SUPERVALU INC. v. Xedoc
Holding SA
Claim Number: FA0802001142605
PARTIES
Complainant is SUPERVALU
INC. (“Complainant”), represented by William Schultz, of Merchant & Gould,
P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shoppers.com>, registered with Scoopdomain.ca
Inc.
PANEL
The undersigned certify that they have acted
independently and impartially and to the best of their knowledge have no known
conflict in serving as Panelists in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 5, 2008; the
National Arbitration Forum received a hard copy of the Complaint on February 6, 2008.
On February 6, 2008, Scoopdomain.ca Inc. confirmed by e-mail to the
National Arbitration Forum that the <shoppers.com> domain name is
registered with Scoopdomain.ca Inc. and
that the Respondent is the current registrant of the name. Scoopdomain.ca
Inc. has verified that Respondent is bound by the Scoopdomain.ca 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 14, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of March 5, 2008 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@shoppers.com by e-mail.
A timely Response was received and determined to be complete on March 5, 2008.
On March 10, 2008, Complainant submitted an Additional Submission with
the Forum that was received and determined to be complete.
On March 17, 2008, an Additional Submission was received from
Respondent, in a timely manner.
On March 20, 2008, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PROCEDURAL ISSUES
Although Respondent’s
electronic submission was received in a timely manner, we are advised by the
Forum that Respondent’s hard copy was received after the March 5, 2008 deadline
as required by ICANN Rule 5. Therefore
the Panel has sole discretion as to the amount of weight given to the
Response. See Telstra
Corp. v. Chu, D2000-0423 (WIPO June 21,
2000) (finding that any weight to be given to the lateness of the response is
solely in the discretion of the panelist).
The Panel has decided to accept and consider the response. See Bd. of Governors of the Univ. of Alberta v. Katz, D2000-0378 (WIPO
June 22, 2000) (finding that a panel may consider a response which was one day
late, and received before a panelist was appointed and any consideration made);
see also Gaiam, Inc. v. Nielsen, FA 112469 (Nat. Arb. Forum July 2,
2002) (“In the interest of having claims decided on the merits and not by
default and because Complainant has not been prejudiced in the presentation of
its case by the late submission, Respondent’s opposition documents are accepted
as timely.”).
PARTIES’ CONTENTIONS
A. Complainant
Complainant has a principal place
of business in
Complainant,
through its subsidiary SFW Licensing Corp., is the owner of trademarks and has invested substantial sums of money in
developing and marketing its products and services under its SHOPPERS family of
marks and has developed substantial goodwill and customer loyalty under said
mark through more than twenty-seven (27) years of continuous use of SHOPPERS in
the relevant retail grocery, pharmacy and distribution services industry.
Complainant’s established trademark rights in its SHOPPERS Marks predate Respondent’s registration of the domain name <shoppers.com>. As established above, Complainant has continuously used its SHOPPERS Marks since at least as early as 1980. Respondent did not obtain the domain name <shoppers.com> until February 5, 2008, over 27 years after Complainant’s first use. Moreover, at the time Complainant initially filed its Complaint with the National Arbitration Forum, the domain name <shoppers.com> was in an auction at Pool.com—meaning Respondent had no rights to the domain name. At that time, no company was listed as the registrant in the WHOIS database—rather the domain name was in control of Pool.com, Inc.
At the time
Complainant filed its Complaint, Pool.com, Inc. was the owner of the domain
name and was holding an auction relating to the domain name. Pool.com was placed on notice of
Complainant’s trademark rights to the domain name on February 4, 2008. Additionally, Complainant requested by
telephone conversation with Pool.com’s attorney that Pool.com stop the auction
so that no third party would obtain the domain name. Pool.com was not making a legitimate,
noncommercial use of the domain name <shoppers.com>.
Pool.com intentionally allowed third
parties to bid on the domain name despite the fact that the domain name is
subject to federal trademark registrations.
Moreover, Pool.com auctioned the domain name to the highest bidder,
which cannot be considered a legitimate use and is indicative of bad
faith. Pool.com failed to stop the
auction, and awarded the domain name to Respondent on February 5, 2008. Respondent
obtained the domain name <shoppers.com> on February 5, 2008, through the Pool.com
auction.
The Respondent has no statutory or common law
trademark rights or any other right or legitimate interest to the mark SHOPPERS
FOOD & PHARMACY, SHOPPERS PHARMACY, SHOPPERS FOOD WAREHOUSE and SHOPPRS
[sic] or in the infringing domain name <shoppers.com>. The Respondent is not licensed or authorized
to use any of Complaint’s family of SHOPPERS marks, in particular the SHOPPERS
trademark of the Complainant or any confusingly similar trademark for any
purpose.
