HEB Grocery Company, L.P. v. Eric Gonzales
Claim Number: FA1112001421851
Complainant is HEB Grocery Company, L.P. (“Complainant”), represented by Wendy C. Larson of Pirkey Barber LLP, Texas, USA. Respondent is Eric Gonzales (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <heb.xxx>, registered with GoDaddy.com, LLC.
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.
Darryl C. Wilson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 29, 2011; the National Arbitration Forum received payment on December 30, 2011.
On December 29, 2011, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <heb.xxx> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 December 30, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 19, 2012 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@heb.xxx. Also on December 30, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
A timely Response was received and determined to be complete on January 19, 2012.
Complainant’s Additional Submission was received on January 23, 2012 and deemed compliant with Supplemental Rule 7.
Respondent’s Additional Submission was received on January 24, 2012 and deemed compliant with Supplemental Rule 7.
On January 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that the domain name at issue, <heb.xxx>, is identical or confusingly similar to Complainant’s HEB mark because the disputed domain consists entirely of the identical mark with the addition of the gTLD .XXX. Complainant also contends that the Respondent has no rights or legitimate interests in the domain name and the Respondent registered, and is using, the domain name in bad faith.
B. Respondent
Respondent contends that he wishes to keep the domain. Respondent states that after doing extensive research he eventually purchased the disputed domain name. Respondent states that he “was in no way representing any company or affiliate at the time of the purchase”. Respondent further contends that he has never asked for any money for the domain and has in no way harmed the Complainant or infringed on their alleged trademark.
C. Additional Submissions
Complainant‘s Additional Submission noted that Respondent did not dispute that the <heb.xxx> domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Complainant also asserted that Respondent proffered no arguments to support any claim to rights or legitimate interests in the disputed domain. Additionally, Complainant alleged that Respondent’s admissions and behavior met the bad faith standard of the UDRP policy.
Respondent’s Additional Submission stated that his actions were not in bad faith because he registered the disputed domain after he concluded that the Complainant lacked interest in doing so. Respondent further argued that the disputed domain was not “similar or confusingly” to Complainant’s mark because Complainant is not recognized globally or nationally and that Complainant lacked due diligence in filing a timely complaint. Respondent also contended that Complainant’s mark is vague; consisting of common letters and as such causes Complainant’s assertion regarding the similarity of the mark to the domain name to fail. Respondent concluded that “Your complaintants are H.E. Butt attorneys throwing darts at a board, insulting your intelegence hoping something will stick.”
Complainant is HEB Grocery Company, L.P., a grocery store chain with more than 329 stores, 76,000 employees, and over $15 billion in annual sales, with headquarters in the U.S. state of Texas. Complainant has received noteworthy recognition both in the grocery industry and in other areas such as recognition in Forbes magazine as one of America’s largest private companies. Complainant indicates that its present status grew from its first store that was established more than 100 years ago. Complainant asserts that it has been using the HEB marks in association with its grocery store services for decades and in addition to common law rights, has secured U.S. trademark registrations for its marks. Complainant has also established <heb.com> as the primary domain name for its website.
Respondent is an individual, located in the U.S. state of Georgia, who indicates that he was doing “extensive research for a TV news report on businesses that have not registered .XXX domains with possible variations close to their names.” Respondent states that he contacted several businesses that bought .XXX domains after he brought the matter to their attention but that Complainant was not one of them so he bought the disputed domain because of Complainant’s failure to exhibit a proactive approach. Respondent states that he was later contacted by counsel for Complainant “DEMANDING” he relinquish control over the disputed domain but that Complainant never asked. Respondent states “Everything would have been avoided if they would have asked.”, because then he “would have gladly GIVEN” them the domain. Respondent noted several policies involving the .XXX gTLD which cause him to question the general availability of domain sites if they are allowed to be taken away by companies that fail to block the initial purchase. Respondent stated that he could have avoided dealing with this legal issue and consulting legal advice if Complainant had taken steps to block his purchase.
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."
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 contends that it established its rights in the HEB mark by registering it with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,863,076 registered July 13, 2004). Complainant submitted the registration certificates to verify that the mark is duly registered and that Complainant is the owner of the registrations. Based upon the evidence provided, the Panel finds that Complainant established its rights in the HEB mark under Policy ¶ 4(a)(i) by registering the mark with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant also contends that Respondent’s <heb.xxx> domain name is identical to its HEB mark. The Panel finds that merely adding the “.xxx” top-level domain to the HEB mark does not differentiate the disputed domain name in any material way, and that the domain and mark are identical under Policy ¶ 4(a)(i). See Europcar Int’l SA v. New Media Research in Romania SRL, FA 123906 (Nat. Arb. Forum Nov. 4, 2002) (“Because top-level domains are required of domain name registrants, their addition has been determined to be inconsequential when conducting an identical analysis under Policy ¶ 4(a)(i).”); see also Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”).
Respondent fails to address the issue of identical or confusing similarity in his response. Respondent does contend in his Additional Submission that the <heb.xxx> domain name is comprised of “3 vague letters, initials that when put in Websters and Google comes up with infinite mulitituple compilations.” Respondent’s statements appear to be an attempt to characterize Complainant’s mark as generic and therefore unprotectable. But mere assertions of alternative uses of a registered trademark are insufficient to render that mark generic. Respondent fails to provide a proper legal basis from which such a finding could arise and also fails to note that the UDRP is generally not the proper forum for challenging the continuing viability of a registered mark.
