World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Publix Asset Management Company v. Aseruy Werty / Suspended by Registrar

Case No. D2012-1469

1. The Parties

Complainant is Publix Asset Management Company of Lakeland, Florida, United States of America (the “United States” or “U.S.”), represented by Thomas & LoCicero PL, of Tampa, Florida, United States.

Respondent is (as identified in the relevant WhoIs records) Aseruy Werty of “Serty,” United States / Suspended by Registrar of Nassau, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <publix-pharmacy.com> (the “Disputed Domain Name”) is registered with Internet.bs Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2012. On July 19, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 23, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on July 26, 2012.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 23, 2012.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on September 5, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant states that it, its parent company and its affiliates (collectively referred to hereafter as “Complainant”) is “one of the largest retail grocers in the United States.” Complainant further states that its stores “contain retail pharmacies and offer pharmacy services throughout the Southeastern United States” and that it “currently operates more than 700 in-store pharmacies in five states and allows customers to order prescription refills via the Internet.”

Complainant states, and provides evidence to support, that (through a related company that licenses the relevant trademarks), it is the registrant of the domain names <publix.com>, <publixpharmacy.com> and <publixpharmacy.net>.

Complainant states, and provides evidence to support, that it is the owner of numerous federal trademark registrations in the United States for the mark PUBLIX (the “PUBLIX Trademark”), including the following:

- U.S. Reg. No. 1,339,762, first used on December 31, 1930; registered on June 4, 1985, for use in connection with “retail grocery store services.”

- U.S. Reg. No. 1,772,104, first used on October 30, 1986; registered on May 18, 1993, for use in connection with “pharmacy services.”

Complainant states, and provides evidence to support, that the Disputed Domain Name was previously used in connection with a website that “linked to an infringing site that offered prescription drugs for various conditions such as erectile disfunction [sic], pain management, and depression” and that it “displayed the PUBLIX® mark and logo atop every page.” Complainant states, and provides evidence to support, that, after it sent a demand letter to the registrant of the Disputed Domain Name, previously identified as “Fundacion Private Whois,” the website and registrant were changed, although no response was received. Complainant states, and provides evidence to support, that the Disputed Domain Name currently links to “a web site that serves as a portal and offers links that change on subsequent visits,” including links labeled “$25 Walgreens Card,” “Walmart Drug Store,” “Publix Coupons & Deals” and “Publix Jobs.”

The Disputed Domain Name was created on January 31, 2012.

5. Parties’ Contentions

A. Complainant

Complainant contends, in relevant part, as follows:

- The Disputed Domain Name is confusingly similar to the PUBLIX Trademark because it incorporates the PUBLIX Trademark in its entirety and adds only the descriptive word “pharmacy,” which is associated with the PUBLIX Trademark.

- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not licensed or authorized to use Complainant’s trademarks in any manner,” “Complainant has neither consented to nor acquiesced in the use of its trademarks by Respondent,” “Respondent is not commonly known by the domain name,” “Respondent’s web site offers links to pharmacies in competition with Publix” and “Respondent has not made any demonstrable preparations to use the domain name or any name corresponding to thereto in connection with the bona fide offering of goods or services.”

- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, consumers are “being misdirected to the Respondent’s web site, which offers links to third-party companies that provide pharmacy services similar to those offered by Complainant”; and “Respondent is commercially benefitting from ‘click-through-fees’ it receives from links posted on the web site associated with the disputed domain name.”

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant it is apparent that Complainant has rights in and to the PUBLIX Trademark.

As to whether the Disputed Domain Name is identical or confusingly similar to the PUBLIX Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “publix-pharmacy”), as it is well-established that the top-level domain name suffix (“gTLD”, i.e., “.com”) should be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.2 (“WIPO Overview 2.0”, “The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).

Inclusion of a hyphen in the Disputed Domain Name is irrelevant. See, e.g., Di-El Industrie-Electronic GmbH and TR Electronic v. E-Orderdesk, WIPO Case No. D2007-0961 (“the use or absence of punctuation marks such as hyphens does not alter the fact that the domain name at issue is identical or confusingly similar to the trademark at issue”) (citing The Coca-Cola Company v. Bernard Peters, WIPO Case No. D2007-0478); and Diamonique Corporation v. Foley Services, WIPO Case No. D2007-0893 (“the presence of the dash [in the Disputed Domain Name] is irrelevant…. [and] ‘add[s] no distinctiveness whatsoever’” (citing Dr. Grandel GmbH v. West End Internet Services, WIPO Case No. D2005-0853).

Further, the addition of certain words, as here (that is, “pharmacy”), can “exacerbate[] the confusing similarity between the [Complainant’s] trademark and the Domain Name and increase[] the risk of confusion between the Domain Name and the… trademarks.” Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Kenneth Terrill, WIPO Case No. D2010-2124 (citing Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561 (citing Yellow Corporation v. MIC, WIPO Case No. D2003-0748 (“when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity”)).

Here, because the word “pharmacy” is associated with the PUBLIX Trademark, this word increases the confusing similarity between the Disputed Domain Name and Complainant’s trademark. See, e.g., Gateway Inc. v. Domaincar, WIPO Case No. D2006-0604 (finding the domain name <gatewaycomputers.com> confusingly similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY Marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”); and Guccio Gucci S.p.A. v. Hainei Zhou, WIPO Case No. D2011-1017 (finding the domain name <gucci-jewelry.com> confusingly similar to the trademark GUCCI).

Accordingly, the Panel finds that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant has argued that, inter alia, “Respondent is not licensed or authorized to use Complainant’s trademarks in any manner,” “Complainant has neither consented to nor acquiesced in the use of its trademarks by Respondent,” “Respondent is not commonly known by the domain name,” “Respondent’s web site offers links to pharmacies in competition with Publix” and “Respondent has not made any demonstrable preparations to use the domain name or any name corresponding to thereto in connection with the bona fide offering of goods or services.”

Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1.

Accordingly, as a result of Complainant’s supported allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

Repeatedly under the Policy, panels have found that use of a domain name in connection with a monetized parking page, under the circumstances present here, amounts to bad faith under paragraph 4(b)(iv). See e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850; Columbia Pictures Industries, Inc. v. North West Enterprise, Inc., WIPO Case No. D2006-0951; and Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753.

Accordingly, the Panel finds that Complainant has proven the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <publix-pharmacy.com> be transferred to Complainant.

Douglas M. Isenberg
Sole Panelist
Dated: September 19, 2012

 

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