WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Trader Joe’s Company v. Customer ID 72313722945481 / Domain Admin, Privacy Ltd. Disclosed Agent for YOLAPT
Case No. D2015-2023
1. The Parties
The Complainant is Trader Joe’s Company of Monrovia, California, United States of America, represented by O’Melveny & Myers, LLP, United States of America.
The Respondent is Customer ID 72313722945481 / Domain Admin, Privacy Ltd. Disclosed Agent for YOLAPT of Isle of Man, United Kingdom of Great Britain and the Northern Ireland / Whois Privacy Services of Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <taderjoes.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 November 7, 2015. On November 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 10, 2015, the Registrar transmitted by email to the Center its verification 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 the Complainant on November 10, 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 November 13, 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 November 17, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2015.
The Center appointed Eva Fiammenghi as the sole panelist in this matter on December 16, 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 Complainant, founded in 1958 and operating under the name Trader Joe’s since 1967, has grown from a small chain of convenience stores to become a nationwide grocer in the United States of America. As of October 30, 2015, the Complainant operates nearly 450 retail stores.
The Complainant is the owner of 91 separate trademark registrations worldwide for the mark TRADER JOE’S and an additional six registrations for marks containing TRADER JOE’S, which have been registered by the Complainant since at least December 9, 1986, i.e., before the Respondent’s registration of the disputed domain name.
In addition to its registered marks, the Complainant has also established common law rights to the mark TRADER JOE’S through extensive and continuous commercial use since 1967.
The Complainant is also the owner of the domain name <traderjoes.com>.
The Respondent registered the disputed domain name <taderjoes.com> on October 13, 2004. At the time the Complaint was filed, the disputed domain name redirected Internet users who accessed it for the first time to the Respondent’s website at “www.visitorsurveygroup.com” which featured the title “Trader Joes Visitor Survey” and purported to offer “exclusive rewards worth at least $50 or more.” When a user subsequently accessed the disputed domain name it resolved to a parked website with pay-per-click links.
5. Parties’ Contentions
The Complainant argues that the disputed domain name is confusingly similar to its TRADER JOE’S trademark.
The disputed domain name differs from the trademark only for a single letter, as it contains a simulation of a typographical error, using the expression “taderjoes” instead of “trader joe’s”.
The Respondent is not a licensee of the Complainant and there is no evidence to suggest that the Respondent has registered the disputed domain name to advance rights or legitimate interests.
The Complainant has never licensed or otherwise permitted the Respondent to use its trademark or to register any domain name including its trademark.
Finally, the Complainant argues that the disputed domain name was registered and used by the Respondent in bad faith.
The Complainant requests that the disputed domain name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the panel shall decide the complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
A. Identical or Confusingly Similar
The Complainant has shown it owns trademark rights in the TRADER JOE’S trademark.
The disputed domain name <taderjoes.com> is confusingly similar to the Complainant’s trademark TRADER JOE’S. The sole removal of the letter “r” from the Complainant’s trademark in the disputed domain name does not eliminate confusing similarity. This kind of “typosquatting” is based on confusion resulting from the simulation of typing errors commonly made by Internet users (See, Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty, WIPO Case No. D2009-0798).
In view of the above, the Panel finds that the disputed domain name registered by the Respondent is confusingly similar to the Complainant’s trademark, in which the Complainant has demonstrated that it has rights for several years.
The first element of the Policy has, therefore, been met.
B. Rights or Legitimate Interests
The Respondent registered the disputed domain name on October 13, 2004 but the “mere registration of a domain name does not establish rights or legitimate interests in the disputed domain name” (Staedtler Mars GmbH & Co. KG v. Maryna Kobielieva, WIPO Case No. D2015-0050).
The Complainant contends that it has not given any license or any kind of authorization to the Respondent to use the TRADER JOE’S trademark.
The Respondent has not provided the Complainant with any evidence demonstrating that the Respondent might be commonly known by the disputed domain name, or that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name.
The Panel concludes that the Respondent lacks rights or legitimate interests in the disputed domain name.
The second element of the Policy has, therefore, been met.
C. Registered and Used in Bad Faith
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which may constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, the [Respondent] has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on its web site or location.”
The Complainant stated that at the time the Complaint was filed, the disputed domain name redirected Internet users who accessed it for the first time to the Respondent’s website at “www.visitorsurveygroup.com” which featured the title “Trader Joes Visitor Survey” and purported to offer “exclusive rewards worth at least $50 or more.” When a user subsequently accessed the disputed domain name it resolved to a parked website with pay-per-click links.
Based on the record in the case file, the Panel considers that the Respondent, by registering and using the disputed domain name is in effect attempting to attract the customers to its web page at “www.visitorsurveygroup.com”, which purportedly offered rewards in exchange of completing a survey and/or sponsored links to services competing to those offered by the Complainant under its registered marks.
In addition, on the website “www.visitorsurveygroup.com”, the Respondent uses the correct trademark TRADER JOE’S, increasing the likelihood of confusion.
The Panel finds it likely that Internet users and consumers think that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which, on the basis of the record in the case file, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
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, <taderjoes.com>, be transferred to the Complainant.
Date: December 21, 2015