Trader Joe's Company v. Don Ausmus
Claim Number: FA1212001475320
Complainant is Trader Joe’s Company (“Complainant”), represented by Jordan Raphael of O’Melveny & Myers, California, USA. Respondent is Don Ausmus (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <trader-joes.com>, registered with HOSTOPIA.COM INC. D/B/A APLUS.NET.
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.
Fernando Triana, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 10, 2012; the National Arbitration Forum received payment on December 11, 2012.
On December 12, 2012, HOSTOPIA.COM INC. D/B/A APLUS.NET confirmed by e-mail to the National Arbitration Forum that the <trader-joes.com> domain name is registered with HOSTOPIA.COM INC. D/B/A APLUS.NET and that Respondent is the current registrant of the name. HOSTOPIA.COM INC. D/B/A APLUS.NET has verified that Respondent is bound by the HOSTOPIA.COM INC. D/B/A APLUS.NET 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 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2013 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@trader-joes.com. Also on December 12, 2012, 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 December 30, 2012.
Complainant submitted Additional Submissions that were received in a timely manner on January 3, 2013. Complainant submitted its documents in accordance with the National Arbitration Forum Supplemental Rules according to The Forum’s Supplemental Rule #7.
On January 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Fernando Triana, Esq. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
This complaint is based upon Complainant’s irrefutable ownership of the TRADER JOE’S trademarks since at least 1986 and longstanding use since 1967.
Complainant alleges it is the owner of numerous trademark registrations in the United States of America.
Complainant’s main contentions are as follows:
B. Respondent
Respondent’s contentions are as follows:
1. A domain name does not necessarily lead to confusion and deception, since trademarks and domain names are not synonyms.
2. Respondent has violated the Policy, as Respondent has use the domain name in good faith and with legitimate interests.
3. Respondent website displays a message where it clearly states that Respondent has no affiliation to Complainant and only resells Complainant’s products. This message is enough to prevent any confusion or misrepresentation.
4. Respondent is located at a residential address, which is displayed on all transactions and clearly states that Respondent is not affiliated with Complainant.
5. Complainant does not sell its products through Internet; therefore, it is not possible for consumers to be confused about its services and Complainant’s nonexistent internet service.
6. Respondent has a right to its <trader-joes.com> domain name based on the rights of first come, first served.
7. Complainant failed to perform its due diligence to purchase textually similar spellings of their registered trademark.
8. Respondent offered to sell the disputed domain name <trader-joes.com> to Complainant for a reasonable price taking into consideration the www.urlappraisa.net’s valuation of the disputed domain name, the remaining inventory of products, and its e-mail address which contains lists of previous orders.
C. Complainant’s Additional Submissions
1. Respondent has registered and is using the disputed domain name <trader-joes.com> for the purpose of selling it to Complainant for an excess amount.
2. Respondent’s chosen domain name has the purpose to attract, for commercial gain, confused consumers and Internet users who are searching for Complainant’s trademark or website, to the website resolving from the disputed domain name <trader-joes.com> by creating a likelihood of confusion with Complainant’s trademark TRADER JOE’S as to the source, sponsorship, affiliation, or endorsement of its website and the products featured on the resolving page.
3. Complainant also submits a screen shot of the website resolving from Respondent’s disputed domain name <trader-joes.com> featuring Belgian waffle cookies which does not display the disclaimer, further misleading customers into confusing Respondent’s website with Complainant’s business. See Additional Submission Annex.
4. Respondent registered the disputed domain name <trader-joes.com> in bad faith.
5. Respondent attempted to sell the disputed domain name and e-mail address for $2,500, justifying the amount by saying it was, “probably significantly less than the cost of pursuing legal action”. While the disputed domain name <trader-joes.com> cost $10.99 at most to create and register.
6. Respondent’s e-mail account is a free e-mail account.
7. Respondent did not offer to include the remaining inventory products in the sale.
8. The alleged estimated value of the disputed domain name <trader-joes.com> is irrelevant to the issue of Respondent’s bad faith.
