SUPERVALU INC. v. Duncan Alan
Claim Number: FA1610001697194
Complainant is SUPERVALU INC. (“Complainant”), represented by Gregory Golla of Merchant & Gould P.C., Minnesota, United States. Respondent is Duncan Alan (“Respondent”), Minnesota, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <supervaluinc.us>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 October 7, 2016; the Forum received payment on October 7, 2016.
On October 8, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <supervaluinc.us> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 10, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 31, 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@supervaluinc.us. Also on October 10, 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 November 7, 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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’s Contentions
1. Complainant uses its SUPERVALU mark in connection with the sale of grocery products in commerce. Complainant has registered the SUPERVALU mark with the United States Patent and Trademark Office
(“USPTO”) (e.g., Reg. No. 631,486, registered July 24, 1956), which demonstrates Complainant’s rights in its mark. See Compl., at Attached Ex. 1F. The <supervaluinc.us> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the descriptive term “inc” and the “.us” country-code top-level domain
(“ccTLD”).
2. Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the domain name, and Respondent has not received permission from Complainant to use the mark. Further, Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to send phishing e-mails to individuals and gain information from those individuals. See Compl., at Attached Ex. 5.
3. Respondent registered and is using the domain name in bad faith. First, Respondent uses the domain name for phishing attacks. Id. Second, Respondent submitted false contact information at the time it registered the domain name. Finally, because of Complainant’s longstanding rights in the SUPERVALU mark, it is clear that Respondent registered the domain name with at least constructive knowledge of Complainant’s mark and rights therein.
B. Respondent’s Contentions
1. Respondent did not submit a response in this proceeding.
1. Respondent’s <supervaluinc.us> domain name is confusingly similar to Complainant’s SUPERVALU mark.
2. Respondent does not have any rights or legitimate interests in the <supervaluinc.us> domain name.
3. Respondent registered or used the <supervaluinc.us> 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 uses its SUPERVALU mark in connection with the sale of grocery products in commerce. Complainant has registered the SUPERVALU mark with the USPTO (e.g., Reg. No. 631,486, registered July 24, 1956), which Complainant contends demonstrates its rights in the mark. See Compl., at Attached Ex. 1F. The Panel finds that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in its mark per Policy ¶ 4(a)(i).
Complainant argues that the <supervaluinc.us> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the descriptive term “inc” and the “.us” ccTLD. Panels have held that these changes do not serve to adequately distinguish a respondent’s domain name from a complainant’s mark pursuant to Policy ¶ 4(a)(i). See Am. Online, Inc. v. Karandish, FA 563833 (Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)); see also Lockheed Martin Corp. v. Roberson, FA 323762 (Forum Oct. 19, 2004) (holding that the ccTLD “.us” does not differentiate the disputed domain name from Complainant’s mark). As such, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under 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 argues that Respondent has no rights or legitimate interests in the domain name because Respondent has not received permission from Complainant to use the SUPERVALU mark or any derivative mark for any purpose. Panels have held that a respondent lacks rights and legitimate interests in a domain name where there is no evidence to support a finding that the respondent is the owner or beneficiary of a mark that is identical to a disputed domain name. See Meow Media Inc. v. Basil, FA 113280 (Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name). The Panel finds that Respondent is not the owner or beneficiary of a mark that is identical to the domain name, and finds that Respondent does not own any mark that is substantially similar to that of the disputed domain name per Policy ¶ 4(c)(i).
Complainant argues that Respondent is not commonly known by the domain name. The Panel notes that the WHOIS information for the domain name lists “Duncan Alan” as registrant. See Compl., at Attached Ex. 3. Because Respondent has failed to provide a response in this proceeding, the Panel finds that there is no factual basis to find Respondent commonly known by the domain name pursuant to Policy ¶ 4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant alleges that Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Complainant claims that Respondent uses the domain name to send phishing e-mails to individuals and gain information from those individuals. See Compl., at Attached Ex. 5. Panels have decided that a respondent’s use of a domain name for the purpose of phishing for Internet users’ personal and/or financial information does not constitute 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 that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use). Thus, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) and (iv).
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Complainant argues that Respondent uses the domain name for phishing attacks. See Compl., at Attached Ex. 5. Panels have held that a respondent’s use of a domain name to phish for Internet users’ personal and/or financial information constitutes bad faith registration and use. See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). For this reason, the Panel finds that Respondent registered and is using the domain name in bad faith.
Complainant asserts that Respondent submitted false contact information at the time it registered the domain name. Specifically, Complainant claims that Respondent provided Supervalu’s official address as its address. Panels have agreed that a respondent’s use of false contact information in connection with the registration of a domain name is evidence of bad faith registration and use. See 3636275 Canada v. eResolution.com, D2000-0110 (WIPO Apr. 10, 2000) (finding that use of false registration information constitutes bad faith). The Panel accepts Complainant’s argument, and finds that Respondent has engaged in bad faith registration and use.
Finally, Complainant maintains that because of its longstanding rights in the SUPERVALU mark, it is clear that Respondent registered the domain name with at least constructive knowledge of Complainant’s mark and rights therein. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <supervaluinc.us> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: 11/22/16
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