The Stop & Shop Supermarket Company
LLC v. Jaros Wronzo
Claim Number: FA0501000411764
PARTIES
Complainant
is The Stop & Shop Supermarket
Company LLC (“Complainant”), represented by David M. Magee, of Bingham, McCutchen LLP, 150
Federal Street, Boston, MA 02110. Respondent is Jaros Wronzo (“Respondent”), 1450 Worcester Road, Framingham, MA
01702.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <stopandshoppharmacy.com>, <stopandshoppharmacy.net>, <stopandshoppharmacy.org>, <stopandshoppharmacy.info>, <stopandshoprx.com>, <stopandshoprx.net>, <stopandshoprx.org>, and <stopandshoprx.info>, registered
with Go Daddy Software, Inc. They are all hereinafter referred
to as “the disputed domain names”.
PANEL
The
undersigned, David H Tatham, 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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“NAF”) electronically
on January 31, 2005; the NAF received a hard copy of the Complaint on February
7, 2005.
On
February 1, 2005, Go Daddy Software, Inc. confirmed by e-mail to the NAF that
the domain names <stopandshoppharmacy.com>, <stopandshoppharmacy.net>, <stopandshoppharmacy.org>, <stopandshoppharmacy.info>, <stopandshoprx.com>, <stopandshoprx.net>, <stopandshoprx.org>, and <stopandshoprx.info> are all
registered with Go Daddy Software, Inc. and that the Respondent is the current
registrant of the name. Go Daddy Software, Inc. has verified that Respondent is
bound by the Go Daddy Software, Inc. registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
February 11, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 3, 2005 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@stopandshoppharmacy.com, postmaster@stopandshoppharmacy.net,
postmaster@stopandshoppharmacy.org, postmaster@stopandshoppharmacy.info, postmaster@stopandshoprx.com,
postmaster@stopandshoprx.net, postmaster@stopandshoprx.org, postmaster@stopandshoprx.info
by e-mail.
On
March 3, 2005, Respondent submitted a request for additional time to submit a
response pursuant to the NAF’s Rule 6. An Order Granting Extension of Time to
Respond was issued, setting a new deadline of March 23, 2005 by which
Respondent could file a Response to the Complaint.
A
Response which was dated March 23, 2005 was not received by the NAF until March
24, 2005. However the NAF did not raise the issue of a late response and
neither did Complainant in its very lengthy Additional Submission, all of which
is devoted to rebutting the response. The Panel has therefore decided that it
would be inequitable and unfair on an unrepresented individual Respondent to
ignore the Response and so it has been taken into account in the Decision.
An
Additional Submission from Complainant was received in a timely manner on March
28, 2005 and it was deemed to comply with the NAF’s Supplemental Rule 7.
On April 1, 2005 pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the NAF appointed David H Tatham
as Panelist.
On April 4, 2005 Respondent filed a “Supplemental
Submission”. Not only was this out of time as it did not comply with the NAF’s
Supplemental Rule 7, but it was received after the Panel had been appointed. It
will not be taken into account and, in preparing this Decision, the Panel has
not even read it.
On April 5, 2005, pursuant to Rule 12 of the Policy, the
Panel requested the parties to file copies of their Submissions in Microsoft
Word format. Both complied within 24 hours.
RELIEF SOUGHT
Complainant
requests that the disputed domain names be transferred from Respondent to
Complainant.
FACTUAL BACKGROUND
Complainant
is a large supermarket chain, with its centre of operations in New England,
USA.
Respondent
appears to be of Ukrainian origin, but resident in the USA. Other facts about
both parties appear from the Submissions below.
Complainant
is the owner of a US federal service mark registration for STOP & SHOP, No.
1,690,656, for retail store supermarket services. A copy of this registration was attached to the Complaint.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
contends that all of the disputed domain names are identical or confusingly
similar to its registered service mark STOP & SHOP which incorporates the
colors of red and green, and which it has used in interstate commerce since at
least as early as 1972. Furthermore, as
part of its retail supermarket services, Complainant has provided and continues
to provide retail pharmacy and pharmacy-related services utilizing the service
mark “Stop & Shop Pharmacy.”
Complainant
also contends that the disputed domain names are confusingly similar to its
domain name <stopandshop.com>.
