WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Publix Asset Management Company v. WhoisGuard, Inc. / Entrep, David Levey / Mr. Dunaway
Case No. D2013-1349
1. The Parties
Complainant is Publix Asset Management Company, Lakeland, Florida, United States of America, represented by Thomas & LoCicero PL, United States of America.
Respondent is WhoisGuard, Inc. of Los Angeles, California, United States of America; Entrep, David Levey of Alabaster, Alabama, United States of America; Mr. Dunaway.
2. The Domain Name and Registrar
The disputed domain name <publixical.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2013. On July 29, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 5, 2013 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 sent an email communication to Complainant on August 6, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 10, 2013.
The Center verified that the Complaint and 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 August 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 4, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 6, 2013.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on September 25, 2013. 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.
On October 10, 2013, the Panel issued a Procedural Order No.1 (“the Order”) requesting that Complainant clarify whether it was alleging that Respondent had made unauthorized attempts to gain access to its secure servers. On October 16, 2013, Complainant filed a Supplemental Brief in response to the Order. Respondent did not.
4. Factual Background
Complainant is the intellectual property holding company for Publix Super Markets, Inc., which is the parent company of more than 1,000 retail stores in the Southeastern United States. Complainant owns numerous United States trademark registrations for the mark PUBLIX for a variety of goods and services, including the following:
PUBLIX - Registration No. 1339762; Registered on June 4, 1985;
PUBLIX - Registration No. 1370458; Registered on November 12, 1985; and
PUBLIX and Design - Registration No. 1373131; Registered on November 26, 1985.
Complainant’s <publix.com> domain name was registered on January 31, 1995.
The disputed domain name was registered on February 7, 2013.
5. Parties’ Contentions
With respect to paragraph 4(a)(i) of the Policy, Complainant alleges that:
Complainant is the registered proprietor of a number of trademark registrations for the mark PUBLIX as noted above.
The disputed domain name consists of Complainant’s PUBLIX mark, in its entirety, followed by the generic suffix “ical”, an easily recognized shorthand for “i calendar”. This term does not significantly alter or otherwise distinguish the disputed domain name from the PUBLIX mark.
With respect to paragraph 4(a)(ii) of the Policy, Complainant alleges that:
Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name is not being used for a bona fide offering of goods or services. Respondent is not commonly known by the domain name and has no authorization to use Complainant’s mark for any purpose. Rather, the disputed domain name has been used to access Complainant’s internal computer system without permission. It was created to promote this software and to capitalize on the PUBLIX mark and attract Publix web traffic. The webpage at “www.publixical.com” displays the PUBLIX word mark in a typeface and on a green background that are similar to the typeface and colors used by Publix. The site displays prompts asking Publix employees to enter the usernames and passwords that allow them access to Publix’s computer system. The registration and use of <publixical.com> to garner the usernames and passwords of Publix employees threatens to disrupt Complainant’s relationship with its employees. In addition, the use of the PUBLIX word mark on the disputed domain name and associated web page is likely to divert Internet users from Complainant’s website “www.publix.com”. Such diversion disrupts Complainant’s relationships with employees, customers, potential customers, and others wishing to transact business with Complainant.
Respondent has not used or prepared to use the disputed domain name or a corresponding name in connection with a bona fide offering of goods or services. Rather, Respondent’s only documented use involved infringement and an attempted breach of Complainant’s computer system. Moreover, as a department manager in a single Publix store, Respondent did not have any right or authority to register a domain name containing the PUBLIX word mark or to permit use of that mark by anyone else. After Complainant blocked these efforts to access Complainant’s computer system, the content from the web page at the <publixical.com> disputed domain name was temporarily removed. Respondent continues to hold the disputed domain name, and a demand that use of the domain name cease was refused. Moreover, search engines still describe the <publixical.com> disputed domain name as offering services for Publix employees, and the associated Facebook page is still active, using the PUBLIX mark.
