Publix Asset Management Company v. James Meyers / Domain fetish
Claim Number: FA1608001686613
Complainant is Publix Asset Management Company (“Complainant”), represented by James B. Lake of Thomas & LoCicero PL, Florida, USA. Respondent is James Meyers / Domain fetish (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <publixlawsuit.com>, registered with GoDaddy.com, LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 2, 2016; the Forum received payment on August 2, 2016.
On August 2, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <publixlawsuit.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 August 3, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 23, 2016 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@publixlawsuit.com. Also on August 3, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On September 1, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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" 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 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 registered its PUBLIX mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,339,762, registered June 4, 1985), and holds rights in the mark in connection with its business providing retail grocery amd pharmacy services. Respondent’s domain name, <publixlawsuit.com>, is confusingly similar to Complainant’s mark because it merely adds the generic term “lawsuit” and the generic top-level domain (“gTLD”) identifer “.com” to Complainant’s mark, which is included in its entirety.
2. Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or authorized Respondent to use its PUBLIX mark in any way, and Respondent is not commonly known by the disputed domain name.
3. Respondent is using the domain name to solicit personal information from mistaken Internet users, and such use does not constitute a bona fide offering of goods and services, nor does it constitute a legitimate noncommercial or fair use of the <publixlawsuit.com> domain name.
4. Respondent has engaged in bad faith registration and use of the disputed domain name. Respondent has a pattern of bad faith conduct as per Policy ¶ 4(b)(ii), which is evidenced by the many domain names Respondent owns that infringe on well-known marks. See Compl., at Attached Annex 7. Respondent also had actual notice of Complainant’s rights in the PUBLIX mark, and enganged in attempted phishing that violates Policy ¶ 4(a)(iii).
B. Respondent
1. Respondent has not submitted a Response to this Complaint.
1. Respondent’s <publixlawsuit.com> domain name is confusingly similar to Complainant’s PUBLIX mark.
2. Respondent does not have any rights or legitimate interests in the <publixlawsuit.com> domain name.
3. Respondent registered and used the <publixlawsuit.com> 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(f), 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 (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 asserts that it has rights to the PUBLIX mark based on its registration with the USPTO (e.g., Reg. No. 1,339,762, registered June 4, 1985). See Compl., at Attached Annex 4. Panels have agreed that a respondent’s registration of a mark with the USTPO confers rights in the mark per Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i).). Thus, the Panel finds that Complainant has sufficiently demonstrated rights in the PUBLIX mark.
In addition, Complainant argues that Respondent’s domain name <publixlawsuit.com> is confusingly similar to the PUBLIX mark in which Complainant claims to have rights. Complainant states that Respondent’s domain name uses its PUBLIX mark in its entirety, and that the addittion of “lawsuit” is merely a generic term, which does not sufficiently distinguish the disputed domain name from Complainant’s mark. Prior panels have held that “lawsuit” is a non-distinctive generic term under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Speyer, FA 0505000481752 (Forum June 28, 2005) (aiglawsuit.com found “insufficient to alert Internet users that the <aiglawsuit.com> domain name is not affiliated with or sponsored by Complainant” and thus confusingly similar to its AIG mark). Complainant also contends the addition of gTLD “.com” is irrelevent for discussing the similarity of the disputed domain name to the PUBLIX mark. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel chooses to agree with Complainant that the mere additions of “lawsuit” and “.com” to its entire PUBLIX mark make the <publixlawsuit.com> domain name confusingly similar as per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain
names.”).
Complainant asserts that Respondent does not have any rights or legitimate interests in the <publixlawsuit.com> domain name. Complainant states that it has not licensed or given any authorization to Respondent to use its PUBLIX mark for any purpose. Complainant further states that Respondent is not commonly known by the “publixlawsuit” name. The Panel may note the WHOIS information for the disputed domain name lists the registrant name as “James Meyers,” and the registrant organization as “Domain fetish.” See Compl., at Attached Annex 1. Panels have held that WHOIS information may imply a respondent is not commonly known by a domain name when there is no other evidence in the record to contradict the WHOIS information. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (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). Therefore, the Panel agrees with Complainant that Respondent is not commonly known by the disputed domain name as per Policy ¶ 4(c)(ii).
Complainant also contends that Respondent is not making a bona fide offering of goods and services or a legitimate noncommercial or fair use of the disputed domain name. Complainant contends that Respondent is using falsehoods on the resolving web page of the domain name to solicit personal information from Internet users. The Panel notes this alleged solicitation in Complainant’s Attached Annex 6. Prior panels have held that soliciting Internet users to give their personal information or complete surveys does not confer rights or legitimate interests in a domain name and is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Forum Mar. 29, 2004) (finding “The disputed domain name is not being used in connection with 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) because the domain name is used in a fraudulent scheme to deceive Juno users into providing their credit card and personal information.”); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. egyGossip.com, FA 1288062 (Forum Nov. 20, 2009) (finding that Respondent lacked rights and legitimate interests where the disputed domain name was used to solicit the completion of a survey by Internet users). As such, the Panel finds that Respondent lacks rights or legitimate interests in the <publixlawsuit.com> domain name and is not using the domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that Respondent has engaged in a pattern of bad faith conduct regarding domain name registration. Complainant argues that Respondent has engaged in a pattern of registering domain names that infringe on the marks of third parties, such as <stapleslawsuit.com>, <24hourfitnesslawsuit.com>, and <marykaylawsuit.com>, as well as others. See Compl., at Attached Annex 7. Panels have held that WHOIS information can be used to establish a pattern of bad faith registrations. See N.H. Sweepstakes Comm’n v. We Web Well, Inc., FA 197499 (Forum Nov. 3, 2003) (finding that the complainant’s submission of WHOIS evidence that listed the respondent as the registrant of other domain names incorporating third-party trademarks was sufficient to establish that the respondent had a pattern of registering and using domain names in bad faith pursuant to Policy ¶ 4(b)(ii)). Thus, the Panel chooses to hold Respondent in bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(ii).
Complainant next argues that Respondent had actual notice of its rights in the PUBLIX mark and engaged in bad faith under Policy ¶ 4(a)(iii). Complainant cites that it has been using its mark for eighty years prior to Respondent’s registration of the <publixlawsuit.com> domain name, and that Respondent’s website refers to “Publix Supermarket” and “Publix Pharmacy,” both of which relate to Complainant’s use of the PUBLIX mark. See Compl., at Attached Annex 6. Although the UDRP does not recognize constructive notice as sufficient grounds for establishing bad faith, panels have held that respondents have had actual notice when the domain name refers to the complainant’s field of operation. See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation). The Panel finds Respondent had actual notice of the PUBLIX mark at the time of registration, thus demonstrating bad faith under Policy ¶ 4(a)(iii).
Complainant also contends that Respondent’s attempt to solicit personal information from Internet users is evidence of bad faith. Respondent’s domain resolves to a website that prompts users to enter personal information under the guise of becoming part of a lawsuit against Complainant. See Compl., at Attached Annex 6. Panels have found bad faith when the respondent is attempting to fraudulently acquire such information. See Hess Corp. v. GR, FA 770909 (Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name). Ultimately, the Panel finds Respondent was fraudulently attempting to acquire Internet users’ personal information, in violation of 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 <publixlawsuit.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 13, 2016
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