Complainant contends that Respondent
should be considered as having no rights or
legitimate interests in respect of the
disputed domain names. To Complainant’s
knowledge, Respondent (as an individual,
business, or other organization) has never been
commonly known by any of the disputed
domain names at issue. Respondent’s use of, or
demonstrable preparations to use, the
disputed domain names have not been in
connection with a bona fide offering of
goods or services. Instead, and without
any
permission or authorization from
Complainant, Respondent has attempted to mislead
consumers or to tarnish Complainant’s service mark by setting up websites which
use
Complainant’s marks, logos, slogans, and
color schemes. This has
demonstrated a desire to misleadingly
divert consumers and tarnish the Complainant’s
trademarks by unauthorized conduct,
including without limitation, the following:
(1)
Use of
Complainant’s STOP & SHOP mark and unique color scheme on Respondent’s
website;
(2)
Use of
Complainant’s “Stop & Shop Pharmacy” service mark and distinctive color
scheme on Respondent’s website;
(3)
Direct
efforts to link Stop & Shop’s website and domain name (StopandShop.com) in
the minds of consumers through use of the Complainant’s trade and service
marks;
(4)
Suggesting
that “Management and Control” for Respondent’s stopandshoppharmacy and
stopandshoprx websites is Complainant; and
(5)
Directly
listing “Stop & Shop” on Respondent’s website in supposed association with
the contents of the page.
A representative copy of the content from
each of the disputed domains was attached to
the Complaint.
Complainant contends that the disputed
domain names should be considered as
having been registered and as being used
in bad faith in the light of Respondent’s
patently obvious prior knowledge of
Complainant’s use of its trademarks to market its
retail supermarket and pharmacy related
services. Through use of the domain names,
Respondent has intentionally attempted to
attract Internet users to Respondent’s website,
by creating a likelihood of confusion
with Complainant’s mark as to the source,
sponsorship, affiliation, or endorsement
of Respondent’s website. In fact, there
has been
no such authorization or endorsement.
Also, circumstances indicate that Respondent has registered
or has acquired the disputed domain names at least partially for the purpose of
selling, renting, or otherwise transferring the domain name registration to the
Complainant, who is the owner of the trademark, or to a competitor of that
Complainant, for valuable consideration in excess of Respondent’s documented
out-of-pocket costs directly related to the domain name. By its registration of the
StopandShopPharmacy and StopandShopRx domains, each with the .net,
.org, .info and the most obvious “.com” derivatives of Complainant’s trade
and service marks, Respondent has intentionally taken a blocking position,
preventing the owner of the trade and service marks from reflecting the marks
in any corresponding .com, .net, .org, or .info domain name. Adoption of a blocking position precluding a
trademark holder from registering its own service mark plainly suggests an
attempt to obtain payment for such domain names.
After receipt of a cease and desist letter from counsel for
Complainant, a copy of which (excluding exhibits) was attached to the
Complaint, Respondent refused to transfer the domain names to Complainant. Respondent’s registration of these names,
and refusal to transfer the names after receipt of a cease and desist letter
from Complainant, displays a pattern of such unlawful conduct.
B.
Respondent
From
the Response, it is clear that Respondent has strong connections with Ukraine.
Indeed he attempts to substitute a Ukrainian individual for himself by stating
in the Response that the name of the Respondent is: “Andyi Rybak, through representative in USA Jaros Wronzo” with an
address in Kiev, Ukraine. It is also clear from the Response that whoever it
was written by does not have English as his first language. However the
following contentions can be gleaned from the Response –
·
The
disputed domain names were registered legitimately following an investment in
market research and web development.
·
The
disputed domain names were registered on December 9 and 18, 2003 respectively
and were parked, so Complainant had plenty of time to discover them and
complain before Respondent began to spend money on marketing and on website
development.
·
In order to
prevent any further possible confusion, Respondent makes an offer to post a
disclaimer on his websites which will clearly state that he is not an Affiliate
of Complainant, or indeed any other information which will satisfy Complainant.
·
The
websites at the disputed domain names will offer Russian pharmacy drugs in the
Russian language.
·
The parked
web pages, at the moment, only contain pictures of flies which do not suggest
in any way that it is Complainant’s supermarket, selling pharmacy products.
·
According
to Respondent’s investigation, Complainant’s supermarket does not have any
pharmacy department.