9. Every website resolving form the disputed domain name <trader-joes.com> features “Trader Joes online mail order grocery store” and “Trader-Joes.com Online store for all those hard to find items you just can’t buy at other stores”.
10. Respondent’s disclaimer is ineffective since it does not dispel confusion arising from Respondent’s use of Complainant’s trademarks in the disputed domain name <trader-joes.com> itself.
11. Many potential consumers find the disputed domain name <trader-joes.com> through an online search engine.
12. Complainant has no control over the consistency or quality of the goods that Respondent is offering from its disputed domain name <trader-joes.com>.
13. Using Complainant’s trademark TRADER JOE’S to attract consumers to the disputed domain name <trader-joes.com> in order to sell Complainant’s goods without authorization constitutes bad faith.
1. Complainant owns the trademark TRADER JOE’S in the United States of America, since before the disputed domain name was registered by Respondent.
2. Respondent was aware of the Complainant’s rights in the trademark TRADER JOE’S, yet it incorporated it in the disputed domain name. Thus, Respondent used the trademark TRADER JOE’S to create a likelihood of confusion aimed to divert consumers to Respondent’s offered goods.
3. Respondent is not affiliated with Complainant in any way: Complainant has never authorized, contracted, licensed or otherwise permitted Respondent to use the trademark TRADER JOE’S, nor is Respondent an authorized vender, supplier or distributor of Complainant’s goods and services.
4. Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services.
5. Respondent has the intention to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's trademark due to the goods offered in its website.
6. Respondent might use different domain names to provide the services described in its response.
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.
This discussion, based on the evidentiary support submitted by the parties, will be developed as follows:
First of all, the Panel will determine whether or not the disputed domain name is identical or confusingly similar to the trademark in which Complainant has rights. Secondly, the Panel will verify if Respondent has any rights or legitimate interests in respect of the disputed domain name; and thirdly, the Panel will establish whether or not the disputed domain name has been registered and is being used in bad faith by Respondent.
Complainant contends to be the owner of the trademark TRADER JOE’S in the United States of America, which has been continuously used since 1967 to identify coffee, coffee beans, tea, honey, chocolate, flour, wheat bran, pastry, molasses, artichoke sauce, bagels, bakery goods, among others.
a) Existence of a trademark or service mark in which the Complainant has rights
Firstly, it is important to point out that Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in a number of many jurisdictions of the world.
The worldwide-accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
When a sign is registered as a trademark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.
However, the UDRP does not discriminate between registered and unregistered trademarks[1] and thus, it is well established that a Complainant does not require owning a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that Complainant has rights over an unregistered trademark as to deserve legal protection, based solely on its use in commerce.
In this case, Complainant proved its rights in the Trademark TRADER JOE’S. Exhibits B to the Complaint include:
· United States Trademark Registration No. 1,420,628 registered on December 9, 1986, for : “specialty grocery store services”;
· United States Trademark Registration No. 1,421,310 registered on December 16, 1986, for : “safflower oil, dill pickles, pineapple chunks, frozen and canned fish, chili, beef sausage in stick form, soups, chocolate milk, peanut butter and potato chips”;
· United States Trademark Registration No. 1,421,358 registered on December 16, 1986, for : “raw nuts, cat food and dog food”;
· United States Trademark Registration No. 1,421,383 registered on December 16, 1986, for : “wines, vodka and gin”;
· United States Trademark Registration No. 1,422,216 registered on December 23, 1986, for : “fruit juices, vegetable juices and papaya nectar”;
