WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Publix Asset Management Company v. DigiMedia Holding Domain Administrator / Whois Privacy Services Pty Ltd
Case No. D2015-1299
1. The Parties
The Complainant is Publix Asset Management Company of Lakeland, Florida, United States of America, represented by Thomas & LoCicero PL, United States.
The Respondents are DigiMedia Holding Domain Administrator of Panama City, Panama / Whois Privacy Services Pty Ltd of Queensland, Australia
2. The Domain Name and Registrar
The disputed domain name <wwwpublix.com> (the “Domain Name”) is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2015. On July 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 28, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 7, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 11, 2015.
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 the Respondent of the Complaint, and the proceedings commenced on August 14, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was September 3, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 4, 2015.
The Center appointed Ian Lowe as the sole panelist in this matter on September 17, 2015. 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
Although the amended Complaint does not make this clear, it appears from a cease and desist letter written to the Respondent, annexed to the amended Complaint, that the Complainant is the operator of more than 1,000 retail grocery stores throughout several US states and that it has used the PUBLIX mark in related commerce since 1930. The Complainant is also the proprietor of a number of registered trademarks in respect of the PUBLIX mark including US trademark number 1339762 PUBLIX registered on June 4, 1985. As a result of the widespread use of the PUBLIX mark over many years and the operation of the website at “www.publix.com” (the <publix.com> domain name having been registered on January 31, 1995), the PUBLIX mark has become well-known in the US and elsewhere.
According to the WhoIs data, the Domain Name was registered on December 12, 2003 (not on December 14, 2014, as stated in the amended Complaint). At the time of preparation of the Complaint, the Domain Name resolved variously to a website purporting to offer a Publix survey and a landing page with hyperlinks to grocery related websites. The “survey” first led to a website with non-stop pop-ups and links which required a computer restart and later to a website with a functional survey which connected the user to “exclusive rewards” of “free trials” for those who agreed to be billed in the future after the trial period ended.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to its PUBLIX trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has uncontested rights in respect of the PUBLIX mark both through long standing use over more than 80 years and by virtue of its US registered trademarks. The Domain Name comprises the entirety of the Complainant’s mark save only for the “www” prefix and the generic Top Level Domain (gTLD) suffix “.com”. The Panel considers that the addition of the “www” prefix was very likely intended to draw in Internet users who mistyped the Complainant’s website address by omitting the period (or full stop) between “www” and “publix.com” and does not detract from the distinctiveness of the “publix” element. It is also permissible to ignore the “.com” suffix for the purpose of assessing the similarity of the Domain Name and the mark in which the Complainant has rights.
Accordingly, the Panel is satisfied that the Domain Name is confusingly similar to a mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent has used the Domain Name for a website which resolves either to a purported survey of the Complainant’s retail services or to a website providing links to grocery related websites that have no connection with the Complainant. In the Panel’s view, neither of these activities could possibly give rise to rights or legitimate interests on the part of the Respondent.
The Respondent has chosen not to respond to the Complaint or to put forward any explanation as to any rights or legitimate interests on its part. It has therefore failed entirely to dispel the strong prima facie case raised by the Complainant. In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
In light of the nature of the PUBLIX mark and its notoriety through its use in relation to grocery stores across a number of states in the United States over more than 80 years, and the use to which the Domain Name has been put, the Panel is in little doubt that the Respondent must have had the Complainant and its rights in the PUBLIX mark in mind when it registered the Domain Name. A domain name comprising the letters “www” as a prefix to a well-known mark amounts to paradigm bad faith use commonly known as “typosquatting” and is intended to draw in Internet users who mistype the website address by omitting the period (or full stop.). The use to which the Domain name has been put, for financial gain, variously to link to a survey which in turn provides rewards for those who agree to be billed after a trial period and/or for a website comprising links to grocery related websites unconnected with the Complainant, also amounts to paradigm bad faith use.
Accordingly, the Panel finds that the Domain Name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <wwwpublix.com> be transferred to the Complainant.
Date: October 1, 2015