·
The word StopAndShopPharmacy has
been registered as a trademark in Ukraine under No. 2005 02886 in color and StopAndShopRx was registered
in Ukraine under No. 2005 02918 on March 21, 2005, also in color. The colors
are not the same as Complainant’s logo. Documents purporting to be copies of
the registration certificates of these marks were attached to the Response.
·
As a result
of the Complaint, Respondent is thinking of using its websites to create a
forum for free public opinion about Complainant’s supermarket prices and the
quality of its goods and service in comparison with those of other leading US
supermarkets, but only if it obtains the extra resources needed to develop and
support such a site.
·
The
disputed domain names were not registered and are not being used in bad faith,
because from October, 2003 Respondent planned to use the domains for the
purpose of selling medical drugs from Russian and Canadian wholesale pharmacies
and to become affiliated with them.
Copies of e-mails from organisations called RxRevenue.com and
Drugstore.com Inc. in November and December 2004 were attached to the Response.
The products would be for Russian and English speaking customers all over the
world and not only in the USA where Complainant has its supermarkets and where
it has registered the service mark “Stop & Shop”. The Internet is
worldwide, so there is no reason why Complainant’s service mark, registered in
the US, should have privilege over Respondent who has registered its service
and trade marks in Ukraine.
·
Respondent
never proposed to sell the disputed domain names to anyone. The only purpose in
registering them was to use them for Respondent’s own business and customer
information.
·
Complainant
has its own domain name <stopandshop.com>, which is much more convenient
for customers trying to reach this company, instead of typing a much longer
name such as StopAndShopPharmacy.com.
·
Mr. Rybak Andryi,
who is a citizen of and resident in Ukraine had no idea that such a name as
Stop & Shop even existed. It is not a worldwide, well-known or famous name.
It is not registered in Ukraine or Russia, so there is no reason why he should
know about it in Ukraine.
·
Complainant’s
representative was aware that Respondent was in the process of filing to
register its service mark and trademark in Ukraine and was ready to upload
files to the disputed domain names in order to get it up and running, but they
ignored it and started the Complaint. As a result, Respondent is not able to
manage the disputed domain names and will lose profit accordingly.
Consequently, Respondent seeks compensation of $30,000 for lost profit
and for not being able to use its websites.
C.
Additional Submissions
Complainant
filed a long, detailed and repetitive Additional Submission. It is summarized
here, but repetitions of contentions made in the Complaint have mostly been
omitted.
In
the first place, Complainant notes that Respondent, Jaros Wronzo a/k/a Jarosla
Waronzo a/k/a Simon, has made certain admissions in his Response not the least
of which is that he has registered and is using and/or making preparations to
use the disputed domain names, which are identical to its long established Stop
& Shop trade and service marks, in connection with the sale of identical
goods (pharmaceuticals) and services in direct competition with
Complainant. Respondent admits that he
will be using foreign sources for these pharmaceutical drugs and/or other
pharmacy or medically related goods.
Complainant
further asserts that it has become aware of additional facts subsequent to
filing the Complaint. These facts, in
combination with Respondent’s own admissions in his Response, confirm that
Respondent’s actions are in violation of the UDRP as well as Complainant's
statutory and common law trademark rights.
I. The Parties
A. Complainant and Its Business
Complainant
is part of the 5th largest retail grocery company in the United States. Since its founding in 1914, Complainant has
grown steadily.
In
1981, it opened its first Stop & Shop Pharmacy store.. During the next 24 years, Stop & Shop
expanded its Stop & Shop Pharmacy division to include more than 270 stores
throughout the U.S. states of Massachusetts, New Hampshire, Rhode Island,
Connecticut, New Jersey, and New York. A list of these stores was attached to
the Additional Submission. These pharmacies fill approximately 10,000,000
prescriptions per year. Approximately fifty percent (50%) of these prescriptions
are for senior citizens. With each senior filling multiple prescriptions, Stop
& Shop Pharmacies currently serve approximately 800,000 senior citizens.
Complainant
has made a point of identifying its products or services with the words
"Stop & Shop" as a prefix or suffix. It holds multiple trade or service mark registrations for the
STOP & SHOP prefix standing alone.
In addition, it has registered some thirteen marks and has three
additional applications pending which are also Stop & Shop -formative. Each and every live mark currently
registered with the United States Patent and Trademark Office using the phrase
“Stop & Shop” is owned and controlled by Complainant, and a list of these
marks was included in a footnote to the Additional Complaint.