· United States Trademark Registration No. 1,424,176 registered on January 6, 1987, for : “coffee, coffee beans, tea, honey, chocolate, flour, wheat bran, pastry and molasses”;
· United States Trademark Registration No. 2,156,879 registered on May 12, 1998, for : “artichoke sauce, bagels, bakery goods, baking powder, baking soda, barbecue sauce, biscuits, bran, bread, bread rolls, bread sticks, breakfast cereals, brioches, buns, burritos, cake mixes, cakes, candy, candy cake decorations, candy coated popcorn, candy mints, capers, caramel popcorn, caramels, cereal-based snack food, chalupas, cheese flavored puffed corn snacks, cheese sauce, cheesecake, chili powders, chili sauce, chocolate, chocolate chips, chocolate covered nuts, chocolate fondue, chocolate food beverages not being dairy-based or vegetable-based, chocolate powder, chocolate syrup, chocolate topping, chocolate truffles, chocolate-based filings for cakes and pies, chow mein noodles, chutney, cinnamon, cloves, cocoa, cocoa mixes, coffee, cones for ice cream, confectionery chips for baking, cookies, corn chips, corn curls, corn flakes, corn meal, corn syrup, couscous, cracker and cheese combinations, crackers, crepes, crumpets, crystallized ginger, curry, custard-based filings for cakes and pies, custards, danish pastries, dessert souffles, doughnuts, dried chili peppers, dumplings, eclairs, egg rolls, empanadas, enchiladas, fajitas, farina, flavored ices, flavoring syrup, flour, flour-based chips, food starch, frozen confections, frozen custards, frozen entrees consisting primarily of pasta or rice, frozen yogurt, fruit ice, fruit pies, gingerbread, glazed popcorn, gnocchi, grain or chicory based coffee substitutes, grain-based chips, grain-based food beverages, granola, granola-based snack bars, halvah, ham glaze, herb tea, herbal food beverages, honey, horseradish, hot chocolate, hot sauce, ice cream substitute, ice cream, kasha, ketchup, lasagna, licorice, macaroni, macaroni and cheese, macaroni salad, maple syrup, marinades, mayonnaise, meat pies, minced garlic, mincemeat pies, mixes for making bakery goods, molasses, muffins, mustard, non-medicated lozenges, noodles, nutmeg, oatmeal. pancake mixes, pancake syrup, pancakes, parfaits, pasta, pasta salad, pasta shells, pastries, peanut butter confectionery chips, pepper, pickle relish, pies, pizza, pizza sauce, popped popcorn, pot pies, powdered garlic, powdered ginger, preserved ginger, pretzels, processed cereals, processed grains, processed oats, processed popcorn, puddings, puffed corn snacks, quiche, ravioli, ready-to-eat cereal derived food bars, relish, rice, rice salad, rice-based snack foods, rolled oats, rusks, salad dressings, salsa, salt, sandwiches, sauces, seasonings, sherbet, snack mix consisting primarily of crackers and/or pretzels and/or candied nuts and/or popped popcorn, sorbet, soy sauce, soy-based ice cream substitute, spaghetti, spaghetti and meatballs, spaghetti sauce, spices, sugar, taco chips, taco shells, tamales, tartar sauce, tea, tea-based beverages with fruit flavoring, tomato sauce, tortilla chips, tortillas, vanilla, vinegar, wafers, waffles and wheat-based snack foods”;
· United States Trademark Registration No. 2,518,990 registered on May 19, 1998, for : “chemicals used in the manufacture of [fertilizers, crop protection products, dispersants,] surfactants, [coating materials, paints, enamels, lacquers, adhesives, powder coatings, bleaching preparations, cleaning, polishing, scouring and abrasive preparations,] explosives and explosives compositions, [unprocessed plastics,] artificial resins, synthetic resins, ion exchange resins having magnetic properties, all of the foregoing resins for use in potable water and waste water treatment, [food processing,] biotechnology, extraction of materials from industrial and ore processing applications, ion exchange applications, [paints, enamels, lacquers, adhesives, powder coatings, and bleaching preparations; oxidizing salts for use in explosives and fertilizers; water treatment chemicals for treatment of waste water and potable water]”;
