Giant Eagle, Inc. v Giant Eagle / Giant Eagle Inc
Claim Number: FA1410001586562
Complainant is Giant Eagle, Inc. (“Complainant”), represented by Amanda Conley of Cobalt LLP, California, USA. Respondent is Giant Eagle / Giant Eagle Inc (“Respondent”), South Africa.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gianteagleinc.com>, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 23, 2014; the National Arbitration Forum received payment on October 23, 2014.
On October 24, 2014, Godaddy.Com, LLC confirmed by e-mail to the National Arbitration Forum that the <gianteagleinc.com> 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 October 28, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 17, 2014 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@gianteagleinc.com. Also on October 28, 2014, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 25, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
1. Complainant has rights in the GIANT EAGLE mark as evidence by trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,287,433, registered July 24, 1984). Complainant uses the GIANT EAGLE mark for retail grocery store services.
2. The <gianteagleinc.com> domain name is confusingly similar to the GIANT EAGLE mark as the domain name entirely incorporates Complainant’s entity name, Giant Eagle, Inc.
3. Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by GIANT EAGLE or the <gianteagleinc.com> name, nor is Respondent authorized to use the GIANT EAGLE mark.
4. Respondent used the disputed domain name to create an e-mail account to impersonate Complainant’s Executive Vice Present in order to perpetuate fraud. There is no bona fide offering or genuine noncommercial or fair use in such fraudulent impersonation.
5. Respondent’s bad faith is evidenced by Respondent’s registration of the domain name to create an associated e-mail account and use that account to fraudulently impersonate Complainant’s Executive Vice President and place orders for computer equipment to be charged to Complainant’s account.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the GIANT EAGLE mark. Respondent’s domain name is confusingly similar to Complainant’s GIANT EAGLE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <gianteagleinc.com>domain name, and that Respondent registered and uses the domain name in bad faith.
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.
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.”).
Complainant uses the GIANT EAGLE mark for retail grocery store services. Complainant has Policy ¶ 4(a)(i) rights in the GIANT EAGLE mark as demonstrated by trademark registrations with the USPTO (e.g., Reg. No. 1,287,433, registered July 24, 1984), despite Respondent’s apparent residence in South Africa. See Homer TLC, Inc. v. Song Bin, FA 1505218 (Nat. Arb. Forum July 30, 2013) (“Complainant’s USPTO registration sufficiently establishes its rights in the HOME DEPOT mark under Policy ¶4(a)(i), despite the fact Respondent resides outside of the United States.”).
Complainant argues the <gianteagleinc.com> domain name, registered in October 2014, is confusingly similar to the GIANT EAGLE mark as the domain name entirely incorporates Complainant’s entity name, Giant Eagle, Inc. The additions of the business indicator “inc” and the generic top-level domain (“gTLD”) “.com” fail to negate the confusing similarity of the use of the GIANT EAGLE mark less spacing. See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity); U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts that Respondent is not commonly known by GIANT EAGLE or the gianteagleinc.com> name, nor is Respondent authorized to use the GIANT EAGLE mark. The WHOIS information lists “Giant Eagle” of “Giant Eagle Inc” as the registrant. Nevertheless, there is no evidence of any outside association between Respondent and the “Giant Eagle Inc” name beyond Respondent’s own self-serving association. Accordingly, the Panel holds that Respondent is not commonly known by the gianteagleinc.com> name pursuant to Policy ¶ 4(c)(ii). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that, although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).
Complainant further argues that Respondent used the disputed domain name to create an e-mail account to impersonate Complainant’s Executive Vice Present in order to perpetuate fraud. Complainant explains that Respondent used the false e-mail to place orders for computer equipment to be charged to Complainant’s account and then delivered to an off-site location. Complainant has provided in the record e-mail correspondences sent from this suspect e-mail account. Respondent’s attempt to impersonate Complainant under the guise of the <gianteagleinc.com> domain name and associated e-mail in furtherance of a fraudulent scheme amounts to neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii). See Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA 1550388 (Nat. Arb. Forum May 5, 2014) (the respondent lacked rights and legitimate interests in the disputed domain name where the respondent used the domain name to send e-mails to various IT hardware suppliers in an attempt to impersonate the complainant and defraud the suppliers).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
As discussed above, Complainant has shown that Respondent is using the disputed domain name to create an associated e-mail account and use that account to fraudulently impersonate Complainant’s Executive Vice President and place orders for computer equipment to be charged to Complainant’s account. There is evidence of bad faith under Policy ¶ 4(a)(iii) where the respondent relies on a domain name and associated e-mail in furtherance of fraud or illegal activity. For example, the panel in National Oilwell Varco, L.P. v. Craig Wood / NOV, FA 1575951 (Nat. Arb. Forum September 22, 2014), wrote, “We are persuaded by the evidence that Respondent’s use of the <nov-inc.com> domain name to commit a commercial fraud while purporting to act in the name of Complainant, all as alleged in the Complaint, demonstrates bad faith in the registration and use of the domain name.” The Panel agrees that Respondent’s efforts to impersonate Complainant through fraudulent e-mails is indicative of Policy ¶ 4(a)(iii) bad faith.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gianteagleinc.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 6, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page