All
of Complainant’s current advertisements contain the STOP & SHOP, “Stop
& Shop Pharmacy”, and/or “Stop & Shop Rx” mark, and it makes
substantial investments in advertising and marketing the products designated by
its trademarks and service marks. Complainant
spends tens of millions of dollars each year in television, radio, newspaper,
magazine, billboard, and other advertising to maintain and develop further
goodwill in its marks.
B. Respondent
In
his initial communications with the NAF, Respondent lists his name as Jaros Wronzo at “Stop
and Shop Pharmacy, Co.”, 57 Jayne Street, Attleboro, Massachusetts
02703. Counsel for Complainant conducted an online search of corporate filings
at the Massachusetts Secretary of State, and found no entity named Stop and
Shop Pharmacy, Co. When he inquired as
to whether Respondent had paid any federal or state or local taxes for his
business entity, Respondent replied that it must have been a mistake that he
listed Stop and Shop Pharmacy, Co. in his email as no such entity exists.
Respondent
registered the disputed domain names with Go Daddy Software, Inc. in December
2003. According to the WHOIS database
of Go Daddy Software, Inc., the disputed domain names are registered to Jaros
Wronzo at 1450 Worcester Road, Framingham, MA 01702. Complainant attempted to
contact Respondent at this address, but was unsuccessful. The front desk at this housing development
indicated to Complainant’s counsel that they have never heard of “Jaros
Wronzo”. Respondent now asserts that he is acting on behalf of one Andyi Rybak
, for whom he supplies a Ukrainian address.
The disputed domain name registrations do not and have not ever listed
Mr. Rybak as having any interest in the domains, and Respondent has failed to
provide any evidence substantiating his assertions. Respondent should not be
afforded the opportunity to assert that he is not the registrant of the
disputed domain names at this late date.
Respondent’s assertions in his Response that a third-party is the actual
registrant is nothing more than attempts either to circumvent the UDRP’s freeze
on transfers of domains involved in UDRP proceedings or to evade jurisdiction
in the US by claiming that he is only acting on behalf of a foreign person.
II. The Parties' Contentions
A. The
Disputed Domains are identical and/or confusingly similar to Stop & Shop’s
trade and service marks.
Consumer
confusion in this case is more than likely.
Respondent does not and cannot deny the similarity of the marks and of
the goods sold under the marks. The
StopandShopPharmacy and StopandShopRx marks are identical to the marks used by
Complainant since at least as early as 1981.
The marks and the disputed domain names consist of the same word
components (Stop and Shop Pharmacy and Stop and Shop Rx), they mean the same,
and they are used for marketing pharmacy related merchandise. Indeed, even the color combinations used for
the marks (red and green) are strongly similar in tone if not identical.
Attached
to the Additional Complaint was an Affidavit from one of Complainant’s Senior
Managers and attached to this was a copy of a pharmacy prescription receipt
dated August 25, 1996 and a series of photographs taken prior to January 30,
2002. In both the receipt as well as the photographs, Complainant’s uses of
both Stop & Shop Pharmacy and Stop & Shop Rx are evidenced. Complainant
asserts that this evidence establishes its use of the Stop & Shop Pharmacy
and Stop & Shop Rx marks in commerce before Respondent’s registration of
the disputed domain names.
The
Additional Complaint then proceeds to set out why the disputed domain names
might constitute trademark infringement under the Lanham Act and at the common
law. This is not relevant to a UDRP dispute and it is omitted from this
summary, apart from one or two arguments that are deemed by the Panel to be
apposite.
Complainant
contends that Respondent’s reliance on a coloration difference to distinguish
his use of the marks is misplaced. A
consumer would not recognize a difference in color when typing
stopandshoppharmacy or stopandshoprx into his or her web browser as the text of
a URL in a web browser is consistently black in color. Further, it is highly unlikely that a
consumer would appreciate a coloration difference of an ampersand to differentiate
between Complainant’s name – Stop & Shop – and Respondent’s domain
names.
Respondent
argues that he will add a disclaimer to the disputed domain names indicating no
affiliation with Complainant. By his
very own admissions, Respondent has indicated his intention to use the disputed
domain names to set up a competing commercial venture to sell pharmaceutical
drugs and other pharmacy or medically related goods from Canadian and Russian
sources. The fact that the Respondent
would be capitalizing on Complainant’s goodwill developed at great expense, as
well as his infringement of Complainant’s trade and service marks cannot be
relieved through use of a disclaimer.
