DECISION

 

Prevo's Family Markets, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico

Claim Number: FA2407002108637

 

PARTIES

Complainant is Prevo's Family Markets, Inc. ("Complainant"), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico ("Respondent"), Panama.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <spartannassh.com>, registered with NameCheap, Inc.

 

PANEL

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.

 

James Bridgeman SC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on July 29, 2024; Forum received payment on July 29, 2024.

 

On July 29, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <spartannassh.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 July 30, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 19, 2024 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@spartannassh.com. Also on July 30, 2024, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On August 20, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the disputed domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant claims rights in the SPARTANNASH mark established by the ownership of the United States registered trademark described below and extensive use of the mark by its group of companies including on the website at <www.spartannash.com> and on social media since 2013.

 

Complainant alleges that the disputed domain name is confusingly similar to the SPARTANNASH mark because it contains the mark in its entirety.

 

Complainant further argues that it is a well-established that a generic Top-Level Domain ("gTLD") extension is irrelevant when conducting an analysis under Policy ¶ 4(a)(i) and therefore the requirement of confusing similarity it met.

 

Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name, and arguing that Respondent bears the burden of production in proving such rights in the disputed domain name, argues:

·       Respondent is not a licensee of Complainant;

·       Complainant's prior rights in the disputed domain name precede Respondent's registration;

·       Respondent is not commonly known by the disputed domain name;

·       Respondent's registration of the disputed domain name relates directly to Complainant and its business;

·       there is no other company or mark using the name SPARTANNASH;

·       a browser search for the term "Spartan Nash" reveals search results related to Complainant's own website at <www.spartannash.com>;

·       Respondent does not use the disputed domain name in connection with any bona fide offering of goods or services;

·       a screen capture which is exhibited in an annex to the Complaint, shows that Respondent is putting the disputed domain name to a commercial use as the address of a website that offers third party advertising links;

·       Respondent's intent in registering the disputed domain name was to divert Internet traffic away from Complainant, not to legitimately use the disputed domain name in connection with the sale of goods;

·       the addition of the letter to create "ss" in the disputed domain name are a typo that unsuspecting consumers are not likely to see;

·       Complainant's rights to the SPARTANNASH mark precedes Respondent's registration of the disputed domain name;

·       Respondent does not have common law protection of the disputed domain name because the disputed domain name is not commonly known.

 

Complainant concludes by arguing that it has carried out a search of the Forum's decided decisions database which shows that Respondent is a serial cybersquatter who has registered multiple domain names that infringed on brand owners' rights and has been the unsuccessful respondent in 314 of 316 cases under the Policy. Therefore, Respondent's activities amount to a pattern of bad faith conduct related to the disputed domain name.

 

Complainant next alleges that the disputed domain name was registered and is being used in bad faith, arguing that Respondent had actual knowledge of Complainant's SPARTANNASH mark prior to the registration of the disputed domain name.

 

Respondent registered the disputed domain name that contains the SPARTANNASH trademark with the addition of an extra "s" which is typosquatting. There would be no reason to register a domain name that included a misspelling of the SPARTANNASH trademark and use that domain name unless the Respondent knew of Complainant and its SPARTANNASH brand products and services.

 

The only conceivable explanation for registration of the disputed domain name is to confuse Complainant's customers which alone shows bad faith.

 

By adding a second letter "s" to the SPARTANNASH mark in the disputed domain name Respondent is engaged is typosquatting, and so Respondent is using the disputed domain name to directly compete against Complainant diverting Internet traffic for Internet traffic that is trying to reach Complainant. Such use constitutes bad faith pursuant to Policy ¶ 4(b)(iii). David Hall Rare Coins v. Tex. Int'l Prop. Assocs., FA 915206 (Forum Apr. 9, 2007) (finding that a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) where that respondent used the domain name to advertise goods and services of a complainant's competitors, thereby disrupting that complainant's business).

 

Respondent is trading on Complainant's rights by creating confusion by associating the disputed domain name with the directly competing website offering commercial advertising links to divert traffic that should have reached Complainant, and such use constitutes bad faith. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

 

Complainant adds that Respondent's diversion of traffic to a competing advertising content also shows

 

Complainant adds that so long as Respondent controls the disputed domain name it has the ability to control the emails associated with the disputed domain name and the DNS settings and argues that neither Complainant nor its customers should bear that risk, which is additional evidence of Respondent's bad faith.

