WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Publix Asset Management Company v. Privacy Protection Service - whoisproxy.ru / Oleksandr Haidash

Case No. D2021-2132

1. The Parties

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

The Respondent is Privacy Protection Service - whoisproxy.ru, Russian Federation / Oleksandr Haidash, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <publix-ad.com> is registered with RU-CENTER-MSK (Regional Network Information Center, JSC dba RU-CENTER) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2021. On July 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 7, 2021, 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. The Center an email communication to the Complainant on July 9, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complaint filed an amended Complainant on July 14, 2021.

On July 9, 2021, the Center sent an email communication to the Parties in English and Russian regarding the language of the proceeding. On July 12, 2021, the Complainant filed the request for English as the language of the proceeding. On July 13, 2021, the Center received informal communication from the Respondent with the request for Russian as the language of the Proceeding. On July 13, 2021, the Center received the Complainant's reply to the Respondent's request to conducting the proceeding in Russian. On July 14, 2021, the Center received informal communication from the Respondent reiterating request for Russian as the language of the Proceeding.

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 and 4, the Center formally notified the Respondent of the Complaint in English and Russian, and the proceedings commenced on July 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default in English and Russian on August 6, 2021.

The Center appointed Kateryna Oliinyk as the sole panelist in this matter on August 17, 2021. 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

The Complainant is a U.S company based in Florida, and a subsidiary and a licensor of trademarks to Publix Super Markets, Inc. The Complainant was founded in 1930 and today owns and operates 1,229 retail stores, where retail sales in 2020 totalled USD 44.9 billion. The Complainant employs more than 197,000 people and positions itself as the largest employee-owned business in the United States.

The Complainant owns the domain names <publix.com>, which was registered on January 31, 1995, and <publix.org>, which was registered on December 10, 1997. The domain name <publix.com> resolves to the website that describes the Complainant’s goods and services. The domain name <publix.org> resolves to the website containing resources for the Complainant's employees, including workplace, health and wellness, financial, and company resources, as well as a login prompt for Publix employees to access their personal employee accounts.

The Complainant owns various U.S. registrations for the trademark PUBLIX, in various classes of goods and services. Among these, US registration No. 1,339,762, dated June 4, 1985, filed on November 8, 1984, for retail grocery store services in class 42, claiming a first use in commerce dating back December 31, 1930.

The Respondent is an individual located in Selidovo, Ukraine. For the registration of the disputed domain name the Respondent used the proxy service provider Privacy Protection Service- whoisproxy.ru. The disputed domain name was created on September 18, 2019. The disputed domain name resolves to the website which displays advertising that invites owners of Publix gift cards to download files from another website. In addition, the webpage "https://publix-ads.com/employee-login" invites Publix employees to login to their personal employee account.

On June 1, 2021 the Complainant addressed the cease and desist letter to the Respondent with the request to cease the infringing use of the Complainant's PUBLIX trademark and to transfer the disputed domain name. No response was provided.

5. Parties’ Contentions

A. The Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s PUBLIX trademark as it includes it entirely with the addition of a dash and the generic term "ad" with the generic Top-Level Domain (“gTLD”) “.com.” Simple adding of a generic term to the PULBIX trademark does not preclude confusion between the Complainant's PUBLIX trademark and the disputed domain name.

The Complainant further contends that the Respondent lacks rights and legitimate interests in the disputed domain name because the Complainant never granted the Respondent a license or other authorization to use its PUBLIX trademark, nor has the Respondent any relationship with the Complainant that would entitle the Respondent to use the Complainant’s mark. Furthermore, to the best of the Complainant’s knowledge, the Respondent has not been commonly known by, or associated with, the disputed domain name.

According to the Complainant, the Respondent is using the disputed domain name in an infringing manner as the website to which the disputed domain name resolves displays advertising that invites owners of Publix gift cards to download files from another website, and has the login page which imitates the Complainant's login page for employee account. The Complainant provided printouts with the comments on the website under the disputed domain name indicating that the Complainant's employees have been confused by the Respondent’s disputed domain name. Such use of the disputed domain name does not constitute either bona fide use or a legitimate non-commercial or fair use of the disputed domain name. The disputed domain name is likely to divert persons seeking information about the Complainant.

The Complainant further contends that the disputed domain name has been registered and is being used in bad faith.