B. Respondent
has no rights or legitimate interests in the Disputed Domains.
Respondent
was aware of the existence of Stop & Shop Pharmacy. The address which he
provided in the registrations for the disputed domain names, as well as the
address supplied for purposes of the Complaint, are within 3 miles of six
different Stop & Shop Pharmacy locations.
Respondent
would have the Panel believe that he has made an investment in market research
and web development although he provides no evidence to support this assertion.
Further, Respondent admits that he is intending to set up a competing venture
to sell online pharmaceuticals, but Complainant questions the Respondent’s true
intentions as the content he maintains on the disputed domain names, to wit, a
grotesque image of flies engaged in a sex act cannot go far in establishing
goodwill in the disputed domain names.
The
Respondent’s self-serving late defensive registrations of the
StopandShopPharmacy and StopandShopRx trademarks in Ukraine after the
initiation of these proceedings should be given no weight. Complainant first voiced its opposition to
the Respondent’s registration of the disputed domains in a December 22, 2004
cease and desist letter. The Respondent
did not respond to this letter, so on January 31, 2005, Complainant initiated
the current proceeding before the NAF. Respondent cites two Ukrainian trademark
registrations to support his assertion that he has legitimate rights in the
disputed domain names, but trademark registrations in Ukraine are obtained via
a deposit not an examination system, so these two trademarks were applied for
and granted on March 18, 2005 and March 21, 2005. These late registrations are
purely a defensive measure aimed at lending credibility to Respondent’s
extortionist efforts.
Complainant
is confused by the Respondent’s statement that it did not have any Stop &
Shop Pharmacies when he registered these Ukrainian marks. As has already been seen, Complainant opened
its first Stop & Shop Pharmacy in 1981, and as of March 2005, Complainant
operates over 270 Stop & Shop Pharmacies throughout New England (including
Massachusetts). The Respondent was on
notice of this as he is a Massachusetts resident, the corporate headquarters of
Stop & Shop is in Massachusetts, and in addition, each of the contact
addresses the Respondent uses are in areas with many Stop & Shop Pharmacies
within a short distance.
1. Respondent’s
use of, or demonstrable preparations to use, the disputed domain names in
connection with setting up a competing commercial venture capitalizing on Stop
& Shop’s goodwill.
Respondent has admitted that he intends
to setup a competing venture to capitalize on Complainant’s goodwill. He states in his Response that he will use the
disputed domain names to sell pharmaceuticals drugs and other pharmacy or
medically related goods from foreign sources.
2. Respondent has never been commonly known by the domain
name.
As
pointed out in B above, Respondent’s use of the name “Stop and Shop Pharmacy,
Co.” was a mistake.
3. Respondent
is unfairly attempting to make a commercial gain and misleadingly divert
consumers in violation of Stop & Shop’s trade and service mark rights.
Respondent's
intention to use the Stop & Shop Pharmacy and Rx marks and to cash in on
Complainant's goodwill is clearly evident from its registration of the marks in
the Ukraine even after being placed on notice that Stop & Shop had the
exclusive rights to sell under the mark.
It has been held that the knowing use by an infringer of a trademark
identical to that of the trademark owner is strong evidence of intentional
infringement. Davidoff Extension,
S.A. v. Davidoff Comercio E Industria Ltda., 747 F.Supp. 122, 127
(D.P.R.1990), Plasticolor Molded Products v. Ford Motor Co., 698 F.Supp.
199, 201 (C.D.Cal.1988).
C. Respondent
has registered and/or is planning to use the Disputed Domains in bad faith.
The
disputed domain names should be considered as having been registered and as
being used in bad faith in light of Respondent’s obvious prior knowledge of
Complainant’s use of its trademarks to market pharmacy related services under
the name Stop & Shop Pharmacy. Through use of the disputed domain names,
Respondent has intentionally attempted to attract Internet users to his
websites, Respondent has now admitted that he intends to setup a competing
venture to capitalize on Complainant’s goodwill.
1. Respondent
has registered or has acquired the domain name primarily for the purpose of
selling, renting, or otherwise transferring the domain name registration to
Stop & Shop.