With respect to paragraph 4(a)(iii) of the Policy, Complainant alleges that:
Respondent registered the disputed domain name in bad faith. Complainant’s PUBLIX mark is not a word that is in common use, nor is it identified with a legitimate business or activity apart from the business of Complainant. Respondent has wrongfully and deliberately appropriated Complainant’s PUBLIX mark and combined it with a generic term (“ical”) in order to encourage direct Internet traffic to the disputed domain name based on its illicit association with Complainant. The disputed domain name includes the PUBLIX mark in its entirety. The only reason for Respondent to select such a domain name is in order to profit from Complainant’s marks and the associated goodwill, purporting to provide a service related to Complainant.
Respondent is using the disputed domain name in bad faith. Initially, Respondent or Mr. Dunaway, used the disputed domain name in an infringing manner, by placing Complainant’s PUBLIX marks on the associated web page, asking Complainant’s associates for their usernames and passwords and attempting to access Complainant’s computer system. As an employee of Complainant when the disputed domain name was registered, Respondent obviously was fully aware of the name of his employer and had actual notice of the PUBLIX mark. Use of the mark on the “www.publixical.com” web page and the Publixical Facebook page demonstrate further actual notice of the mark. Actual notice is evidence of bad faith registration and use. Since Complainant blocked access to Complainant’s computer system, Respondent has used the disputed domain name in bad faith by passively holding the domain name. Although the disputed domain name is linked to a web page that indicates the site is “now offline”, Respondent could resume active use at any time. Respondent’s passive holding of the disputed domain name constitutes bad faith.
In a Supplemental Brief, Complainant further asserted that Respondent had collected and saved without authority the passwords of 101 employees and used them more than 100,000 times to attempt to gain access to Complainant’s servers.
The Respondent did not reply to Complainant’s contentions.
Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations in the Complaint, and may draw appropriate inferences. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(e) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”).
6. Discussion and Findings
A. Identical or Confusingly Similar
Given Complainant’s trademark registrations for its PUBLIX mark prior to the registration of the disputed domain name, the Panel finds that Complainant has trademark rights in the PUBLIX mark.
The Panel also finds that the disputed domain name is either identical or confusingly similar to Complainant’s PUBLIX mark. The disputed domain name <publixical.com> incorporates Complainant’s entire registered trademark with the addition of only the suffix “ical” which neither distinguishes the disputed domain name from Complainant’s mark nor avoids confusion with Complainant’s mark.
B. Rights or Legitimate Interests
In order for Respondent to demonstrate rights or legitimate interests in the disputed domain name, it must show:
(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name.
With respect to 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name. Respondent has not denied the allegation that his use is illegitimate, namely that he is using the website associated with the disputed domain name to collect and save (without authority) passwords of Complainant’s employees and to use these passwords to gain unauthorized access to Complainant’s servers.
It is a complainant’s burden to prove that a respondent lacks rights or legitimate interests in a domain name. National Construction Rentals, Inc. v. Toilets.com, Inc., WIPO Case No. D2009-0147. Because it is difficult to prove a negative assertion, the threshold is low. A complainant need only make a prima facie showing on this element, at which point the burden shifts to respondent to present evidence that it has some rights or legitimate interests in the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. The ultimate burden of proof, however, remains with complainant. Id. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141.
Complainant has carried its burden and satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
It is more likely than not that Respondent registered the disputed domain name in bad faith for the purpose of collecting passwords of Complainant’s employees. Therefore, Respondent obviously knew of Complainant’s rights given that its site targets Complainant’s employees.
Complainant has alleged and Respondent has not refuted, that Respondent used the website at the disputed domain name to collect the user names and passwords of Complainant’s employees without Complainant’s permission and to use the passwords to attempt to access Complainant’s internal computer system. Under the circumstances of this case, this is bad faith use.
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 <publixical.com> be transferred to Complainant.
Lawrence K. Nodine
Date: October 30, 2013