Albertson's, Inc. v. Bruce Bennett d/b/a Coupon Corporation
Claim Number: FA0207000117013
Complainant is Albertson's, Inc., Boise, ID (“Complainant”) represented by David J. Steele, of Christie, Parker & Hale LLP. Respondent is Bruce Bennett d/b/a Coupon Corporation, Inc., San Antonio, TX (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <albertsonscoupons.com> and <albertsons-coupons.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 19, 2002; the Forum received a hard copy of the Complaint on July 26, 2002.
On July 24, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <albertsonscoupons.com> and <albertsons-coupons.com> are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the names. 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 July 26, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 15, 2002 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 email@example.com and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on August 15, 2002.
On August 26, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
The <albertsonscoupons.com> and <albertsons-coupons.com> domain names are confusingly similar to Complainant’s trade name and famous trademark ALBERTSONS and identical to Complainant’s common law mark ALBERTSONS COUPONS .
Respondent has no rights or legitimate interests in the <albertsonscoupons.com> and <albertsons-coupons.com> domain names.
Respondent registered and used the <albertsonscoupons.com> and <albertsons-coupons.com> domain names in bad faith.
Respondent asserts that it did not register the domain names to make money off Complainant. Respondent maintains that it would not use the domain names without permission from Complainant and that it desires to obtain such permission so it can place Complainant’s coupons on the Internet. Respondent pleads that it would not break the law in this or any manner.
Complainant has been using the ALBERTSONS trademark and service mark continuously for more than sixty years. Albertson’s was founded in 1939. As a result of its extensive use, it has generated tremendous goodwill and grown to 2,492 stores in 37 states.
Complainant’s trademark rights in the mark ALBERTSONS began with the opening of the first Albertson’s grocery store in Boise, Idaho in 1939. Complainant created the first combination food-drug stores in 1969 by forming a partnership with Skagg’s Companies, Inc. After a series of mergers and acquisitions, Albertson’s is now the second largest food-drug retailer in the United States. Albertson’s also operates pharmacies in many of its retail stores and presently has plans to operate pharmacies in a majority of its new Albertson’s stores. Albertson’s also operates a number of drug stores under the trade names Jewel-Osco, Sav-on, and Osco Drug. Over 24 million prescriptions are filled at Albertson’s pharmacies each year.
In addition to its numerous stores and pharmacy departments under the Albertson’s trade name and ALBERTSONS marks, Complainant is also the registrant of the domain name Albertsons.com, where it operates its extensive online store offering groceries for pick-up at a local store or home delivery. Many of Complainant’s several million customers access the web site each day.
In addition to Complainant’s long standing common law trademark rights in ALBERTSONS, Complainant owns numerous United States trademark registrations that incorporate its famous ALBERTSONS mark, including U.S. Reg. No. 885,630, for ALBERTSONS, which claims a first use of 1939.
Each week, Complainant’s printed store circular, which contain ALBERTSON’S COUPON discounts, reaches tens-of-thousands of homes around the United States. These advertisements contain special savings on assorted products as well as numerous ALBERTSON’S COUPON store discounts. Consumers are also aware of Albertson’s own store coupons. Albertson’s stores redeem thousands of ALBERTSON’S COUPON discounts, as well thousands of manufacture’s coupons each day.
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.
Identical and/or Confusingly Similar
Respondent’s registered domain names, <albertsonscoupons.com> and <albertsons-coupons.com>, are confusingly similar to the registered ALBERTSONS trademarks and service marks, and identical to the ALBERTSONS COUPON common law mark.
Respondent’s <albertsonscoupons.com> and <albertsons-coupons.com> domain names are confusingly similar to Complainant’s ALBERTSONS mark because Respondent misappropriates sufficient textual components from the mark so that an Internet user would be confused. In addition, Respondent’s domain names are confusingly similar because the addition of a generic word, “coupons,” to the ALBERTSONS mark has a substantial relation to Complainant’s business. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding confusing similarity were the domain name in dispute contains the identical mark of the Complainant combined with the generic term “online.”).
