Hy-Vee, Inc. v. PrivacyProtect.org / Domain Admin
Claim Number: FA1107001398025
Complainant is Hy-Vee, Inc. (“Complainant”), represented by Timothy J. Zarley of Zarley Law Firm, P.L.C., Iowa, USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue are <hyveefloral.com>, registered with Power Brand Center Corp.
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 11, 2011; the National Arbitration Forum received payment on July 11, 2011.
After numerous requests, the Registrar, Power Brand Center Corp., has not confirmed to the National Arbitration Forum that the <hyveefloral.com> domain name is registered with Power Brand Center Corp. or that Respondent is the current registrant of the name. Power Brand Center Corp.’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute based on the Whois data.
On August 4, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 24, 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@hyveefloral.com. Also on August 4, 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 August 29, 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 <hyveefloral.com> domain name is confusingly similar to Complainant’s HY-VEE mark.
2. Respondent does not have any rights or legitimate interests in the <hyveefloral.com> domain name.
3. Respondent registered and used the <hyveefloral.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hy-Vee, Inc., is an Iowa corporation operating more than 220 grocery stores in eight states, including Illinois, Iowa, Kansas, Minnesota, Missouri, Nebraska, South Dakota, and Wisconsin. Complainant operates these stores under the HY-VEE mark. Complainant has registered the HY-VEE mark, along with many other related marks, with the United States Patent and Trademark Office (“USPTO”), including the following registrations:
Mark Reg. No. Registration Date
HY-VEE 2,076,819 July 8, 1997;
HY-VEE SPLASH 2,202,608 November 10, 1998;
HY-VEE GRAND SELECTIONS 2,564,131 April 23, 2002;
DR. HY-VEE 2,608,001 August 13, 2002;
HY-VEE DRUGSTORE 3,123,338 August 1, 2006;
HY-VEE 3,217,662 March 13, 2007;
HY-VEE 3,217-663 March 13, 2007; &
HY-VEE GARDEN HELPERS 3,303,271 October 2, 2007.
Respondent, PrivacyProtect.org / Domain Admin, registered the <hyveefloral.com> domain name on February 8, 2009. The disputed domain name resolves to a directory of pay-per-click links relating to flowers, one of the products Complainant sells.
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 multiple registrations for the HY-VEE and related marks with the USPTO, registered prior to Respondent’s registration of the <hyveefloral.com> domain name. USPTO trademark registration is sufficient to show rights in a mark. 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).”). Previous panels have also determined that a USPTO trademark registration is sufficient to prove rights, regardless of Respondent’s actual location. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country). In this case, Complainant has provided substantial evidence of its registration of its marks with the USPTO. The Panel accordingly holds that Complainant has proven rights in the HY-VEE mark for the purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <hyveefloral.com> domain name is confusingly similar to Complainant’s mark as it only omits the hyphen, adds the descriptive term “floral,” and attaches the generic top-level domain (“gTLD”) “.com.” See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) ( both hyphens and gTLDs were irrelevant in comparing a disputed domain name to a mark under the Policy); see also, Marriott Int’l, Inc. v. Café au lait, FA 93670 (Nat. Arb. Forum Mar. 13, 2000) and Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (descriptive terms added to a complainant’s mark did not remove a disputed domain name from the realm of confusing similarity). The Panel finds that Respondent’s <hyveefloral.com> domain name is confusingly similar to Complainant’s HY-VEE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain name. Policy ¶ 4(a)(ii) requires that Complainant first establish a prima facie case before the burden to demonstrate rights and legitimate interests transfers to Respondent. The Panel finds Complainant has adequately established a prima facie case in these proceedings; Respondent’s failure to respond to the complaint allows the Panel to infer that Complainant’s allegations are true and that Respondent lacks rights and legitimate interests in the disputed domain names. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth . . . as true.”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence”). The Panel elects, however, to consider the evidence in the record according to the Policy ¶ 4(c) factors to determine whether Respondent has any rights and legitimate interests in the disputed domain name.
Complainant alleges that Respondent is not known by the mark or disputed domain name and that Respondent has no trademark protection for the mark HYVEEFLORAL. The Panel finds that the WHOIS information for the disputed domain name does not reflect any connection between Respondent and the disputed domain name. The Panel concludes that the lack of evidence showing any association between Respondent and the disputed domain name reveals that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006), and Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007).
Respondent’s <hyveefloral.com> domain name displays a variety of pay-per-click links related to flowers and competing with Complainant by offering “wedding flowers,” “flowers for Mothers Day,” “floral arrangements,” etc. Pay-per-click link directories do not satisfy the Policy ¶¶ 4(c)(i) and 4(c)(iii) requirements for a bona fide offering of goods or services or a legitimate noncommercial or fair use. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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 Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Accordingly, the Panel finds that Respondent’s use of the <hyveefloral.com> domain name does not satisfy Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
After entering Respondent’s <hyveefloral.com> domain name, consumers reach a website featuring a wide array of pay-per-click links advertising flower services. As one of Complainant’s marketed products is flowers and related services, Respondent’s flower-related pay-per-click links appeal to the same market as Complainant and potentially divert consumers away from Complainant. The Panel determines that advertising for competitors under Complainant’s mark disrupts Complainant’s business and indicates bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000), and Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007).
Complainant asserts that Respondent’s <hyveefloral.com> domain name creates a likelihood of confusion intended to attract Internet users because the disputed domain name is so similar to Complainant’s mark and refers to products that Complainant offers. Complainant argues that Respondent benefits from this attraction and confusion through the pay-per-click fees collected from the links displayed on the resolving website. The Panel finds that these actions constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
The Panel finds 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 <hyveefloral.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 9, 2011
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