Albertson's, Inc. and Albertsons
Employees Federal Credit Union v. Modern Limited - Cayman Web Development
Claim Number: FA0308000178222
Complainants are Albertson's, Inc. and Albertsons
Employees Federal Credit Union Boise, ID (“Complainants”) represented by Gary J. Nelson of Christie Parker &
Hale LLP. Respondent is Modern
Limited - Cayman Web Development, George Town, Grand Cayman (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <albertsonscreditunion.com> registered
with Address Creation.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Hon.
Ralph Yachnin as Panelist.
Complainants
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on August 1, 2003; the Forum received a hard copy of the
Complaint on August 1, 2003.
On
August 11, 2003, Address Creation confirmed by e-mail to the Forum that the
domain name <albertsonscreditunion.com> is registered with Address
Creation and that Respondent is the current registrant of the name. Address
Creation has verified that Respondent is bound by the Address Creation registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
August 12, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 1, 2003 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent's registration as technical, administrative and
billing contacts, and to postmaster@albertsonscreditunion.com by e-mail.
On
August 12, 2003, in response to the Forum’s service of the Complaint on
Respondent, the Forum received an e-mail that stated, in its entirety, “We have
no use for this domain and it was purchased in an automated system. You can
have the domain.” This informal Response raised no substantive claim recognized
by the Policy.
Having
received no formal Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
September 29,2003, pursuant to Complainants’ request to have the dispute
decided by a single-member Panel, the Forum appointed Hon. Ralph Yachin as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's
Supplemental Rules and any rules and principles of law that the Panel deems
applicable, without the benefit of any formal Response from Respondent.
Complainants
request that the domain name be transferred from Respondent to Complainant,
Albertsons Employees Federal Credit Union.
A. Complainants make the following assertions:
1. Respondent’s <albertsonscreditunion.com>
domain name is confusingly similar to Complainants’ ALBERTSONS mark.
2. Respondent does not have any rights or
legitimate interests in the <albertsonscreditunion.com> domain
name.
3. Respondent registered and used the <albertsonscreditunion.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainants
have produced evidence of a number of trademark registrations with the United
States Patent and Trademark Office (“USPTO”) for the ALBERTSONS mark, including
Reg. No. 885,630 (registered on February 3, 1970) related to retail grocery
store services.
Complainant,
Albertsons Employees Federal Credit Union, has been using the ALBERTSONS
service mark for the operation of a credit union since 1965 under license from
Complainant, Albertson’s, Inc.
Respondent
registered the <albertsonscreditunion.com> domain name on April
15, 2003. Respondent is using the disputed domain name to redirect Internet
traffic to a commercial website, which features links to a variety of different
websites.
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.
Paragraph 4(a)
of the Policy requires that Complainants 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.
Complainants
have established rights in the ALBERTSONS mark through registration with the
USPTO. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum
Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption
that they are inherently distinctive and have acquired secondary meaning”); see
also Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions
have held that registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive.
Respondent has the burden of refuting this assumption).
Complainants
contend that Respondent’s <albertsonscreditunion.com> domain name
is confusingly similar to Complainants’ ALBERTSONS mark because the disputed
domain name appropriates Complainants’ entire mark and adds the generic or
descriptive terms “credit” and “union” to Complainants’ mark. The addition of
these generic or descriptive terms does not serve to vitiate the confusing similarity
between the domain name and the mark because the terms “credit” and “union”
directly relate to one of the services offered by Complainant, Albertsons
Employees Federal Credit Union, through a license arrangement with Complainant,
Albertson’s, Inc. See Space Imaging LLC v.
Brownwell, AF-0298 (eResolution Sept. 22,
2000) (finding confusing similarity where Respondent’s domain name combines
Complainant’s mark with a generic term that has an obvious relationship to
Complainant’s business); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar.
13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is
confusingly similar to Complainant’s MARRIOTT mark).
The
Panel finds that Complainant has demonstrated Policy ¶ 4(a)(i).
Respondent has
failed to rebut the allegations contained in Complainants’ submission.
Therefore, the Panel accepts all reasonable allegations and inferences in the
Complaint as true. See Do the Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest
complainant’s allegations] is tantamount to admitting the truth of
complainant’s assertion in this regard”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that Complainant’s
allegations are true unless clearly contradicted by the evidence).
