WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Publix Asset Management Company v. Kuldeep Singhal / Kueep Igal
Case No. D2016-0471
1. The Parties
The Complainant is Publix Asset Management Company of Lakeland, Florida, United States of America (United States), represented by Thomas & LoCicero PL, United States of America.
The Respondent is Kuldeep Singhal / Kueep Igal of Ghaziabad, Uttar Pradesh, India.
2. The Domain Names and Registrar
The disputed domain names <publixonlinehealthcarestore.com>, <publixonlinerxstore.com> and <usapublixonlinestore.com> are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 8, 2016. On March 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 9, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 March 30, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 19, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 20, 2016.
The Center appointed Luca Barbero as the sole panelist in this matter on April 26, 2016. 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 United States retail grocer which owns numerous United States trademark registrations for the mark PUBLIX for a variety of goods and services, including pharmacy services. Amongst others, the Complainant owns the United States trademark Nos. 1772104 for PUBLIX (word mark), registered on May 18, 1993 claiming first use in commerce on November 17, 1991, for pharmacy services in International class 42, and 1339762 for PUBLIX (word mark), registered on June 4, 1985 claiming first use in commerce on December 31, 1930, for retail grocery store services in International class 42.
The Complainant also owns the domain names <publix.com>, registered on January 31, 1995, <publixpharmacy.com>, registered on November 17, 2000, and <publixpharmacy.net>, registered on February 4, 2009. These domain names are pointed to a web site that describes the Complainant's pharmacy services and offers online prescription refills to the Complainant's pharmacy customers.
The disputed domain names <publixonlinehealthcarestore.com>, <usapublixonlinestore.com> and <publixonlinerxstore.com> were registered on January 11, 2016, December 13, 2016 and February 19, 2016, respectively. They are redirected, at the time of drafting of this Decision, to a Registrar's parking page with generic sponsored links. According to the screenshots on record, the disputed domain name <publixonlinehealthcarestore.com> was pointed, on March 4, 2016, to a web site purportedly offering for sale prescription controlled substances such as percocet, oxycontin and methadone.
5. Parties' Contentions
The Complainant asserts that, over the years, it has spent innumerable funds advertising its products, grocery store services and pharmacy services under the PUBLIX marks, and that the PUBLIX marks and its domain names have become extremely well-known in the United States and elsewhere for pharmacy services in light of their continuous use.
The Complainant contends that the disputed domain names are confusingly similar to the Complainant's PUBLIX mark since the addition of generic, descriptive words such as "pharmacy" and "online" to the trademark does not distinguish the disputed domain names from the Complainant's trademark.
The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain names as the Respondent is not associated with any legitimate use of PUBLIX as a mark or trade name, is not commonly known by the disputed domain names and has no license or authorization to use the Complainant's marks for any purpose.
The Complainant also submits that the Respondent's use of the disputed domain name <publixonlinehealthcarestore.com> to offer prescription controlled substances such as percocet, oxycontin and methadone, displaying also the PUBLIX mark at the top of every page, is neither noncommercial nor a fair use, since the Respondent's use of the disputed domain names is intended to suggest a connection with the Complainant that does not exist. The Complainant highlights that such diversion disrupts the Complainant's relationships with customers, potential customers, and anyone else wishing or potentially wishing to transact business with the Complainant.
With reference to the bad faith element, the Complainant asserts that the web pages displayed at the disputed domain name <publixonlinehealthcarestore.com> demonstrate that the Respondent is attempting to attract visitors to its web site for commercial gain by creating a likelihood of confusion with the Complainant's marks, as the Respondent is offering services that are directly in competition with the Complainant's pharmacy services. The Complainant highlights that its web sites available at the domain names <publixpharmacy.com> and <publix.com> provide information concerning the Complainant's pharmacy services, in both retail stores and over the Internet, offering also online customers the ability to order prescription refills. The Complainant further states that it is particularly concerned that the Respondent may not follow proper procedures concerning the dispensing of prescription drugs, which could lead to potential serious physical harm to the Complainant's customers or others who mistakenly believe the web site is associated with a Complainant's pharmacy they trust.
With reference to the disputed domain names <publixonlinerxstore.com> and <usapublixonlinestore.com>, the Complainant alleges that they are not actively used and contends that the Respondent's passive holding proves bad faith registration and continued bad faith use.
As an additional circumstance of bad faith, the Complainant informs the Panel that it sent cease and desist letters to the Respondent, by email, on February 24, 2016 and March 3, 2016, but received no response.
The Complainant concludes that the Respondent has acted and continues to act intentionally, willfully and in bad faith with the intent to capitalize upon the Complainant's Intellectual Property rights and diminish the value of the Complainant's trademarks and goodwill.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
A. Preliminary Procedural Issue: Consolidation of Multiple Respondents and Disputed Domain Names
Paragraph 3(c) of the Rules provides that "the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder". Paragraph 10(e) of the Rules provides that "a Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules". It is established that the consolidation of multiple disputed domain names under paragraph 3(c) or 10(e) of the Rules may be appropriate, even where differently named disputed domain name registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the disputed domain names resolve. Common control have been found by UDRP panels based on commonalities, such as shared administrative or technical contacts and shared postal or email addresses in registrant information, or other circumstances in the record indicating that the respondents are related, and also, substantially identical content of the web sites to which multiple disputed domain names resolve (see paragraph 4.16 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"); Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281; Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments, WIPO Case No. D2004-0659).
