complainant is Publix Asset Management Company (“Complainant”), represented by James
B. Lake, of Thomas & LoCicero PL,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <publixjobs.com>, registered with Rebel.com
.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On November 22, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 12, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@publixjobs.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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." 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.
A. Complainant makes the following assertions:
1. Respondent’s <publixjobs.com> domain name is confusingly similar to Complainant’s PUBLIX mark.
2. Respondent does not have any rights or legitimate interests in the <publixjobs.com> domain name.
3. Respondent registered and used the <publixjobs.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Publix Asset
Management Company, provides a variety of retail, mail-order, online and
financial services. Complainant has used
its PUBLIX mark in commerce since at least
Respondent, registered the <publixjobs.com>
domain name on
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."
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.”).
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.
The Panel finds that Complainant’s trademark registration with the USPTO sufficiently establishes Complainant’s rights in the PUBLIX mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
The Panel further finds that Respondent’s <publixjobs.com> domain name is confusingly similar to Complainant’s PUBLIX mark as it contains Complainant’s entire mark with the addition of the generic term “jobs.” The addition of this generic term, which has a relation to Complainant’s business, is not enough to negate the confusing similarity between Complainant’s mark and Respondent’s disputed domain name under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant initially must establish that Respondent lacks
rights or legitimate interests with respect to the disputed domain name. However, once Complainant makes a prima
facie case, the burden of proof shifts, and Respondent must prove that it
has rights or legitimate interests in the <publixjobs.com>
domain name. See Compagnie Generale des
Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO
Respondent is using the <publixjobs.com> domain name to display hyperlinks to a variety of third-party websites, some of which are in direct competition with Complainant. The Panel infers that Respondent is using the disputed domain name to earn click-through fees, and thus finds that Respondent has not made 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 Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Additionally, Respondent’s WHOIS information does not
indicate that Respondent is commonly known by the <publixjobs.com> domain name, and there is no other
evidence in the record to suggest that Respondent is commonly known by the
disputed domain name. Additionally,
Complainant asserts that Respondent is not authorized to use Complainant’s
PUBLIX mark and that Respondent is not associated with Complainant in any
way. In Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Based on the uncontested evidence presented by Complainant,
the Panel finds that Respondent receives click-through fees for the hyperlinks
displayed on the website that resolves from the <publixjobs.com> domain name. The Panel also finds that Respondent’s
disputed domain name is capable of creating a likelihood of confusion as to
Complainant’s sponsorship and affiliation with the disputed domain name and
corresponding website. Such commercial
benefit constitutes bad faith registration and use under Policy ¶
4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Moreover, the Panel finds that Respondent is using the <publixjobs.com> domain name to
redirect Internet users to a website that contains third-party hyperlinks, some
of which are in direct competition with Complainant. Such use constitutes a disruption of
Complainant’s business and qualifies as bad faith registration and use under
Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted
business from the complainant to a competitor’s website in violation of Policy
¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368
(WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain
name <eebay.com> in bad faith where the respondent has used the domain
name to promote competing auction sites).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <publixjobs.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: January 4, 2007
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