Moreover, based
on Respondent’s failure to contest Complainants’ allegations, the Panel
presumes that Respondent lacks any rights to or legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9,
2000) (finding that by not submitting a Response, Respondent has failed to
invoke any circumstance which could demonstrate any rights or legitimate
interests in the domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000)
(finding that Respondent has no rights or legitimate interests in the domain
name because Respondent never submitted a Response or provided the Panel with
evidence to suggest otherwise).
Respondent is
using the <albertsonscreditunion.com> domain name to divert
Internet traffic to a website that offers links to commercial websites in a
variety of fields. Respondent’s diversionary use of the disputed domain name to
redirect Internet users to commercial websites represents neither a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See
WeddingChannel.com Inc. v. Vasiliev a/k/a NA and Free Domains Parking, FA
156716 (Nat. Arb. Forum June 12, 2003) (finding that Respondent’s use of the
disputed domain name to redirect Internet users to websites unrelated to Complainant’s
mark, websites where Respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or services as
contemplated by the Policy); see also
Disney Enterss, Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum March 17,
2003) (finding that Respondent’s diversionary use of Complainant’s mark to
attract Internet users to its own website, which contained a series of
hyperlinks to unrelated websites, was neither a bona fide offering of goods or
services nor a legitimate noncommercial or fair use of the disputed domain
names).
Furthermore,
after being served with the Complaint, Respondent, via e-mail, indicated that
it had no use for the <albertsonscreditunion.com> domain name and
would be willing to transfer the domain name to Complainant. Respondent’s
willingness to transfer the disputed domain name indicates Respondent has no
rights to or legitimate interests in the domain name. See Marcor Int’l v. Langevin, FA 96317
(Nat. Arb. Forum Jan. 12, 2001) (Respondent’s willingness to transfer the
domain name at issue indicates that it has no rights or legitimate interests in
the domain name in question); see also Land O’ Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum
Feb. 23, 2001) (finding that Respondent’s willingness to transfer upon
notification of the Complaint is evidence of its lack of legitimate interests
or rights).
Respondent has
presented no proof and there is no evidence in the record that suggests that
Respondent is commonly known by ALBERTSONS CREDIT UNION or <albertsonscreditunion.com>.
Thus, the Panel concludes that Respondent has failed to establish any rights to
or legitimate interests in the disputed domain name in accordance with Policy ¶
4(c)(ii). See Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
Respondent does not have rights in a domain name when Respondent is not known
by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum
May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that
one has been commonly known by the domain name prior to registration of the
domain name to prevail").
Accordingly, the
Panel finds that Complainant has demonstrated Policy ¶ 4(a)(ii).
Respondent’s use
of the <albertsonscreditunion.com> domain name to divert Internet
traffic to a search engine featuring commercial websites suggests that
Respondent profits from its use of a domain name confusingly similar to
Complainant’s mark. Respondent’s use indicates that Respondent has
intentionally attempted to attract Internet users to its website for commercial
gain by creating a likelihood of confusion with Complainant’s mark as to the
source, sponsorship, affiliation or endorsement of Respondent’s website, which
is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum
Nov. 21, 2002) (finding that Respondent registered and used the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22,
2002) (finding that if Respondent profits from its diversionary use of
Complainant's mark when the domain name resolves to commercial websites and
Respondent fails to contest the Complaint, it may be concluded that Respondent
is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Moreover, Respondent
has volunteered to transfer the <albertsonscreditunion.com> domain
name to Complainant. Respondent’s offer, after being served with the present
Complaint, suggests that the disputed domain name was registered and used in
bad faith. See Global Media Group,
Ltd. v. Kruzicevic, FA 96558 (Nat. Arb. Forum Mar. 7, 2001) (finding
Respondent’s failure to address Complainant’s allegations coupled with its
willingness to transfer the names is evidence of bad faith registration and
use); see also Desotec N.V. v.
Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that
Respondent’s failure to submit a formal Response combined with its agreement at
the onset of the Complaint to transfer the disputed names satisfies all the
requirements of 4(a)).
The Panel finds
that Policy ¶ 4(a)(iii) has been demonstrated.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <albertsonscreditunion.com> domain name be TRANSFERRED
from Respondent to Complainant, Albertsons Employees Federal Credit Union.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
September 30, 2003
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