Subsequent
to the filing of this proceeding, on January 31, 2005, Respondent contacted
Complainant’s counsel who returned Respondent’s telephone call on February 2,
2005. During this telephone call,
Respondent indicated that he felt that the disputed domain names were worth
$100,000, and that short of that, Complainant should “do whatever it has to
do.” The dollar value has changed since
that time, as Respondent now claims in his Response an entitlement to $30,000
in lost profits. Respondent’s motive
remains the same, however, to extort money from Complainant. It will be extremely difficult for
Respondent to establish any lost profits from the disputed domain names as they
are, by his own admission “parked” (inactive).
Respondent
claims that Complainant was aware that he was in the process of filing
Ukrainian trademarks and was ready to upload files to the website. This is a blatant falsehood. As stated above, Complainant first voiced
its opposition to the Respondent’s registration of the disputed domains in a
cease and desist letter on December 22, 2004. Respondent did not respond to
this letter, so on January 31, 2005, Complainant initiated these proceedings
before the NAF. It was not until after
the proceedings had begun that Respondent first contacted counsel for
Complainant.
2. Respondent
has registered the Disputed Domains in order to prevent the owner of the
trademark or service mark from reflecting the mark in a corresponding domain
name and has engaged in a pattern of such conduct.
By
its registration of the disputed domain names, Respondent has intentionally
taken a blocking position.
In
addition, it has come to light that the Respondent may also be involved in a
similar proceeding with Publix Supermarkets over the domain name
publixpharmacy.com. On March 2, 2005, a
partner from the law firm of Bingham McCutchen LLP forwarded the following
message to counsel for Complainant in this matter:
Voicemail message 3/2/05
“Hi, my name is Simon. I’m looking for someone who could help me,
uh, to . . . to, in court, with some sort of business. I do have website publixpharmacy.com and
Publix Supermarket trying to sue me.
I’m wondering what can I do to protect my rights. Can you represent me? Phone number I can be reached is
617-500-4587. 617-500-4587. My name is
Simon. Thank you.”
Complainant’s
Counsel verified that the voice in this message was that of Respondent, and
that the telephone number left in the message is the one that was provided by
Respondent to the NAF
.
3. Respondent
has registered the domain name primarily for the purpose of disrupting the
business of Stop & Shop.
The picture
on the websites at all of the disputed domain names of a grotesque image of
flies engaged in a sex act was placed there to tarnish Complainant’s name and
to cause it to contact Respondent, at which time Respondent would make a demand
for payment from Complainant. Rather
than negotiate with Respondent, Complainant chose to initiate the current
proceedings before this Panel.
4. Respondent
has intentionally attempted to attract, for commercial gain, Internet users to
Respondent’s web site or other on-line location.
By
his own admissions, Respondent has indicated that he intends to capitalize on
Complainant’s goodwill by diverting consumers seeking the Stop & Shop
Pharmacy to his website for commercial gain.
Consumers are likely to be confused by Respondent’s use of Stop &
Shop’s trade and service marks. Should
any of Complainant’s 800,000 senior citizen customers not realize that they are
being misleadingly diverted to a third-party website when they type
stopandshoppharmacy or stopandshoprx into their web browser and order
medications under the assumption that they are from Complainant when in reality
they are from questionable foreign sources, the outcome could be tragic.
DISCUSSION AND FINDINGS
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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.
Preliminary Issue
Before
coming to any conclusion on the above, the Panel must consider the preliminary
issue of the identity of Respondent.
The
disputed domain names are all registered in the name of a Mr. Jaros Wronzo and
he was named in the Complaint as the Respondent. In his Response, Mr. Wronzo
identifies the Respondent not as himself, but as a Mr. Andyi Rybak for whom an
address in Ukraine is given. Mr. Wronzo describes himself as Mr. Rybak’s
representative in the USA.
Furthermore,
during the course of the Complaint, Mr. Wronzo appears to have given more than
one address for himself, but clearly at least one is correct for he has
responded to the Complaint. It is also alleged by Complainant that he goes
under more than one name or alias.
Complainant
may be right when he asserts that, as a result of the above, Mr. Wronzo is
either trying to circumvent the ban on transferring domain names during a UDRP
Dispute, or that he is attempting to evade jurisdiction in the US by claiming
that he is only acting on behalf of a foreign person. But whatever the reason,
the Panel has no doubt that, as the registered owner of all the disputed domain
names, the Complaint is correctly directed to Mr. Jaros Wronzo rather than to
Mr. Jarosla Waronzo or to ‘Simon’ or to Mr. Rybak, and that he alone must
submit to the consequences.
