Rite Aid Corporation and Name Rite, L.L.C. v. Jan Everno / The Management Group II
Claim Number: FA1907001850953
Complainant is Rite Aid Corporation and Name Rite, L.L.C. (“Complainant”), represented by Dana S. Gross of Bockius LLP, Washington, DC, USA. Respondent is Jan Everno / The Management Group II (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <riteaid.us> registered with UdomainName.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.
Paul M. DeCicco, Panelist.
Complainant submitted a Complaint to the Forum electronically on July 3, 2019; the Forum received payment on July 3, 2019.
On July 3, 2019, UdomainName.com LLC confirmed by e-mail to the Forum that the <riteaid.us> domain name is registered with UdomainName.com LLC and that Respondent is the current registrant of the name. UdomainName.com LLC has verified that Respondent is bound by the UdomainName.com LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 8, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 29, 2019 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@riteaid.us. Also on July 8, 2019, 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 August 1, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The two named Complainants in this matter are Rite Aid Corporation and Name Rite, L.L.C. Rite Aid Corporation is the corporate parent of Name Rite, L.L.C., a wholly-owned subsidiary of Rite Aid Corporation. The Panel therefore finds that the two complainants (herein referred to collectively as Complainant) have a sufficient nexus to each other and to the matters complained of herein such that they may be treated as if a single entity. See Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003) (treating the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names); see also, Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004) (finding a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark
A. Complainant
Complainant contends as follows:
Complainant is the third largest drugstore chain in the United States based on revenues and number of stores.
Complainant has rights in the RITE AID mark through its registration with the United States Patent and Trademark (“USPTO”).
Respondent’s <riteaid.us> domain name is identical to Complainant’s RITE AID mark as it incorporates the mark in its entirety and adds the top-level domain “.us.”
Respondent has no rights or legitimate interests in the <riteaid.us> domain name as Respondent is not commonly known by the domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name in connection with distribution of malware or phishing software.
Respondent registered and is using the <riteaid.us> domain name in bad faith by using the domain name to install malware or phishing software. Respondent is a serial cybersquatter and been subject of many UDRP cases which is evidence of bad faith. Lastly, Respondent had knowledge of Complainant’s rights in the RITE AID mark due to Complainant’s longstanding, continuous and extensive use of the RITE AID mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the RITE AID mark as demonstrated by its registration of such mark with the USPTO.
Complainant’s rights in the RITE AID mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent is not authorized to use Complainant’s trademark.
Respondent uses the at-issue domain name in connection with distribution of malware or phishing software.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its RITE AID trademark. Such registration is sufficient to demonstrate Complainant’s rights in the RITE AID mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <riteaid.us> domain name contains Complainant’s RITE AID trademark, less its impermissible space, followed by the country code top-level domain name “.us”. The slight difference between Respondent’s domain name and Complainant’s trademark, namely the addition of a top-level domain name, is insufficient to distinguish the domain name from the Complainant’s RITE AID trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <riteaid.us> domain name is identical to Complainant’s trademark. See Farouk Systems, Inc. v. Jack King / SLB, FA 1618704 (Forum June 19, 2015) (finding, “The ccTLD “.us” designation is inconsequential to a Policy ¶ 4(a)(i) analysis.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for <riteaid.us> identifies the domain name’s registrant as “Jan Everno / The Management Group II” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <riteaid.us> domain name. The Panel therefore concludes that Respondent is not commonly known by the <riteaid.us> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Additionally, Respondent uses the <riteaid.us> domain name to facilitate the distribution of malware or phishing software. Respondent’s use the of the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”); see also, Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either 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).”).
Given the forgoing and absent any contrary evidence from Respondent, Complainant satisfies its initial burden and shows Respondent’s lack of rights and legitimate interests in the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and was being used in bad faith. As discussed below, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Respondent is shown to have been involved in numerous UDRP proceedings where the complainant prevailed. Respondent’s pattern of cybersquatting suggests Respondent’s bad faith in the instant case under Policy ¶ 4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”)
Next as touched on above regarding rights and legitimate interests, Respondent uses the <riteaid.us> domain name to address a website that facilitates the distribution of malware or phishing software. Using a confusingly similar domain name in such manner additionally demonstrates Respondent’s bad faith under Policy ¶ 4(a)(iii). See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (“In addition, Respondent’s undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads further illustrates its bad faith in the registration and use of those domain names.”).
Finally, Respondent had actual knowledge of Complainant’s rights in the RITE AID mark when it registered <riteaid.us> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark and Respondent’s decision to register an identical domain name. Registering and using a confusingly similar domain name with knowledge of Complainant’s rights in such domain name independently shows bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <riteaid.us> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 2, 2019
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