The Respondent registered the disputed domain name on September 18, 2019, more than 89 years after the PUBLIX trademark was first used in commerce in the United States and more than 24 years after registration of the domain name <publi th x.com>. The Complainant states that the Respondent’s clear intention is that of diverting Internet users from e Complainant's websites. Such diversion disrupts the Complainant’s relationships with customers, potential customers, and anyone else seeking information concerning the Complainant. The facts clearly demonstrate bad faith.

The Respondent failed to reply to the Complainant’s cease and desist letter, asking for the voluntary transfer of the disputed domain name.

The Respondent concealed his identity using the proxy service, but when the Registrar revealed the Respondent’s name it appeared that the Responded used to register other domain names based on other third party well-known trademarks.

B. The Respondent

The Respondent did not submit the formal Response. In unofficial communications the Respondent alleges that the publications on the website to which the disputed name resolves have been created by the Respondent and translated into English, for which purpose the Respondent engaged the freelance translator. The Respondent does not deny that he is associated with the domain name <meijer-ad.com> and also claims his authorship for publications onto the website under the disputed domain name.

6. Discussion and Findings

The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that "Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding". In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the Parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the Parties and undue delay to the proceeding. (see, e.g., Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191 stating that “[o]ne important consideration of this issue is the fairness to both Parties in their abilities to prepare the necessary documents and protect their own interests”).

The Center has provided both parties with an opportunity to comment on the language of the proceedings by sending both parties a Language of Proceeding notification, as well as other communication in both Russian and English. The Complainant has provided submissions requesting English being the language of the Proceeding. The Respondent has requested Russian being the language of the Proceeding without giving any specific reasons.

Considering that both parties have been given fair opportunities to present their cases, the Center allowed the Complaint in English, and allowed the Respondent to produce the Response either in English or Russian, and appointed the Panel familiar with English and Russian languages. All the case-related communication the Center issued both in Russian and English.

The Respondent did not submit the Response to the Complaint.

Regardless of the Respondent's allegations, the Panel considers that the following factors indicate that the Respondent, based on the balance of probabilities, is familiar with the English language and can understand it:

- the website at the disputed domain name includes the PUBLIX trademark and targets the UnitedStates market;

- the language of the website at the disputed domain name is English;

- the Respondent is also the registrant of the domain name <meijer-ad.com> incorporating the name of the American supercenter chain.

In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.

In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

A. Identical or Confusingly Similar

Ownership of a nationally or regionally registered trademark serves as prima facie evidence that the Complainant has trademark rights for the purposes of standing to file this Complaint. See section 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Complainant submitted evidence that the PUBLIX trademark has been registered the United States. Thus, the Panel finds that the Complainant’s rights in the PUBLIX trademark have been established pursuant to the first element of the Policy.

Once the gTLD“.com” is ignored as the standard registration requirement as reflected in section 1.11.1 of the WIPO Overview 3.0, the disputed domain name consists of the whole of the Complainant’s registered PUBLIX trademark combined with the term "ad" through a dash between two elements of the disputed domain name. Thus, the Complainant’s PUBLIX trademark is clearly recognizable within the disputed domain name. In fact, the use of the term "ad" merely describes the content on the Respondent’s website under the disputed domain name.

As provided in section 1.8 of the WIPO Overview 3.0, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Thus, the addition of the element “ad” does not prevent a finding of confusing similarity of the disputed domain name with the Complainant’s trademark.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the PUBLIX trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

Based on the Complainant’s contentions, the Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its PUBLIX trademark.

Based on the case records, the Panel established that the Respondent has not been commonly known by or associated with the domain name, and there is no similarity or association between the name of the Respondent and the disputed domain name.

Furthermore, the nature of the disputed domain name, including additional terms, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0.

In the Panel's view, the use of the disputed domain name by the Respondent does not constitute either bona fide use or a legitimate non-commercial or fair use of the disputed domain name, as it is clearly used to target the Complainant and trade off the goodwill of the PUBLIX trademark.

Furthermore, prior UDRP panels previously have held that use of a domain name for illegal activity—including phishing for personal information and other types of fraud—can never confer rights or legitimate interests on a respondent.