Complainant claims to have a number of
trade or service marks consisting of or containing the words “Stop & Shop”.
It has produced documentary proof of only one of them, namely US federally
registered trademark No. 1 690 656 in which the words form part of a figurative
device which is partly in color. This mark gives 1972 as its date of first use
and it is incontestable. There is also evidence of considerable common law rights
in STOP & SHOP and STOP & SHOP PHARMACY. In addition, Complainant
claims to have registered the domain name <www.stopandshop.com>.
Complainant also claims to use STOP &
SHOP Rx, but there is no evidence of this. Despite a close examination by the
Panel of the photographs submitted by Complainant as part of its Additional
Submission, the only appearance of ‘Rx’ that can be seen is when it appears in
the centre of an oval logo on the white coat of the female pharmacist where it
is surrounded by the words ‘STOP AND SHOP PHARMACY’. This is not, in the
opinion of the Panel, use of STOP& SHOP Rx.
All of the 8 disputed domain names
contain Complainant’s name and mark in its entirety, but sometimes this
followed by the generic word ‘pharmacy’ and sometimes by the commonly used
prescription symbol ‘Rx’, both of which terms are of course descriptive of the
services provided by Complainant. Respondent offers to include a ‘disclaimer’
to the names on his website worded in any way satisfactory to Complainant.
However Complainant rejects this and clearly no disclaimer could possibly
overcome the undoubted similarity between on the one hand a supermarket with
the name “Stop & Shop” where pharmaceuticals are sold in a separate section
marked “Stop & Shop Pharmacy”, and websites called either “Stop and Shop
Pharmacy” or “Stop and Shop Rx” also offering pharmaceuticals for sale on the
other.
Respondent claims that because his names
use the colors red, yellow, green and blue they are different from
Complainant’s logo. Complainant claims that these colors are strongly similar
in tone to the red and green in its US registered trademark, but produces no
evidence thereof. The logo on the female pharmacist’s white coat in one of
Complainant’s shops is only coloured green. However the disputed domain names
are not registered in color and, as Complainant points out, no one types a name
into a web browser in color so the Panel has concluded that color is not an
issue and it does not remove any similarity between the trademark and the disputed
domain names.
Respondent does not attempt to deny this
similarity, and the Panel has concluded that in view of the overwhelming
evidence of Complaint’s rights in the names STOP & SHOP and STOP & SHOP
PHARMACY, and there can be no doubt that all of the disputed domain names are
confusingly similar to names and marks in which Complainant has rights. This is
compounded by Respondent’s avowed intention of using the disputed domain names
in direct competition to Complainant
Thus, the Panel finds that paragraph
4(a)(i) of the Policy is proved.
Complainant
makes a number of assertions under this heading which the Panel feels are
somewhat exaggerated. For example, what is “tragic” about a senior citizen
obtaining medicaments via an online website at less than the price charged by
Complainant at one of its stores? Nevertheless it has made out a substantial prima facie case, which puts the onus on
Respondent to refute it. This he has signally failed to do. There are a number of
defences under the Policy which are available to a Respondent, but none of them
apply in this case. Respondent has, as yet, made no bona fide offering of goods
or services under the disputed domain names; he has not commonly been known by
them; and he is not – at the moment – making any legitimate non-commercial or
fair use of them. It is true that he claims to be thinking of using the
websites at the disputed domain names to create a forum for free public opinion
about Complainant’s supermarket prices and the quality of its goods and service
in comparison with those of other leading US supermarkets, but this seems to be
little more than a pious hope for the future, and there is no evidence that
this has been done or that there are any concrete plans for doing so. It is
also an admission by Respondent of his awareness that Complainant is indeed a
leading US supermarket.
Respondent is quite open about his plans
to use the disputed domain names in order to offer medicines sourced from
either Russia or Canada. This has not happened yet, but when it does the
business would be in direct competition with Complainant who operates a chain
of some 270 pharmacies throughout six North-Eastern States of the USA. Respondent claims to have made an investment
in market research and web development, but he has produced no evidence
thereof. He only produces copies of two e-mails. The first, from RxRevenue.com
is to “Jaros” (which is presumably Respondent) thanking him for joining its
affiliate program. This proposes that he should register a suitable domain name
for his business, and it suggests a name containing “words like pharmacy, prescriptions, rx, medication, drugs, pills etc”.