Complainant has proven this element.
Complainant has set forth its prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and the burden has shifted to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name.
Complainant states that Respondent is not commonly known by the disputed domain name. Respondent does not disagree and makes no claims to be commonly known by the disputed domain name in its Response. The WHOIS information identifies the registrant of the disputed domain name as “Eric Gonzales.” Based upon the information in the record, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also 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).
Complainant claims, and Respondent does not dispute, that he is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The Panel thus finds that Respondent failed to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for 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)).
Complainant’s Additional Submission, in expansion of a footnote in its complaint, addresses the Rapid Evaluation Service (RES) policy as a further basis of proof, under the UDRP, that a Respondent fails to indicate rights or legitimate interests in a disputed domain name. The RES and Charter Eligibility Dispute Resolution Policy (CEDRP) were established for disputes relating to domain names that include the “.xxx” top-level domain. However, cases relating to domain names that include the “.xxx” top-level domain may still be brought under the UDRP. The RES and CEDRP contain provisions that allow a panel to use the requirements of the respective policies in the panel’s UDRP analysis.
In Complainant’s Additional Submission, Complainant contends that Respondent does not make an active use of the <heb.xxx> domain name and that Respondent does not have a conceivable legitimate use of the disputed domain name. Respondent does not directly respond to Complainant’s assertions but instead raises his ownership of other domain names that are allegedly non-offensive and “parked”. The Panel finds that Respondent cannot make a conceivable legitimate use of the <heb.xxx> domain name, and determines that Respondent fails to satisfy RES ¶ 3(d)(i).
The Panel also finds that the Respondent’s assertion regarding Complainant’s lack of national notoriety is unfounded based on the facts indicating Complainant’s U.S. trademark registration. U.S. federal trademark registration acts as both actual and constructive notice throughout the U.S. to other U.S. citizens seeking to verify the availability of a prospective mark or domain name. RES ¶ 3(d)(ii) indicates that the extent of presumptive effect afforded by the national registration(s) shown by the Complainant in the relevant jurisdiction(s) is also to be taken into consideration relative to a determination of rights or legitimate interests claimed by a Respondent.
The Panel finds that Respondent’s failure to satisfy RES ¶ 3(d)(i) and Respondent’s actual and/or constructive notice of Complainant’s U.S. registered trademark under RES ¶ 3(d)(ii) further support the conclusion that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant’s Additional Submission also makes arguments under the CEDRP as to Respondent’s bad faith registration and use. CEDRP ¶ 8 allows the Panel to use the CEDRP under Policy ¶ 4(a)(ii) as well. Complainant contends that Respondent admits he does not qualify as an eligible registrant of the disputed domain name under CEDRP ¶ 2(a).
CEDRP ¶ 2(a) “Registration or Use Inconsistent with Community Eligibility,” states in pertinent part, that “[a] complaint under this section shall be required to show that a registered domain name in the .XXX TLD has not been registered or used in compliance with the Sponsored Community eligibility criteria as further defined in the Registry-Registrant Agreement.”
Respondent states that he is not in the adult entertainment business and does not associate any of his businesses in that industry. Respondent list his businesses as a single family house rental, restaurant, and video production businesses, which do not compete with Complainant’s grocery business. Respondent does not allege that he is preparing to use the disputed domain name in association with any of his businesses. Respondent states that “a XXX domain does not have to be an adult entertainment site. It does not have to be anything.” The Panel finds that the Respondent does not satisfy CEDRP ¶ 2(a), and concludes that this finding further supports the conclusion that Respondent lacks rights and legitimate interests in the <heb.xxx> domain name pursuant to Policy ¶ 4(a)(ii).
Complainant has proven this element.
Complainant argues that Respondent’s failure to make an active use of the disputed domain name demonstrates bad faith. The Respondent makes no mention of plans to use the website with his present businesses or any future businesses. The Panel finds that Respondent’s registration and failure to make an active use of the disputed domain name are evidence of bad faith registration and use under the Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Complainant argues that Respondent had actual notice of its rights in the HEB mark, demonstrating clear bad faith registration and use. Complainant submits documentary evidence, as does Respondent, indicating that the two parties had contact and directly discussed the disputed domain name and the potential for Complainant’s registration of the domain. The Panel finds that Respondent had actual notice of Complainant’s rights in the HEB mark prior to registering the disputed domain name, which further supports a finding of bad faith registration and use under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration); see also Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith).
The Panel notes that the facts underlying the Panels earlier findings regarding Respondent’s lack of rights or legitimate interests in the disputed domain under the RES and CEDRP also support a finding of bad faith registration and use under the UDRP. RES ¶ 3(d) provides additional considerations that a panel may consider when determining rights and legitimate interests and bad faith.
CEDRP ¶ 8 states that “If a domain name in the .XXX TLD is subject to a UDRP proceeding, the factors set forth in the CEDRP may be alleged in such proceeding as applicable terms of legitimate rights or registration and use under the UDRP in addition to any allegations or defenses available.”
Respondent stated disappointment in the Complainant since other companies he worked with showed great respect towards his work and showed great appreciation in solving their issues. Respondent’s submissions indicated several misstatements of trademark law and domain name practice which, along with Respondent’s actions actually caused the issues. Whether purposefully retaliatory or benevolently misguided, Respondent’s actions meet the policy standards for bad faith registration and use.
Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be GRANTED.
Accordingly, it is Ordered that the <heb.xxx> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: February 7, 2012
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