· United States Trademark Registration No. 2,160,601 registered on May 26, 1998, for : “processed fruits, canned fruits, bottled fruits, dried fruits, preserved fruits frozen fruits, fruit chips, fruit paste, [ fruit pectin, fruit peels, fruit pulps, ] fruit rinds, fruit salads, fruit sauces, fruit topping, fruit-based snack food, fruit preserves and conserves, [ fruit-based filings for cakes and pies, ] fruit-based spreads, cut or sliced fresh fruits, applesauce, processed apples, processed apricots, banana chips, processed blueberries, processed cherries, [ maraschino cherries, processed lemons, processed oranges, processed peaches, processed peels, ] raisins, cranberry sauce, crystallized fruit, jams, jellies, lemon curd, marmalade, processed dates, processed artichokes, processed asparagus, processed avocados, processed beans, baked beans, dried beans, processed beets, processed olives, processed mushrooms, processed onions, processed peppers, processed pimientos, processed potatoes, processed tomatoes, canned soybeans, potato chips, yucca chips, cole slaw, dried soybeans, french fried potatoes, gherkins, guacamole, instant potatoes, lentils, [ onion rings, ] pickled vegetables, pickles, potato crisps, potato pancakes, [ preserved truffles, ] processed corn, salads (except macaroni, rice and pasta salad), sauerkraut, vegetable salads, processed vegetables, tomato paste, tomato puree, textured vegetable protein for use as a meat extender, tofu, processed pumpkin seeds, processed almonds, processed coconut, edible oils, peanut butter, nut butter, butter, butter substitutes, [ chocolate nut butter, ] cooking oil, processed edible seeds, [ rennet, ] candied fruit and candied fruit snacks and candied nuts, salad oil, processed nuts, tahini, vegetable oil, processed anchovies, processed clams, caviar, bacon, beef, corned beef, roast beef, bologna, chicken, [ chicken and dumplings, ] seafood, soups, bouillon, soup broth. soup mixes, chowder, clam juice, chili, chop suey, chow mein, [ processed crayfish, vegetable croquettes, ] fish, fish and chips, fish fillets, ham, hamburger meat, hot dogs, jerky, [ liver paste, ] luncheon meats, meat, meat substitutes, pate, pork, pork rinds, poultry, poultry substitutes, processed prawns, processed lamb, salami, salmon, mayonnaise-based sandwich spread, sardines, sausages, shellfish, processed shrimp, smoked salmon, lox, tunafish, turkey, veal, cream cheese, cheese, cheese spreads, cheese substitutes, cheese and cracker combinations, milk, half and half milk and cream mixture, non-dairy creamer, acidophilus milk, chocolate milk, cream, whey-based food beverages, soy-based food beverages used as a milk substitute, dairy-based food beverages, dairy-based chocolate food beverages, vegetable-based food beverages, vegetable-based chocolate food beverages, cottage cheese, dairy products (excluding ice cream, ice milk and frozen yogurt), dairy-based dips, dips (excluding salsa and other sauces used as dips), egg nog, egg substitute, eggs, margarine, margarine substitutes, sour cream substitutes, sour cream, whipping cream and yogurt, processed garlic”;
· United States Trademark Registration No. 2,171,157 registered on July 7, 1998, for : “retail store services in the field of specialty foods and beverages”;
· United States Trademark Registration No. 4,001,533 registered on July 26, 2011, for : “retail grocery services”; and
· United States Trademark Registration No. 4,001,531 registered on July 26, 2011, for : “retail grocery services”.
This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademarks and the exclusive right to use them in connection with the stated goods and services. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.[2]
Thus, Complainant established its rights in the trademark TRADER JOE’S.[3]
Therefore, the Panel concludes that Complainant has demonstrated rights in the trademark TRADER JOE’S for purposes of Paragraph ¶ 4(a)(i) of the Policy.
b) Identity or confusing similarity between the Disputed Domain Name and the Complainant’s trademark
Complainant alleges that the disputed domain is identical to the trademark TRADER JOE’S.
On the first place, before establishing whether or not the disputed domain name <trader-joes.com> is confusingly similar to the Complainant’s Trademark TRADER JOE’S, the Panel wants to point out that the addition of generic top-level domain (“gTLD”), i.e., “.com,” “.biz,” “.edu,” “.org”, cannot be considered when determining if the registered domain name is identical or confusingly similar to the registered trademark[4]. Neither the addition of country-code top-level domains (“ccTLD”), i.e., “.co,” “.de,” “.cr,” “.es,” nor the insertion of a gTLD has a distinctive function[5].
