Kroger Co. of Michigan c/o Ralphs Grocery Company v. Fleming & Co. c/o Star Asset Management Limited
Claim Number: FA0704000956497
Complainant is Kroger Co. of Michigan c/o Ralphs
Grocery Company (“Complainant”),
represented by Andrew B. Peterson, of McAfee & Taft A Professional Corporation, Tenth Floor, Two
Leadership Square, 211 North Robinson, Oklahoma City, OK 73102-7103. Respondent is Fleming & Co. c/o Star Asset
Management Limited (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <food4less.com>, registered with Network Solutions, Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 9, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 11, 2007.
On April 10, 2007, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <food4less.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 April 13, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 3, 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@food4less.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 10, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
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 <food4less.com> domain name is identical to Complainant’s FOOD 4 LESS mark.
2. Respondent does not have any rights or legitimate interests in the <food4less.com> domain name.
3. Respondent registered and used the <food4less.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kroger Co. of
The <food4less.com> domain name was first registered by Fleming Companies, Inc. on March 4, 1997. Fleming Companies, Inc. filed for bankruptcy on July 11, 2003 and agreed to transfer rights in the <food4less.com> domain name to Surry Licensing LLC. As part of a separate agreement, Surry Licensing agreed to transfer its rights in the <food4less.com> domain name to Complainant.
Before Complainant acquired rights to the <food4less.com> domain name,
Respondent became the registrant of record on December 19, 2003 without the
consent of Surry Licensing LLC or Complainant. The record is unclear as to how Respondent
became the registrant of record.
Fleming Companies, Inc. is
not the same company, and has no relation to Respondent, Fleming & Co. c/o
Star Asset Management Limited.
Respondent previously used the <food4less.com> domain name to display a list of hyperlinks advertising various grocery stores. However, Respondent’s registration lapsed on March 5, 2007, and Respondent has not renewed the registration. The <food4less.com> domain name is still active with the same hyperlinks advertising various grocery stores, but is now being hosted by the registrar, Network Solutions, Inc. while Respondent’s usage of the <food4less.com> domain name is pending renewal or deletion.
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.
Under the Policy, registration of a mark with an appropriate governmental authority confers rights in that mark to Complainant. Since Complainant holds several trademark registrations with the USPTO for the FOOD 4 LESS mark, the Panel finds that Complainant has established rights in the FOOD 4 LESS mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also Innomed Tech., 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.”).
Respondent’s <food4less.com> domain name contains Complainant’s FOOD 4 LESS mark in its entirety without the spaces, and with the addition of the generic top-level domain (“gTLD”) “.com.” The omission of spaces and addition of a gTLD fail to properly distinguish Respondent’s domain name from Complainant’s mark under an analysis of Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent’s <food4less.com> domain name is identical to Complainant’s FOOD 4 LESS mark pursuant to Policy ¶ 4(a)(i). See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminate[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”); see also Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum March 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <food4less.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant has alleged that Respondent is not commonly
known by the <food4less.com>
domain name. The WHOIS information
identifies Respondent as “Fleming & Co. c/o
Star Asset Management Limited,” and the Panel finds no evidence in the
record indicating that Respondent is affiliated with “Fleming Companies, Inc.,”
the original registrant of the <food4less.com>
domain name. Respondent is not licensed
or authorized to use the FOOD 4 LESS mark, and the Panel can find no other
evidence in the record indicating that Respondent is commonly known by the <food4less.com> domain name. Therefore, the Panel concludes that
Respondent is not commonly known by the <food4less.com>
domain name pursuant to Policy ¶ 4(c)(ii). See
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); see also Ian
Schrager Hotels, L.L.C. v. Taylor, FA
173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable
evidence to support the assertion that a respondent is commonly known by a
domain name, the assertion must be rejected).
Respondent is using the <food4less.com> domain name to
display a list of hyperlinks advertising various grocery stores. These grocery stores compete with
Complainant’s business, and such use does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii). See 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); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2004) (“Respondent’s appropriation of the SAFLOK mark to market
products that compete with Complainant’s goods does not constitute a bona fide
offering of goods and services”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <food4less.com> domain name to display a list of hyperlinks, some of which lead to the websites of Complainant’s competitors. This is likely to disrupt Complainant’s business by diverting potential customers to Respondent’s website. The Panel finds that such registration and use of the <food4less.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Svcs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed domain name resolved to a website that displayed commercial links to the websites of the complainant’s competitors); see also 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)).
Respondent’s <food4less.com> domain name, which is identical to Complainant’s FOOD 4 LESS mark under the Policy, is likely to cause confusion among customers searching for Complainant’s grocery stores and products. Specifically, customers may become confused as to the affiliation, endorsement, or sponsorship of the competing goods and services advertised by the links on Respondent’s website. Respondent presumably receives click-through fees for each misdirected Internet user, and is therefore attempting to commercially benefit from this likelihood of confusion between Respondent’s domain name and the goodwill associated with Complainant’s FOOD 4 LESS mark. Therefore, the Panel finds that Respondent’s registration and use of the <food4less.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
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 <food4less.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: May 21, 2007
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