The <albertsonscoupons.com> and <albertsons-coupons.com> domain names are identical to Complaianant’s common law ALBERTSON’S COUPON mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that Complainant has common law rights in the mark FISHTECH which it has used since 1982).
Absence of the apostrophe is irrelevant because they are not permitted in domain names. In addition, the absence of a space and the hyphen between the words of the mark are not changes that are capable of overcoming a Policy ¶ 4(a)(i) identical analysis. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Technology Prop., Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000) (finding that the domain name <radioshack.net> is identical to Complainant’s mark, RADIO SHACK); see also Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Teleplace, Inc. v. De Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000) (finding that the domain names <teleplace.com>, <tele-place.com>, and <theteleplace.com> are confusingly similar to Complainant’s TELEPLACE trademark).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has no rights or legitimate interests in the <albertsonscoupons.com> domain name because it is used to redirect Internet traffic to <domainsystems.com/forsale>. At this website the domain name is offered for sale. Therefore, Respondent registered the domain name for the primary purpose of selling its registration rights; thus, Respondent has no rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) and (iii). See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where Respondent registered the domain name with the intention of selling it); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
Respondent has no rights or legitimate interests in the <albertsons-coupons.com> domain name since Respondent has never actively used or demonstrated plans to use the domain name. Respondent’s passive holding of the domain name for over a year warrants a finding of no rights or legitimate interests in <albertsons-coupons.com> pursuant to Policy ¶¶ 4(c)(i) and (iii). See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, Respondent had not used the domain names in connection with any type of bona fide offering of goods and services); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and Respondent is not commonly known by the domain name).
Further, Respondent has never been commonly known by the ALEBERTSONS mark, ALBERTSON’S COUPON common law mark or either of the two domain names. Complainant notes that Respondent is known by the names Bruce Benett and Coupon Corporation, Inc. Therefore, Respondent has no rights or legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent registered and used the <albertsonscoupons.com> domain name in bad faith for the purpose of selling the domain name registration rights. Respondent uses the domain name to direct Internet traffic to a website that offers the domain name registration for sale. Therefore, such a use evidences bad faith registration and use pursuant to Policy ¶ 4(b)(i). See General Elec. Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that Respondent registered and used the domain name in bad faith by using the domain name to direct users to a general site offering the domain name for sale); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
Respondent’s passive holding of the <albertsons-coupons.com> domain name is also bad faith. A domain name that is passively held for over a year is evidence of bad faith under Policy ¶ 4(a)(iii). Also, since the <albertsonscoupons.com> domain name registration is for sale, it is reasonable to infer that Respondent intends to sell the rights to <albertsons-coupons.com>. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale).
Respondent registered the domain names in order to prevent Complainant from registering its common law ALBERTSON’S COUPON mark in a corresponding domain name. Registering two domain names containing Complainant’s mark is sufficient to establish a pattern of conduct of bad faith required by Policy ¶ 4(b)(ii). Therefore, a finding of bad faith pursuant to Policy ¶ 4(b)(ii) is warranted. See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also YAHOO! Inc. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark).
Also, the ALBERTSONS trademarks and service marks are so obviously connected with Albertson’s that use by someone with no connection with Albertson’s suggests bad faith. See Deutsche Bank AG v. Diego-Arturo Bruckner, D2000-0277 (WIPO May 30, 2000)(“the domain name is so obviously connected with the Complainant and its services that its very use by someone with no connection with the Complainant suggests opportunistic bad faith.”). Likewise, just as the employment of a well-known business name in the food retailing field for no particular good reason undermines any claim to a legitimate interest, it also supports an inference of a bad-faith attempt to use the name to harass or exploit its legitimate owner. See Household International, Inc. v. Cyntom Enterprises, FA95784 (Nat. Arb. Forum November 11, 2000) (inferring that Respondent registered well known business name with hopes of attracting Complainant’s customers).
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 the requested relief shall be hereby GRANTED.
Accordingly, it is Ordered that the domain names <albertsonscoupons.com> and <albertsons-coupons.com> be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
Dated: September 5, 2002
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