UDRP Panels have unanimously accepted that the inclusion of the “.com” (gTLD), in the disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks, D2000-0477 (WIPO July 20, 2000), the Panel stated that:
“[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services.”
Furthermore, the Panel considers that the reproduction of the trademark TRADER JOE’S, by the disputed domain name <trader-joes.com>, is sufficient ground to establish that the disputed domain name is confusingly similar to the trademark[6], mainly since the disputed domain name reproduces entirely Complainant’s trademark without any other distinctive elements. Consequently, consumers will assume that the owner of the disputed domain name is the Complainant.
In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain name is confusingly similar to Complainant’s trademark and thus, the requirement set forth in Paragraph ¶ 4(a)(i) of the Policy is duly complied with.
a) Prima Facie Case.
Regarding this second element of Paragraph 4(a) of the Policy, UDRP Panels have unanimously consented that requiring the Complainant to prove the lack of rights or legitimate interests of the Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of the Respondent[7].
In Julian Barnes v. Old Barn Studios Ltd., D2001-0121 (WIPO Mar. 30, 2001), the Panel stated that:
“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head”.
Therefore, a Complainant is required to make a prima facie case that Respondent lacks of rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of production shifts to Respondent, who must come forward with concrete evidence of its rights or legitimate interests[8]. If Respondent fails to do so, Complainant is deemed to have met the second element of Paragraph 4(a) of the Policy.
Complainant asserts that Respondent has no rights or legitimate interests in the domain name <trader-joes.com> because of the following: i) Respondent has not been authorized by Complainant to use the Trademark TRADER JOE’S in any manner; ii) Respondent registered and uses the disputed domain name to trade off Complainant’s good will; iii) Respondent is a reseller of the same kind of products produced and sold by Complainant. Thus, Respondent is Complainant’s competitor; and iv) Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services, because the disputed domain names offer competing goods.
The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of production to Respondent.
b) Respondent’s rights or legitimate interests in the disputed Domain Name.
Paragraph 4(c) of the Policy includes an enunciative listing of circumstances that prove Respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent states that it is only selling Complainant’s products and that Respondent has legitimate interests over the disputed domain name since Respondent is providing a service that Complainant is not, i.e., selling Complainant products through Internet.
This Panel believes that Respondent failed to prove his rights or legitimate interests in the disputed domain name <trader-joes.com>. Simply stating the website has a disclaimer and that the PayPal information does not relate him to Complainant, is not evidence of Respondent’s rights or legitimate interest in them.
Respondent’s use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent registration of a domain name identical to a Complainant’s trademark is directed to capitalize Complainant’s trademark TRADER JOE’S goodwill by attracting internet users to its disputed domain name where Respondent sells products for its own profit[9]. Particularly, since Complainant’s trademark TRADER JOE’S is a well-known and famous trademark as it is documented in Exhibit C to the Complaint.
From Exhibit C to the Complaint it is possible to extract that the Complainant’s trademark TRADER JOE’S has a very positive image and it is known within the consumers who crave for Complainant’s TRADER JOE’S products. From Exhibit B and Exhibit D to the Complaint it is possible to conclude that the trademark has been use since 1967 and it is registered in the United States to identify a variety of food products. From Exhibit E to the Complaint and the Complainant’s website, it is possible to infer that Complainant’s products are sold and known all over the United States.
Thus, it becomes clear that Respondent’s intention when registering the disputed domain name was to obtain commercial gain by misleadingly diverting consumers or to tarnish the trademark, which cannot be validated as a bona fide offering of goods or services.
Finally, from Respondent’s assertions the Panel can conclude that Respondent is not commonly known by the disputed domain name <trader-joes.com>, in fact, the PayPal information, the use of a free e-mail account, the shipping address, the disclaimer within the website, are evidence to the fact that Respondent was not and has never been commonly known by the disputed domain name, which fails to comply with the defense set forth under Policy ¶ 4(c)(i)(ii) and (iii).
Therefore, the second requirement of paragraph 4(b) of the Policy is met.
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(1) Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(3) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.