The Respondent has registered and continues to use a domain name that is confusingly similar to Complainant's SHOPPERS trademarks in bad faith. There is no evidence the domain name was registered for a legitimate reason. Rather, the evidence shows that the Respondent registered the domain name <shoppers.com> primarily for the purpose of commercial gain. The Respondent's company is in the business of acquiring domain names and then using those domain names as links pages or offering the domain names for sale. Respondent is the owner of at least 6,020 domain names.
B. Respondent
Xedoc acquired the Domain Name for
$166,000 in an open and transparent manner during a public auction conducted by
Pool.com. Complainant placed a Backorder
with Pool.com on November 27, 2007 for the Domain Name. On
February 2, 2008, Complainant received written notification from Pool that the
Domain Name was available and would be auctioned. Written notice of the auction was provided on
February 2, 2008 to all Backorder customers, including Complainant. The auction proceeded and was completed on at
16:26 GMT3 on February 5, 2008. Xedoc
was the highest bidder and was awarded the Domain Name. Per the T&C’s (§2 requires payment in 24
hours) Xedoc immediately paid Pool for the Domain Name which was then
registered in Xedoc’s name. Complainant
cannot claim ignorance. By placing the
Backorder, Complainant knowingly agreed to and participated in the auction,
agreed to the Terms & Conditions of Pool.com and submitted a binding and
irrevocable bid to acquire the Domain Name. Having done so, it helped caused the very
auction of which it now complains. Complainant
could have purchased the Domain Name but chose not to do so. It now seeks to take it from Xedoc without
payment. Complainant’s own exhibit 5
shows it monitored the auction.
Xedoc was not aware of Complainant,
its business, or its asserted claims until it received a copy of the Complaint
in this action on February 6th. By then it
had already paid the purchase price per its
binding contractual commitment with Pool which requires payment within 24
hours. Xedoc is under no duty of notice
of Complainant’s claims, and is entitled to register and use a domain name
corresponding to a generic word. That
Complainant may have a trademark registered at the USPTO does not place Xedoc
on actual or constructive knowledge. Xedoc
is a
“Shoppers” is a common English word used by millions and its definition expressly incorporates the concept of comparison shopping. There is nothing in the public record that would preclude the real ability to register and use the Domain Name outside of any trademark context.
The historical use of the Domain Name has included a general shopping site, a comparison shopping site and Direct Navigation. The history does not reflect use to sell or promote grocery or pharmaceutical goods/services. Xedoc’s intended and actual use is consistent with the term “shoppers” as used and defined.
Trademark rights are limited to the
classification of goods/services stated in the trademark application. Here Complainant has a trademark for “retail
grocery store services”. No right is granted beyond this
classification. Uses outside of
this classification are not only expected, they are expressly allowed. The European
Directive on Trademarks Art 2, 3 & 6 (governing law binding Xedoc) not
only permits a person to use a term in
its descriptive sense, it precludes a trademark holder from interfering with
such use even if the term used is identical to a registered trademark.
Complainant’s mark is not “famous” or even distinctive. A “famous mark” is one that retains its
source significance when encountered outside the context of the goods or
services with which it is used by the trademark owner. It “must be a household name.” (Emphasis in the
original).
The exact nature of use applied by Xedoc-the use of a generic word as a
domain name in accordance with its primary meaning-was unanimously approved by
a 3-member NAF panel in Kaleidoscope
Imaging, Inc. v. V Entm’t (“Kaleidoscope 1”), FA 203207 (Nat. Arb. Forum Jan. 5,
2004) and again in Grattan Plc v. Xedoc
Holding SA (“Kaleidoscope II”),
D2007-0927 (WIPO Oct. 4, 2007).
C. Additional Submission (By Complainant)
The law clearly establishes that Respondent had constructive notice of
SUPERVALU’s registered trademarks.
Respondent simply chose to ignore that fact and acquired the domain name
with the risk that SUPERVALU would assert its rights.
Respondent incorrectly contends
that it was “not aware of Complainant, its business, or its asserted claims
until it received a copy of the Complaint in this action on February 6th.” Respondent further contends that it is not
bound by the constructive notice provisions because it is a company based in
Respondent actually uses the domain
name at issue in this case to forward to a website and business that is
operated in
Evidence submitted by Respondent shows that Respondent contacted Pool.com to provide information related to SUPERVALU and SUPERVALU’s counsel. That information is confidential. Indeed, Slavik Viner, President of Logical Ideas, Inc. and a declarant for Respondent, stated “I know that individual bidders are assigned a bidding identity by Pool and that their actual identities are not published to the other bidders.” (Emphasis in the original).