The Complainant produced evidence supporting that its employees were confused by the website at the disputed domain name and thought it was the official website of the Complainant upon completion of the form to log into their personal employee accounts and failing to do so. The Respondent also suggests that Publix gift card owners can check their remaining card balances through the Respondent’s website, but the comments on the website show that users are unable to do so. As personal data should be provided by the users of the Respondent's website under the disputed domain name, the Panel cannot preclude that the Respondent's website may constitute the platform for an illicit scheme to misappropriate visitor personal data.

Such circumstantial evidence can support a credible assumption that the Respondent is engaged in the fraudulent email activity. See section 2.1.2 of the WIPO Overview 3.0. See e.g., Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge, WIPO Case No. D2009-1017 (“Respondent has used the domain name to pretend that it is the Complainant and in particular to create false emails pretending that they are genuine emails coming from the Complainant and one of its senior executives”).

Insofar as the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests to the disputed domain name (Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261), this shifts the burden of production to the Respondent to show evidence that it has rights or legitimate interests in the disputed domain name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. The Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the disputed domain name.

In view of the absence of any evidence supporting any rights or legitimate interests in the disputed domain name, the Respondent’s attempts to confuse Internet users and trade off the goodwill of the PUBLIX trademark, the Panel therefore holds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”.

As the Panel established that the Complainant PUBLIX trademark has been fully incorporated into the disputed domain name, and as the Respondent has copied the Publix Weekly Ad sales and imitated the official websites of the Complainant, it is the Panel's view that at the time of the registration of the disputed domain name, the Respondent was well aware of the Complainant's trademark and of its activity. The additional term "ad" merely describes the content on the Respondent’s website under the disputed domain, and is emblematic of the Respondent’s bad faith attempts to create a likelihood of confusion with the Complainant.

Previous UDRP panels have also found bad faith based upon the inclusion of the Complainant’s entire mark in a disputed domain name. See, e.g., Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (registration of <cellularonechina.com> constituted bad faith use because the domain name included Complainant’s entire CELLULAR ONE mark; “it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the domain name”)

Respectively, the Panel finds that the Respondent’s website clearly misappropriates the Complainant’s trademark to attract, for commercial gain, the Internet users to the website under the disputed domain name and to divert, through confusion, Internet users away from the official Complainant’s website. As evidenced by the negative comments published onto the Respondent's website under the disputed domain name by unsuspecting and unwary people, such diversion disrupts the Complainant's relationships with its customers, potential customers, and anyone else seeking information concerning the Complainant. These facts clearly demonstrate bad faith.

Further, the Complainant sent a cease and desist letter to the Respondent, offering to settle the matter amicably though the voluntary transfer of the disputed domain name. However, the Respondent did not provide any reply.

The Panel further concludes that failure by the Respondent to answer the Complainant’s cease and desist letter suggests that the Respondent was aware that he has no rights or legitimate interests in the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith. Furthermore, the failure of the Respondent to provide the Response to the Complaint, in the view of the Panel, is another indication of bad faith on the part of the Respondent. See, e.g., Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.

Furthermore, the Respondent has masked its identity to avoid being contactable and employed the proxy service for this purpose, this factor also supports an inference of bad faith. See section 3.6. of the WIPO Overivew 3.0. Use of a privacy or proxy registration service to shield a respondent’s identity and elude or frustrate enforcement efforts by a legitimate complainant demonstrates (in addition to other circumstances) bad-faith use and registration of a disputed domain name. See, e.g., Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696 (“the use of a proxy registration service to avoid disclosing the identity of the real party in interest is also consistent with an inference of bad faith when combined with other evidence of evasive, illegal, or irresponsible conduct”).

As the Panel established that the risks of phishing or other illegal activity cannot be precluded in this case as the website under the disputed domain name collects personal data of its visitors, the use of the disputed domain name for illegal activity is also considered abusive registration of the disputed domain name under the Policy. See e.g., WSI Holdings Ltd. v. WSI House, WIPO Case No. D2004-1089 (“Respondent appears to be engaged in ‘phishing’ for mistaken potential employees of the Complainant … Respondent (1) has adopted a confusingly similar domain name, (2) it has used the trade dress of the Complainant’s website, and (3) it has sought to attract users to its site by creating confusion between its site and the Complainant’s. It has clearly engaged in activity which fulfils the bad faith requirements of Paragraph 4(b)(iv) of the Policy.”)

In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) 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-ad.com> be transferred to the Complainant.

Kateryna Oliinyk
Sole Panelist
Date: August 30, 2021