Publix Asset Management Company v. Click Cons. Ltd
Claim Number: FA0612000874479
Complainant is Publix Asset Management Company (“Complainant”), represented by James
B. Lake of Thomas & LoCicero PL, 100 W. Kennedy
Blvd., Suite 500, Tampa, FL, 33602.
Respondent is Click Cons. Ltd (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <publixapron.com>, registered with Domaindoorman, 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 December 21, 2006; the National Arbitration Forum received a hard copy of the Complaint December 22, 2006.
On December 22, 2006, Domaindoorman, Llc confirmed by e-mail to the National Arbitration Forum that the <publixapron.com> domain name is registered with Domaindoorman, Llc and that Respondent is the current registrant of the name. Domaindoorman, Llc verified that Respondent is bound by the Domaindoorman, Llc registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On January 2, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 23, 2007, 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@publixapron.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 30, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson 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." 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. The domain name that Respondent registered, <publixapron.com>, is confusingly similar to Complainant’s PUBLIX mark.
2. Respondent has no rights to or legitimate interests in the <publixapron.com> domain name.
3. Respondent registered and used the <publixapron.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Publix Asset Management Company, is a large
retail grocery store chain in the
Complainant registered the PUBLIX mark (Reg. No. 1,339,762 issued June 4, 1985)
and the APRON’S mark (Reg. No. 2,474,469 issued July 31, 2001) with the United States Patent and Trademark Office (“USPTO”).
Respondent registered the <pubilxapron.com> domain name June 27, 2006, and is using it to maintain a commercial web directory with links to various websites, some of which promote products and services that attempt to compete with Complainant.
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 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.”).
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.
Complainant established rights in the PUBLIX and APRON’S
marks by the registration of the marks with the USPTO satisfying Policy ¶ 4(a)(i). See Miller
Prods.
The disputed domain name that Respondent registered, <publixapron.com>,
contains Complainant’s PUBLIX mark in its entirety and merely omits the
apostrophe and letter “s” from its APRON’S mark. By combining two of Complainant’s registered
marks in the domain name and making slight alterations, Respondent failed to
sufficiently distinguish the disputed domain name from Complainant’s
marks. As a result, the Panel finds the
<publixapron.com> domain name to be confusingly similar to the
marks, pursuant to Policy ¶ 4(a)(i). See Nintendo of Am. Inc. v. Pokemon,
D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent
combined the complainant’s POKEMON and PIKACHU marks to form the
<pokemonpikachu.com> domain name); see also L’Oreal USA Creative Inc
v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum
Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly
distinguish the domain name from the mark); see also Universal City Studios,
Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that
deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did
not change the overall impression of the mark and thus made the disputed domain
name confusingly similar to it).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established with extrinsic proof in this proceeding that it established legal rights in the marks contained within the disputed domain name. Complainant alleges that Respondent lacks such rights to and legitimate interests in the <publixapron.com> domain name. Complainant must first make a prima facie case in support of its allegations, and then the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. 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.”).
Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <publixapron.com> domain name.
See CMGI, Inc.
v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s
failure to produce requested documentation supports a finding for the
complainant); see also Am. Online,
Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or
legitimate interests where the respondent fails to respond). However, the Panel
will now examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
The Panel examines the record to determine whether or not evidence in the record suggests that Respondent is commonly known by the <publixapron.com> domain name. However, no evidence in the record suggests that Respondent is commonly known by the disputed domain name and Respondent has not offered any evidence to that effect. Respondent has not established rights or legitimate interests in the <publixapron.com> domain name under Policy ¶ 4(c)(ii). See The 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Moreover, Respondent has insured that the disputed domain name that Respondent registerered, <publixapron.com>, which is confusingly similar to Complainant’s PUBLIX and APRON’S marks, resolves to a commercial web directory featuring links to Complainant’s competitors in the retail food service industry. In DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002), the panel determined that the respondent’s use of the <dlj.com> domain name to divert Internet users to the <visual.com> domain name, where services that competed with the complainant were advertised, was not 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). As Respondent’s website contains similar content and Respondent is likely profiting from click-through fees, the Panel finds that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use pursuant to Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also alleges that Respondent registered and used
the disputed domain name in bad faith.
The disputed domain name, <publixapron.com>, is confusingly
similar to Complainant’s federally registered PUBLIX and APRON’S marks and
Respondent uses it to divert Internet users seeking Complainant’s goods and
services to Respondent’s website that has links to Complainant’s
competitors. Respondent presumably
receives click-through fees for each consumer it diverts by these links on the
website. Therefore, Respondent is taking
advantage of the confusing similarity between the <publixapron.com>
domain name and Complainant’s PUBLIX and APRON’S marks, and profiting from
the goodwill associated with the marks.
Use of the disputed domain name for this purpose suggests bad faith registration
and use under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding
bad faith where the domain name in question is obviously connected with the
complainant’s well-known marks, thus creating a likelihood of confusion
strictly for commercial gain); see also Anne of Green Gable Licensing Auth., Inc. v.
Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the
respondent violated Policy ¶ 4(b)(iv) because the
respondent admittedly used the complainant’s well-known mark to attract users
to the respondent's website).
Moreover, the record
supports a finding that Respondent registered and used the domain name in order
to disrupt Complainant’s business. Respondent is using the <publixapron.com> domain name to maintain a search engine website
with links to Complainant’s competitors.
In Disney
Enters., Inc. v. Noel,
FA 198805 (Nat. Arb. Forum Nov.
11, 2003), the panel found that the respondent had registered and used the
<euro-disney.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii)
because it resolved to a website promoting a competing theme park. Here, then, Respondent’s use of the disputed
domain name for similar purposes provides evidence that it registered the
domain name primarily to disrupt Complainant’s business under the PUBLIX and
APRON’S marks in violation of Policy ¶ 4(b)(iii). See
The Panel finds that Complainant 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 <publixapron.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 13, 2007.
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