 

Again, alleging that Respondent is a serial cybersquatter Complainant concludes by arguing that the record shows that in 314 of 316 cases, the panel established under the Policy have found Respondent acted in bad faith without any bona fide or legitimate rights. This establishes that Respondent has engaged in a pattern of bad faith conduct.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant and its group of companies act as distributors, wholesalers, and retailers of food ingredients across the United States.

 

Complainant is the owner of United States registered service mark SPARTANNASH, registration number 4,579,950, registered on the Principal Register on August 5, 2014, for services in international class 35.

 

Complainant also owns a number of the United States registered service mark registrations for the SPARTAN STORES mark for services in international class 35.

 

The disputed domain name <spartannassh.com> was registered on July 24, 2024, and it resolves to a website with links to third party websites.

 

There is no information available about Respondent, except for that provided in the Complaint as amended, the Registrar's WhoIs, and the information provided by the Registrar in response to the request by Forum for details of the registration of the disputed domain name for the purposes of this proceeding.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 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").

 

Identical and/or Confusingly Similar

Complainant has provided uncontested convincing evidence of its rights in the SPARTANNASH service mark established by its the ownership of the abovementioned registration in the United States.

Complainant also refers to its ownership of United States registered service mark SPARTAN STORES mark for services in international class 35, but for the purposes of this proceeding it is not necessary to consider its arguments that rely on those registrations. It is sufficient to consider the arguments as they relate to Complainant's rights in the SPARTANNASH mark.

 

The disputed domain name disputed domain name <spartannassh.com> is composed of Complainant's mark in its entirety, albeit with an additional letter "s", together with the generic Top Level Domain ("gTLD") extension <.com>.

 

Complainant's mark is clearly recognsizable within the disputed domain name and the additional letter "s" is likely to be ignored or not noticed by Internet users, particularly as the letter is positioned to create a double "s".

 

Additionally, in the present case, the gTLD extension <.com> within the disputed domain name does not prevent a finding of confusing similarity, because it would be considered by Internet users to be a necessary technical element for a domain name.

 

This Panel finds therefore that the disputed domain name is identical to the SPARTANNASH mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant has made out a prima facie case that the Respondent has no rights legitimate interests in the disputed domain name as set out in Complainant's detailed submissions above.

 

It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.

 

Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant's distinctive SPARTANNASH mark is clearly recognizable within the disputed domain name. Complainant's rights in the mark date back at least to when it was registered on August 5, 2014. The disputed domain name was not registered until July 24, 2024.

 

The exact extent of Complainant's goodwill and reputation in the SPARTANNASH mark is not clear from the Complaint as Complainant's arguments combine it with the goodwill and commercial activities of another member of its group of companies, and furthermore the Complaint does not distinguish between Complainant's use of the SPARTANNASH and the SPARTAN STORES mark. Nonetheless the screen capture of Complainant's website at <www.spartannash.com> provides evidence of Complainant's use of the mark and consequent goodwill on the Internet.

 

The disputed domain name is composed of Complainant's distinctive mark with an additional letter "s", creating a double letter "s", which closely follows the double letter "n" creating the confusingly similar <spartannassh.com>. It is improbable that the registrant of the disputed domain chose and registered the disputed domain name for any purpose other than as a misspelling of Complainant's SPARTANNASH mark.

 

This Panel finds therefore, that on the balance of probabilities the disputed domain name was in fact chosen and registered with Complainant's mark in mind.

 

The misspelling of Complainant's mark in the disputed domain name was, on the balance of probabilities, an act of typosquatting which was intended to take predatory advantage of the goodwill and reputation that Complainant has established in the mark.

 

The exhibited screen capture of the website to which the disputed domain name resolves shows that Respondent is using the disputed domain name in bad faith as the address of a website with no content other than links to third party websites.

 

On the balance of probabilities Respondent is receiving pay-per-click revenue from these links. This Panel finds therefore that by using the disputed domain name in this fashion, Respondent has intentionally attempted to attract, for commercial gain, Internet users to her web site, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of her web site which constitutes bad faith for the purposes of the Policy.

 

Furthermore, the record shows that Respondent has been found to engage in bad faith registration of domain names on many occasions under the Policy and which constitutes a pattern of behavior from which bad faith registration may be inferred in the circumstances of the present proceeding.

 

This Panel finds therefore that the disputed domain name was registered and is being used in bad faith and Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <spartannassh.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

__________________________________________

 

James Bridgeman SC, Panelist

Dated: August 22, 2024