Hy-Vee, Inc. v. Dux Mundi
Claim Number: FA1107001396705
Complainant is Hy-Vee, Inc. (“Complainant”), represented by Timothy J. Zarley of Zarley Law Firm, P.L.C., Iowa, USA. Respondent is Dux Mundi (“Respondent”), Azerbaijan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hyveephoto.com>, registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM.
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 electronically on July 1, 2011; the National Arbitration Forum received payment on July 1, 2011.
On July 2, 2011, DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <hyveephoto.com> domain name is registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM 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 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 26, 2011 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@hyveephoto.com. Also on July 6, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 28, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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" 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, 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 <hyveephoto.com> domain name is confusingly similar to Complainant’s HY-VEE mark.
2. Respondent does not have any rights or legitimate interests in the <hyveephoto.com> domain name.
3. Respondent registered and used the <hyveephoto.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hy-Vee, Inc., owns the HY-VEE mark which it uses in connection with supermarket services and related goods and services including photo-related goods and services. Complainant has multiple registrations for its HY-VEE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,076,819 registered July 8, 1997). Complainant has, given the expansion of its brand, registered a number of other trademarks with the USPTO in connection with its HY-VEE brand. For example, Complainant’s HY-VEE GARDEN HELPERS mark is used in connection with the sale of live plants, trees, shrubs and flowers (Reg. No. 3,303,271 registered October 2, 2007). Complainant’s HYVEE VUE mark is used in connection with the sale of eyeglasses (Reg. No. 3,254,601 registered June 26, 2007).
Respondent, Dux Mundi, registered the <hyveephoto.com> domain name on September 19, 2009. The disputed domain name resolves to a website which displays links to photo-related goods and services similar to those offered by Complainant.
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.
Complainant has numerous trademark registrations for the HY-VEE mark with the USPTO (e.g., Reg. No. 2,076,819 registered July 8, 1997). The Panel finds that Complainant has rights in the HY-VEE mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant has asserted that Respondent’s domain name is confusingly similar to its HY-VEE mark. The addition of a generic top-level domain (“gTLD”) does not distinguish a domain name from a mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark). The elimination of a space and hyphen in a mark similarly fails to be distinguishing. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (finding that the domain name, <tippex.com> is confusingly similar to the complainant’s mark, TIPP-EX and that use of a hyphen does not negate likelihood of confusion). Furthermore, the addition of a descriptive term does not differentiate the domain name from the mark it is allegedly infringing upon. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)). Complainant’s mark is fully-incorporated in the disputed domain name but for the space and hyphen between the words of the mark. The term “photo,” which describes part of Complainant’s business under the HY-VEE mark, is added along with the gTLD “.com.” As such, the Panel finds that, pursuant to Policy ¶ 4(a)(i), the <hyveephoto.com> domain name is confusingly similar to Complainant’s HY-VEE mark.
The Panel finds that Policy ¶ 4(a)(i) is met.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case in support of this assertion . Therefore, the burden now shifts to Respondent to contradict these claims. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”). Respondent’s failure to respond to the Complaint is equivalent to admission of the truth of Complainant’s assertions. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) and Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004). The Panel will, however, review the record for information suggesting that Respondent does have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant has not authorized Respondent to use its mark. The WHOIS information lists “Dux Mundi” as the domain name registrant. The Panel finds that Respondent is not commonly known by the <hyveephoto.com> domain name according to Policy ¶ 4(c)(ii).
Complainant contends that Respondent has not used the disputed domain name for either a bona fide offering of goods or services or a legitimate noncommercial of fair use. Respondent’s <hyveephoto.com> domain name resolves to a website which displays links to services similar to those which Complainant offers such as digital photo printing, picture framing, and postcard printing. Such use of the domain name shows a lack of rights and legitimate interests. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). The Panel finds that Respondent’s use of the disputed domain name to provide Internet users with links to services similar to those Complainant offers from other providers is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Policy ¶ 4(a)(ii) is met.
The registration and use of a domain name that displays links to services similar to those which the complainant provides has been found to be disruptive of that complainant’s business. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business). Internet users who are attempting to reach Complainant’s business may be diverted to Respondent’s website due to the confusing similarity of the <hyveephoto.com> domain name. Once there, the Internet users may purchase services through the links displayed on Respondent’s disputed domain name rather than from Complainant. Therefore, the Panel finds that the registration and use of the <hyveephoto.com> domain name by Respondent is disruptive to Complainant’s business under Policy ¶ 4(b)(iii).
Respondent presumably receives compensation for the Internet users which are redirected through the links displayed on the disputed domain name’s resolving website. The Panel infers that the confusingly similar domain name was chosen because it would instill confusion as to the association of the disputed domain name to Complainant’s mark. Therefore, more Internet traffic will be generated. The Panel finds that Respondent’s registration and use of the <hyveephoto.com> domain name was the result of the potential for commercial gain pursuant to Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)), and Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
The Panel finds that Policy ¶ 4(a)(iii) is met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hyveephoto.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 10, 2011
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