On December 6, 2012, Complainant sent Respondent a cease and desist letter (Exhibit G to the Complaint), requesting Respondent to transfer the disputed domain name. Respondent replied to the letter and offered to sell it for USD $2,500. Since a domain name registration costs about USD $11, and Respondent is asking for USD $2,500, this value exceeds the out-of-pocket costs of the disputed domain name, especially given that any value that the domain name has, is attributable to Complainant’s trademark TRADER JOE’S well-known character.
Thus, this Panel deems that the mere fact of knowingly incorporating a third-party’s well-known mark in a domain name constitutes registration in bad faith[10]. See Aktiebolaget Electrolux v. Jorgeariel Figueroa Rodríguez, WIPO Case No. D2011-1311, where the panel found: “The selection of this word is certainly not a random decision; the Panel finds that it is a consequence of Respondent’s prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel’s opinion”.
The disputed domain name resolves to Respondent selling page; hence, it appears pretty obvious that the Respondent is intentionally exploiting the user’s confusion between Complainant’s trademark and the disputed domain name in order to obtain a commercial benefit.
The Panel finds that Respondent must have known that the disputed domain name would attract Internet users seeking the Complainant to the website from which he expected to make money. Thus, Respondent intentionally attempted to attract Internet users by creating a likelihood of confusion with Complainant’s mark. The more diverted Internet users Respondent could attract the more profit it would make.
Hence, trying to sell the disputed domain name at a value that exceeds the out-of-pocket costs , even though Respondent has actual knowledge of Complainant’s rights over the trademark TRADER JOE’S, is evidence that Respondent has registered the domain name primarily for the purpose of selling the domain name registration to Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name, is indicative of bad faith registration and use pursuant to Policy ¶ 4(a)(i).
Furthermore, Respondent is profiting from its use of the trademark TRADER JOE’S in the disputed domain name by attracting Internet users to the resolving website where Respondent sells products in bad faith. Respondent has created confusion as to Complainant’s affiliation or sponsorship of the disputed domain name and website in order to sell its products. This is indicative of bad faith under Policy ¶ 4(b)(iv)[11].
The Panel conducted an Ex Officio search in the search engine BING to confirm that Respondent attracts Internet users by creating confusion, since Respondent website appears in the fourth place just below three of the Complainant’s websites.
Consequently, the disputed domain name incorporating Complainant’s trademark, possibly disrupts Complainant’s business and create a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement, thus, evidencing a bad faith registration and use pursuant to Policy ¶¶ 4(b)(i) and (iv).
Therefore, the three elements of the Policy ¶ 4(a)(iii) are satisfied in the present case in respect to Respondent of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <trader-joes.com> domain name be TRANSFERRED from Respondent to Complainant.
Fernando Triana, Esq., Panelist
Dated: January 18, 2013
COLO 1308 0960 56889/SÁG
4290210269397
[1] See MatchNet PLC. v. MAC Trading, D2000-0205 (WIPO May 11, 2000); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO March 23, 2000).
[2] See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO May 5, 2002).
[3] 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 Royal Bank of Scot. Group plc & Nat. Westminster Bank plc v. Soloviov, FA 787983 (Nat. Arb. Forum November 3, 2006) (“Complainant’s trademark registrations for the NATWEST mark with the United Kingdom Patent Office . . . establish Complainant’s rights in the mark pursuant to Policy ¶4(a)(i)”.); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum August 4, 2004) (“finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world”).
[4] See Altec Industries, Inc. v. I 80 Equipment, FA 1437753 (Nat. Arb. Forum May 18, 2012).
[5] See YottaMark, Inc. v. Lukasz Chudy, FA 1392357 (Nat. Arb. Forum July 15, 2011)
[6] See ER Marks, Inc. and QVC, Inc. v. Hansmann, FA 1381755 (Nat. Arb. Forum May 6, 2011); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001).
[7] See Arla Foods amba v. Bel Arbor / Domain Admin, PrivacyProtect.org, D2012-0875 (WIPO June 7, 2012); see also F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Servs., D2012-0474 (WIPO April 24, 2012).
[8] See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO August 1, 2000).
[9] See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum March 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
[10] See F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Services, supra.
[11] See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO August 17, 2000).
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