WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Publix Asset Management Company v. Online Resource, Online Resource Management Ltd. / Registration Private / Domains By Proxy, LLC
Case No. D2016-0508
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.
The Respondent is Online Resource, Online Resource Management Ltd of Grand Cayman, Overseas Territory of the United Kingdom of Great Britain and the Northern Ireland / Registration Private / Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (the "Respondent").
2. The Domain Name and Registrar
The disputed domain name <publixliquor.com> is 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 15, 2016. On March 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 15, 2016, 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 the Complainant on March 18, 2016 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 March 22, 2016.
The Center verified that 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 March 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 14, 2016.
The Center appointed Sir Ian Barker as the sole panelist in this matter on April 27, 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 corporation registered in the State of Florida, United States of America. For about 80 years, the Complainant has operated retail grocery stores in several states of the United States of America ('United States") using the mark PUBLIX. Currently, it operates 1,000 retail grocery stores.
The Complainant's grocery stores sell wine and beer and many have dedicated liquor outlets next door operating under the PUBLIX LIQUORS mark. Both the PUBLIX and PUBLIX LIQUORS marks are widely used by the Complainant in advertising on various media.
The Complainant owns numerous United States registered trademarks for PUBLIX. Its trademark Registration Certificate No. 1,339,762 states that the PUBLIX mark has been used in commerce in connection with retail grocery services since at least December 31, 1930.
The Complainant owns a registration for the trademark PUBLIX LIQUORS. Its Registration Certificate No. 3,384,316 states that that mark has been used in commerce in connection with retail liquor store services since at least March 1, 2004.
The Complainant has operated a website advertising its wares at <publix.com> since January 31, 1995. It has spent large sums in advertising over many years.
The dispute domain name was registered on January 11, 2016. It resolves to a website containing sponsored links to third party websites. There is also an offer of sale of the disputed domain name on the top right hand corner of the page. On February 24, 2016, the Complainant emailed the Respondent "Registration Private / Domains By Proxy, LLC" seeking a transfer to it of the dispute domain name. No response was given.
The Complainant gave the Respondent no authority of any kind to reflect its registered trademarks in a domain name.
5. Parties' Contentions
The disputed domain name is confusingly similar to the Complainant's registered trademarks – particularly to PUBLIX LIQUORS. The only difference is the omission of the "s" in the word "liquors".
The Respondent has no right to reflect the Complainant's trademarks in the disputed domain name. None of the situations envisaged by paragraph 4(c) of the Policy has been established.
The disputed domain name was registered and is being used in bad faith. The fame of the Complainant's marks is such that the registrant of the disputed domain name in January 2016 must have known of them.
Because the disputed domain name contains almost all of the wording of one of the Complainant's trademarks, a plausible circumstance for the Respondent legitimately to use the disputed domain name is not possible.
The Respondent is attempting for commercial gain intentionally to attract Internet users by creating confusion with the Complainant's marks. Internet users could well think that the Complainant had given it some authority for the disputed domain name or that the Respondent was connected with the Complainant in some way.
The Respondent "Online Resource, Online Resource Management Ltd" is a well-known cyber-squatter.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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 disputed domain name is confusingly similar to the Complainant's trademark PUBLIX LIQUORS. Were it not for the lack of the letter "s" as the last letter of the disputed domain name, it would be identical to the Complainant's trademark.
Accordingly, paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Complainant gave the Respondent no authority of any sort to reflect its trademark in the disputed domain name.
This fact and circumstances of the case satisfy paragraph 4(a)(ii) of the Policy in the absence of any Response from the Respondent.
The Respondent could have claimed that one or other of the situations envisaged by paragraph 4(c) of the Policy applied to the registration of the disputed domain name. Had it invoked paragraph 4(c) and satisfied the Panel that one of its three provisions applied in this case, then the Respondent would have had a defense. However, the Respondent chose not to file a Response.
Accordingly, paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The inference of a bad faith registration and of continuing bad faith use is overwhelming. The reasons can be summarized as follows:
(a) The fame of the Complainant's marks has been well-established for many years. In particular, the mark PUBLIX LIQUORS has been used for a large chain of retail liquor stores with the result that it is inconceivable that anyone registering <publixliquor.com> as a domain name would have been ignorant of the Complainant's marks.
(b) The scope for confusion of Internet users, who might think that the disputed domain name and website have some connection with or some authorization from the Complainant, is blindingly obvious.
(c) The Respondent' "Online Resources" has a history of cybersquatting, as established in several cases under the Policy. A recent example is TracFone Wireless, Inc v Online Resource/Online Resource Management, WIPO Case No. D2015-2151.
(d) The use of a privacy service by a respondent to conceal the identity, taken alone, is not necessarily evidence of bad faith registration and use. However, failure by a respondent to reply to communications from the complainant concerning the disputed domain name, the lack of evidence of good faith use and the lack of any plausible actual or contemplated active use of the disputed domain name all point ineluctably to bad faith. See the following WIPO UDRP decisions: Association Robert Mazars v Privacy Whois Service, WIPO Case No. D2009-0183 and Air Austral v WWW Enterprise, Inc., WIPO Case No. D2004-0765.
Taking all the above indicia of bad faith into account, it follows that paragraph 4(a)(iii) of the Policy has been satisfied.
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, <publixliquor.com> be transferred to the Complainant.
Sir Ian Barker
Date: May 7, 2016