D. Additional Submission (By
Respondent)
Concrete evidence shows that
Supervalu (a) submitted a Backorder that in part caused the auction to occur,
(b) agreed to the Pool Terms & Conditions
and thus the validity of the auction, (c) submitted a bid, and (d) failed to
make any of this known to the panel in any of its two (2) prior filings.
Complainant’s asserted marks are
generic and descriptive. By law they are
limited to the operation of a “retail grocery”. There is no evidence that the marks were
widely known in the
While Supervalu has baldly claimed
that the current use of the Domain Name is in direct competition with Shoppers
Food & Pharmacy, there is no evidence of any competition. First, the panel is reminded that the Domain Name had been used for almost
a decade as a general shopping site in Direct Navigation, all without conflict
or objection by Supervalu. Second, the
only evidence of Shoppers Food & Pharmacy in the Internet is at <shoppersfood.com>.
There is no evidence of any confusion.
FINDINGS
(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 rights or legitimate
interests in respect of the domain name; and
(3) the domain name has not been registered in bad
faith and is not being so used.
DISCUSSION
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.
Complainant contends that the <shoppers.com> domain name is identical to Complainant’s SHOPPERS mark. The Panel finds that because Respondent’s domain name contains Complainant’s mark in its entirety and merely adds the generic top-level domain (“gTLD”) “.com,” Respondent’s domain name is identical to Complainant’s mark for purposes of Policy ¶ 4(a)(i). See Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000).
The <shoppers.com> domain name is comprised of a common, generic term, and as such, Respondent is free to own and use domain names incorporating this term. The Panel finds that the nature of the disputed domain name conveys rights or legitimate interests to Respondent under Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in Kaleidoscopes); see also Goepfert, President & CEO v. Rogers, 861124 (Nat. Arb. Forum Jan. 17, 2007) (finding that the respondent had rights or legitimate interests in the <sentimenttrader.com> domain name even though the complainant had common law rights in the SENTIMENTRADER mark, because the terms “sentiment” and “trader” are of common usage in the stock market industry).
Respondent is making a bona fide offering of goods and services under Policy ¶ 4(c)(i) by using the <shoppers.com> domain name, which is comprised of a generic term, to operate a website that places hyperlinks on the resulting website which are related to the generic nature of the disputed domain names. The Panel finds for Respondent under Policy ¶ 4(c)(i). See Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002) (finding that the respondent’s use of the disputed domain name as a portal to a commercial website featuring various advertisements and links constituted a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)); see also First Am. Funds, Inc. v. Ult.Search, Inc., D2000-1840 (WIPO Apr. 20, 2001) (finding that, absent bad faith, the operation of a portal website is a legitimate interest).
Involved here is a
common, descriptive word. It is not, in
fact, associated by most people in the English-speaking world with the
trademark of a regional
Contrary to the Complainant’s assertions, trademark law did not in any way prevent the auction of this domain. It does not give a mark owner exclusive right against the world, especially in regard to common words. Exclusive rights belong only to famous or coined marks and this one is neither. Further, famous marks give exclusive rights only in the jurisdiction where they are famous.
The Panel finds that Complainant failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
The Panel determines that the <shoppers.com> domain name is
comprised of common, generic terms, and finds that Respondent did not register
or use the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Target Brands, Inc. v.
Eastwind Group, FA
267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s
registration and use of the <target.org> domain name was not in bad faith
because the complainant’s TARGET mark is a generic term); see also Miller
Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003)
(finding that because the respondent was using the <highlife.com> domain
name, a generic phrase, in connection with a search engine, the respondent did
not register and was not using the disputed domain name in bad faith).
The only bad faith that the Complainant claims here
is that there is a pattern of bad faith registration. Section 4 (b)(ii)
requires that the domain name was registered in order to prevent the owner of
the trademark or service mark from reflecting the mark in a corresponding
domain name. The requisite intent is
lacking here. This Respondent had no
idea of the Complainant when it bought this domain.
DECISION
Having found that all three elements required under the ICANN Policy
have not been established, the Panel concludes that relief shall be DENIED.
Carolyn M. Johnson, Panelist
Diane Cabell, Panelist
Dated: April 4, 2008
NATional
Arbitration Forum