In the case at hand, according to the Registrar's WhoIs records, two of the disputed domain names, <publixonlinehealthcarestore.com> and <publixonlinerxstore.com>, are registered in the name of Kuldeep Singhal, while the disputed domain name <usapublixonlinestore.com> is registered in the name of Kueep Igal.
However, despite the slight difference in the registrant name, the postal address and the registrant's email address are the same. Moreover, the Registrar replied to the Center's request for registrar verification confirming that the Kuldeep Singhal is the registrant of the disputed domain names, including <usapublixonlinestore.com>. Furthermore, all the disputed domain names incorporate the Complainant's trademark PUBLIX and no response was received to the Complaint, either in the name of Kuldeep Singhal or Kueep Igal.
In view of the above, the Panel finds that the disputed domain names are subject to the common ownership or control of the same holder and will refer to both Kuldeep Singhal and Kueep Igal as "the Respondent".
B. Identical or Confusingly Similar
The Complainant has established rights in the trademark PUBLIX based on the United States registrations mentioned above.
The Panel finds that the disputed domain names are confusingly similar to the Complainant's trademark as they incorporate the mark in its entirety with the mere addition of the generic terms "online", "health", "care", "store", "rx" and the geographical indicator "usa", which are insufficient to exclude confusing similarity. In fact, these terms enhance the confusion as they are apt to describe services provided by the Complainant in the United States.
In view of the above, the Panel finds that the requirements prescribed by paragraph 4(a)(i) of the Policy have been met.
C. Rights or Legitimate Interests
It is well established that a complainant is required to make a prima facie case that the respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain names. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain names in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; Accor v. Eren Atesmen, WIPO Case No. D2009-0701, and WIPO Overview 2.0, paragraph 2.1.
In the case at hand, the Panel finds that the Complainant has made a prima facie case and that the Respondent has failed to demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names.
According to the documents and statements submitted, there is no relation between the Respondent and the Complainant, the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant's trademark or to register the disputed domain names.
In addition, there is also no indication before the Panel that the Respondent might be commonly known by the disputed domain names or by name corresponding to the disputed domain names.
Furthermore, there is no evidence on records that the Respondent might have used, or made preparation to use, the disputed domain names in connection with a bona fide offering of goods or services prior to receiving notice of the dispute or that the Respondent has made a legitimate noncommercial or fair use of the disputed domain names.
As highlighted above and shown in the screenshots attached to the Complaint, the disputed domain name <publixonlinehealthcarestore.com> was pointed to a web site purportedly offering for sale prescription controlled substances and publishing the Complainant's trademark, without displaying any disclaimer as to the absence of affiliation of the site with the Complainant and thus causing a likelihood of confusion with the Complainant and its trademark PUBLIX.
According to the evidence on records and the Panel's review of the web sites online at the time of the drafting of the Decision, the disputed domain names <publixonlinerxstore.com> and <usapublixonlinestore.com> have been pointed to mere parking pages. However, the Panel infers from the structure of the disputed domain names, combining the Complainant's trademark PUBLIX with terms such as "online" and "store", that the Respondent's intent was likely to use them in connection with the sale of products or services by creating the impression of an association with the Complainant and its trademark which, according to the elements available before this Panel, does not exist.
The Panel therefore finds that the Complainant has proven the Respondent's lack of rights or legitimate interests in respect of the disputed domain names according to paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
In light of the Complainant's prior registration and use of the trademark PUBLIX in connection with the Complainant's retail grocery store services as of 1930 and the Complainant's pharmacy services as of 1991, including online on the Complainant's web site "www.publix.com", the Panel finds that the Respondent was or could have been aware of the Complainant's trademark at the time of the registration of the disputed domain names. Moreover, the Respondent's reference to the trademark PUBLIX on the web site "www.publixonlinehealthcarestore.com" as documented by the Complainant shows that the Respondent was indeed aware of the Complainant's trademark, with which the disputed domain names are confusingly similar.
With reference to the use of the disputed domain names, as highlighted above, <publixonlinehealthcarestore.com> was pointed to a web site purportedly offering for sale prescription controlled substances and publishing the Complainant's trademark, while <usapublixonlinestore.com> and <publixonlinerxstore.com> were merely parked and contained sponsored links. At the time of the drafting of this Decision, all the disputed domain names are pointed to landing pages with sponsored links.
The Panel finds that the above-described use supports the conclusion that the Respondent registered and used the disputed domain names for the purpose of attempting to attract, for commercial gain, Internet users to its web sites, by creating a likelihood of confusion with the Complainant´s mark as to source, sponsorship, affiliation, or endorsement of the its web sites and the web sites linked thereto, according to paragraph 4(b)(iv) of the Policy.
The Panel also finds that the Respondent's failure to respond to the Complainant's cease and desist letters is an additional circumstance evidencing the Respondent's bad faith. See Encyclopaedia Britannica v. Zucarini, WIPO Case No. D2000-0330 (Failure to positively respond to a complainant's efforts to make contact provides "strong support for a determination of 'bad faith' registration and use"); News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598; and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460.
In light of the above, the Panel finds that the Complainant has proven that the Respondent registered and used the disputed domain names 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 names <publixonlinehealthcarestore.com>, <publixonlinerxstore.com> and <usapublixonlinestore.com> be transferred to the Complainant.
Date: May 10, 2016