EthnicGrocer.com, Inc., Chicago, IL, USA
COMPLAINANT,

vs.

Unlimited Latin Flavors, Inc., Miami, FL, USA
RESPONDENT.

DECISION
Claim Number: FA0003000094385

REGISTRAR AND DISPUTED DOMAIN NAME(s) 

The domain name at issue is “ETHNICGROCERS.COM”, registered with Register.com.

PANELIST(s)

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 03/31/2000; The Forum received a hard copy of the Complaint on 03/31/2000.

On June 30, 2000 register.com confirmed to The Forum that the domain name “ethnicgrocers.com” is registered with register.com and has thereby agreed to Resolve domain name disputes brought by third parties in accordance with ICANN’s UDRP.

On 04/05/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email. The parties requested an extension period to negotiate a settlement, setting a default deadline of 05/17/2000 by which Respondent could file a Response to the Complaint.

On 05/17/2000, having received no 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 July 5, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Judge Harold Kalina (Ret.) 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 Uniform 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 Response from the Respondent.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The Complainant contends that the Respondent, the Complainant’s competitor, has registered a domain name that is confusingly similar to its trademark registered for and in use by the Complainant.  Further, the Complainant contends that the Respondent has no rights or legitimate interests to the domain name, and that the respondent has registered and is using the domain name in bad faith.                 

B.     Respondent

The Respondent submitted no response in this matter.

FINDINGS

The Complainant is a web-based provider of ethnic foods and products.  In 1998, the Complainant registered domain names <ethnicgrocer.com> and <querico.com> for use in connection with its online services.  The Complainant filed for U.S. trademark registration for the marks ETHNICGROCER.COM (No. 75/818109) and QUERICO.COM (75/818110) on 10/08/1999.

In July 1999, the Complainant and the Complainant’s marks and domain names received national press coverage in U.S. News & World Report.  This publication issue dated July 26, 1999 was available on the newsstands on July 19, 1999.  This incident generated significant interest in the Complainant’s business and its websites now generate on the average a total of over 500,000 hits per day.

The Respondent offers Latin foods and products, similar to the Complainant, on its website, <latingrocer.com>.  On July 22, 1999, the Respondent registered the domain name in question.  The Respondent uses the site in question as a pass-through site to its website.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy (“Policy”) requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

Identical and/or Confusingly Similar

The Complainant has rights in the marks ETHNICGROCER.COM and QUERICO.COM.

The variation between the Complainant’s marks and the Respondent’s domain name is minor.  By adding an “s” to the Complainant’s mark, the Respondent has created confusion with the Complainant’s mark.  See Marriott Int’l, Inc. v. Café au lait, FA 93670 (Nat. Arb. Forum March 13, 2000) (holding that the Respondent’s domain name <Marriott-Hotel.com> was confusingly similar to Marriott’s marks and domain name <Marriott.com>).

Rights or Legitimate Interests

Complainant asserts that the Respondent has no rights or legitimate interests in the domain name in question.  The Respondent has not denied that assertion.

The domain name in question is not a term by which the Respondent is commonly known.  Policy ¶ 4(c)(ii).  Rather, the Respondent is commonly known as <latingrocer.com>.

The Respondent has made no claim that it is using the domain name in connection with a bona fide offering of goods and services nor for a legitimate or fair use.  Policy ¶ 4(c)(i), (iii).  The Respondent registered the domain name in question within a short time frame after the Complainant’s nationwide press coverage.  The site only serves as a pass-through site to the Respondent’s competing website.  See Hewlett-Packard v. Full System, FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that the Respondent had no legitimate interest in the domain name, <openmail.com>, that was being used to compete with the Complainant’s e-mail services).

Based on the above, the panel concludes that the Respondent has no rights or legitimate interests in the domain name in question.

Registration and Use in Bad Faith

The Complainant asserts that the Respondent acted and is acting in bad faith.  The Respondent has not denied that assertion.

The Respondent registered the domain name in bad faith.  Because the Respondent is a competitor of the Complainant and Complainant received substantial publicity, the Respondent knew of the Complainant’s marks. 

In addition, the minor degree of variation from the Complainant's marks suggests that the Respondent registered the names primarily for the purpose of disrupting the Complainant's business.  Policy ¶ 4(b)(iii).  This is evidence of use of the domain name in bad faith.  See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the Respondent acted in bad faith by registering the domain name <fossilwatch.com> and using it to sell various watch brands).

The Respondent has used this domain to divert business traffic to its own commercial site.  Policy ¶ 4(b)(iv).

Based on the above, the Panel concludes that the Respondent registered and used this domain name in bad faith.

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted. 

Accordingly, for all of the foregoing reasons, it is ordered that the domain name, “ETHNICGROCERS.COM” be transferred from the Respondent to the Complainant.

Judge Harold Kalina (Ret.)
Dated: July 7, 2000

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