What it does not do is to suggest that these words should be prefixed by
someone else’s existing name. The second e-mail comes from drugstore.com and it
is addressed to RUSSIANDIGEST@COMCAST.NET. It
implies that some money may already have been spent on joining “the largest online drugstore and pharmacy”
with substantial profits to come as a result, but there is no indication in it
of any connection between the entity to whom it is addressed and Respondent. In
any case, if Respondent had spent money on market research and website
development as he says he has (it should be noted that he makes no mention in
this context of the cost of registering the disputed domain names), there is
absolutely no reason why it should not now be directed towards creating and
maintaining a website under an entirely legitimate and neutral name.
There was an initial indication that
Respondent might have been trading as “Stop and Shop Pharmacy Co.” but as a
result of Complainant’s investigations, Respondent admitted that this was a
mistake.
Respondent asserts that the names
StopAndShopPharmacy and StopAndShopRx are the subject of two trademark
registrations in Ukraine and that the Complaint is therefore unfounded.
Certainly the attachments to the Response look like Ukrainian Trademark
Registration Certificates, but they are in Russian in the Cyrillic alphabet and
no translations have been provided. However the Panel has obtained a
translation of the name of the owner of these trademarks, which translates as
RYBAK ANDRE IVANOVICH. (‘Rybak’ apparently means ‘fisherman’.) This name is of
course very close to, if not identical, to the name of Respondent’s alleged
Ukrainian collaborator. So not only do these marks, on which Respondent sets
some store, not belong to him, but they are both dated after the date when
Complainant first objected to the disputed domain names. They are therefore
irrelevant to this dispute, as are Respondent’s remarks about Complainant’s
name being unknown in Ukraine or Russia. The Policy makes no geographical
distinction and the Internet is, as Respondent admits, worldwide in its scope.
Thus, the Panel finds that paragraph
4(a)(ii) of the Policy is also proved.
Respondent denies any bad faith on his
part, but this is difficult to credit.
Each of his contact addresses (assuming
he lives in one of them or visits them to pick up any mail) is, as Complainant
points out, within a short distance of several of Complainant’s stores. It is
inconceivable that he could not have known of the name. The fact that the
Ukrainian man whom he claims to represent, has no knowledge of Complainant is
irrelevant.
Furthermore, it is pointless for
Respondent to deny that he ever proposed selling his domain names. Complaint’s
counsel relates how he was asked $100,000 for them after the Complaint was
filed and although, in the Response, this sum is reduced to a $30,000
“compensation” package it comes to the same thing, namely a request for money
in return for either giving up the disputed domain names, or a commitment not
to use them. As Complainant points out, there has been no loss of profits by
Respondent for a website that is not yet fully operational.
There is clear evidence in this case that
registration of the disputed domain names would prevent or block Complainant
from registering them and, if they were ever to be put into full use they would
not only disrupt Complainant’s business but would also create confusion with
Complainant’s well-established name and mark.
This part of the Policy requires both
registration and use. All of the websites are currently being used
because they all contain the same picture of flies and the words “WE ARE COMING
SOON … AFTER ALL!” as well as references to STOP & SHOP. This is clearly
use, and it implies an intention on the part of their owner to put them into
full use shortly.
The Panel believes that Respondent is not
quite as wicked as Complainant tries to make out. Some of his actions appear to
have been more the result of ignorance or opportunism. Nevertheless, the Panel
finds that paragraph 4(a)(iii) of the Policy is also very clearly proved.
Final
Remarks
The Panel makes no comment on the alleged
involvement of Respondent in another possible domain name dispute involving the
domain name <www.publixpharmacy.com>
But if proved, this could indicate a
pattern of disputatious domain name registration by Respondent.
Likewise, the Panel does not comment on
the unpleasantness, or otherwise, of the picture of copulating house flies
which appears at present on the websites at all of the disputed domain names.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief requested by Complainant shall be GRANTED.
Accordingly, it is Ordered that the <stopandshoppharmacy.com>, <stopandshoppharmacy.net>,
<stopandshoppharmacy.org>, <stopandshoppharmacy.info>,
<stopandshoprx.com>, <stopandshoprx.net>,
<stopandshoprx.org>, and <stopandshoprx.info>
domain names be TRANSFERRED from Respondent to Complainant.
David H Tatham, Panelist
Dated: April 11, 2005
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