WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Publix Asset Management Company v. Domain Hostmaster, Customer ID: 75382843535176, Whois Privacy Services Pty Ltd / Lisa Katz
Case No. D2015-1808
1. The Parties
The Complainant is Publix Asset Management Company of Lakeland, Florida, United States of America, represented by Thomas & LoCicero PL, United States of America ("U.S.").
The Respondent is Domain Hostmaster, Customer ID: 75382843535176, Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia / Lisa Katz of Dallas, Texas, U.S.
2. The Domain Name and Registrar
The disputed domain name <publix401k.com> is registered with Fabulous.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 9, 2015. On October 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 13, 2015, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 15, 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 October 19, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 20, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 10, 2015.
The Center appointed William F Hamilton as the sole panelist in this matter on November 19, 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
The Complaint owns the U.S. federally registered mark PUBLIX (the "Mark") that is used extensively in over a 1000 retail grocery stores in Florida and other states where the Mark is a widely known supermarket brand. The U.S. Mark registration reflects a first use in commerce dating to the first half of the last century with a registration date of March 26, 1985.
The disputed domain name was registered on April 4, 2005.
On or about August 10, 2015, the Complainant's counsel wrote to the Respondent advising the Respondent of the Complainant's rights in the Mark and demanding the transfer of the disputed domain name to the Complainant. The Respondent thereafter offered to transfer the disputed domain name for USD 1,650. The Complainant responded with an offer to purchase the disputed domain name for USD 595 which was apparently not accepted. Thereafter the Complainant initiated this proceeding.
5. Parties' Contentions
The Complainant asserts that the disputed domain name is confusingly similar to the Mark because the domain name consists of the Mark and the generic suffix "401k". The Complainant further asserts that the Respondent lacks rights or legitimate interests in the disputed domain name, that the Respondent does not operate a bona fide business at the disputed domain name. The Complainant further disavows any authorization by the Complainant to the Respondent to use the Mark or the disputed domain name. The Complainant asserts that the disputed name was registered and is being used in bad faith to attract and lure unsuspecting employees of the Complainant and others to the Respondent's website offering links to financial retirement services by creating the false assumption that the services are authorized, endorsed, or sponsored by the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant's Mark. Affixing a generic suffix to a protected mark is insufficient to avoid confusing similarity. Sharebuilder Corporation v. James Gilbert, WIPO Case No. D2005-0685 (transfer of the domain names <sharebuilder401k.com> and <sharebuilder-401k.com> ).
The Panel finds that the disputed domain name is confusingly similar to the Complainant's Mark.
B. Rights or Legitimate Interests
There is no evidence that the Respondent owns any rights or legitimate interests in the disputed domain name. The Respondent has not engaged in offering financial services in connection with the Mark. The Respondent fails to provide any authorization by the Complainant to use the Mark or the disputed domain name to refuse the Complainant's claim. The Respondent is using the domain name to promote the services of various companies unconnected to the Complainant. Moreover, the Respondent has failed to come forward with any evidence of bona fide rights or legitimate interests in the disputed domain name.
The Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Respondent has registered a domain name comprising the entirety of the Mark including its unusual spelling. Such an appropriation is not accidental. Any reasonable Internet search would have promptly disclosed that the Mark is owned and being used by the Complainant. See, e.g., the Complainant's domain name <publix.com>. The Respondent's prior pattern of domain name registrations is further evidence of bad faith. Comerica Bank v. Domain Admin: Damon Nelson - Manager Quantec, LLC / Novo Point, LLC, WIPO Case No. D2015-0108 ("Pattern of conduct" of registering and using domain names in violation of the Policy as evidence of bad faith). The Panel finds that by using the disputed domain name containing the Complainant's Mark to host sponsored links the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website and services.
The Panel finds that the disputed 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 disputed domain name <publix401k.com> be transferred to the Complainant.
William F Hamilton
Date: December 3, 2015