WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Trader Joe’s Company v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org / Domain Admin
Case No. D2016-1149
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 Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org of Nobby Beach, Queensland, Australia / Domain Admin of Kingstown, Saint Vincent And The Grenadines.
2. The Domain Name and Registrar
The disputed domain name <traderjos.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2016. On June 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 10, 2016, 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 June 13, 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 June 17, 2016.
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 June 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 11, 2016.
The Center appointed Jane Seager as the sole panelist in this matter on July 22, 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 was founded in 1958 and has operated under the name “Trader Joe’s” since 1967. It has grown from a small chain of convenience stores to become a nationwide grocer and now operates over 450 retail stores in the United States. Its main website is available at “www.traderjoes.com”.
The Complainant has supplied evidence that it owns a number of trademarks in the term TRADER JOE’S, all of which significantly pre-date the registration of the Domain Name.
The Domain Name was registered on April 9, 2015. It is currently being used to point to a website containing sponsored links, including links related to the Complainant’s field of business.
5. Parties’ Contentions
The Complainant states that it has clear and unambiguous rights in the trademark TRADER JOE’S. It asserts that it owns 91 separate trademark registrations worldwide in the term TRADER JOE’S and an additional six registrations for marks containing TRADER JOE’S. Such trademarks are registered and used in conjunction with “retail grocery stores” and numerous food and beverage products. In the Complainant’s opinion, these registrations, combined with the Complainant’s continuous use of its trademark in commerce for over 45 years, are sufficient to establish the Complainant’s rights in the trademark TRADER JOE’S.
The Complainant points out that the Domain Name is virtually identical to its TRADER JOE’S trademark and to its domain name <traderjoes.com> and varies by only a single letter. The Complainant asserts that the Domain Name is a clear example of “typosquatting,” a practice in which a domain registrant selects a domain name that varies only slightly from a well-known trademark in order to divert consumers who misspell or mistype a famous trademark when trying to access the trademark owner’s website. The Complainant underlines that previous UDRP panels have consistently recognized that this form of “typosquatting” intentionally creates a high likelihood of confusion.
The Complainant states that the Respondent has no rights or interests in the Domain Name beyond a purely commercial interest in misleadingly diverting consumers to generate revenue. The Complainant asserts that the Respondent is not known by the name “traderjos” or any variation thereof and has no legitimate rights to use the TRADER JOE’S trademark. The Complainant has not licensed or otherwise authorized the Respondent to use the TRADER JOE’S trademark in any form. There is no evidence that the Respondent has used or intends to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods and/or services. The Complainant contends that the Respondent has instead used the Domain Name to mislead consumers and generate revenue through pay-per-click links by falsely suggesting an affiliation with the Complainant.
In the Complainant's view, the Respondent’s conduct indicates that the Respondent has registered and is using the Domain Name in bad faith. The Complainant argues that the Respondent’s registration and use of the Domain Name falls within the meaning of paragraph 4(b)(iv) of the Policy. By registering a Domain Name that consists of a likely typographical error in the Complainant’s trademark and using it to direct visitors to a website offering only pay-per-click links, the Respondent has intentionally created a likelihood of confusion with the Complainant’s trademark to attract Internet users for commercial gain. In the Complainant's opinion, the Respondent’s attempt to deliberately confuse consumers is a clear indication of bad faith, and the inherently illegitimate nature of “typosquatting” has led many panels to classify the practice as bad faith per se.
The Complainant points out that the Domain Name was registered on April 9, 2015, by which time the Complainant’s rights in the trademark TRADER JOE’S were already well established. The Complainant argues that the distinctiveness and fame of the TRADER JOE’S trademark permit the inference that the Respondent was aware of the Complainant’s rights in the trademark before registering the Domain Name, and the Respondent’s blatant “typosquatting” provides further evidence of the Respondent’s knowledge of the Complainant’s rights.
The Complainant also underlines that the Respondent has been a frequent party to disputes under the Policy, many of which involved clear examples of “typosquatting”. In the Complainant's view, the Respondent’s well-documented history of domain name abuse is a relevant indicator of bad faith.
Finally, the Complainant asserts that the Respondent has impeded the parties’ ability to reach a resolution by using a privacy service to mask its true identity and frustrate enforcement of the Policy. As a result of the above the Domain Name should thus be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove each of 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.
The standard of proof is on the balance of probabilities (Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434).
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality and weight of the evidence.
In addition, paragraph 14(b) of the Rules further provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel notes that the Respondent has failed to respond to the Complaint. The Respondent’s failure to respond, however, does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules, see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
Taking the aforementioned provisions into consideration, the Panel finds as follows:
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Panel to first consider whether the Complainant has established relevant trademark rights. The Complainant has provided evidence of a number of registered trademarks in the term TRADER JOE’S, for example United States Registration. No. 4,001,531, registered on July 26, 2011 (first use in commerce in 1967).
As mentioned above, the Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant’s trademark. In this regard, the Panel notes that the Domain Name incorporates the Complainant’s TRADER JOE'S trademark in its entirety, apart from the final letter “e” in “JOE’S”. The Panel agrees with the Complainant that this variation is insufficient to avoid confusion with the Complainant’s trademark.
Furthermore, it is widely accepted that the “.com” generic Top-Level Domain (“gTLD”) is generally irrelevant for the purpose of assessing identity or confusing similarity between a trademark and a domain name.
The Panel therefore finds that the Domain Name is confusingly similar to the Complainant’s trademark. Accordingly, the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Based on the statements and evidence put forward by the Complainant, the Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the Domain Name and that, as a result of its default, the Respondent has failed to rebut such a showing.
The Respondent cannot be considered to be making a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy referred to above, given that the Domain Name is pointing to a website containing sponsored links. Neither can such use be said to be a legitimate noncommercial or fair use of the Domain Name within the meaning of paragraph 4(c)(iii). Furthermore, the Complainant has stated that it has not authorized the Respondent to make any use of its trademark and it is highly unlikely that the Respondent would be “commonly known” by the Domain Name, as referred to at paragraph 4(c)(ii), given the notoriety surrounding the Complainant’s trademark.
The Panel is also of the view that the Respondent’s failure to submit a response is, in the circumstances of this case, also evidence of the Respondent’s lack of rights or legitimate interests in the Domain Name. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493 (“non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”).
The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name. As such, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, including:
(i) circumstances indicating that the respondent has registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trademark or service mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The evidence put forward by the Complainant amply demonstrates the Complainant’s notoriety and the extensive use of its trademarks, which significantly pre-date the registration of the Domain Name. The Panel therefore finds, on the balance of probabilities, that the Respondent was aware of the Complainant’s rights at the time of registration of the Domain Name, and thus registered it in bad faith seeking to profit from the Complainant’s rights. This is further highlighted by the Respondent's subsequent use of the Domain Name.
The Panel further finds that the Respondent’s use of the Domain Name, which incorporates the Complainant’s trademark in its entirety except for the omission of the last letter “e”, for a parking page containing sponsored links, including links related to the Complainant’s field of business is, under the circumstances, evidence of bad faith. Whether the links are automatically generated or not is irrelevant as a domain name registrant is generally responsible for the content appearing on the associated website (see paragraph 3.8 of the WIPO Overview 2.0). The Panel therefore finds that 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 trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, in accordance with paragraph 4(b)(iv) of the Policy.
Finally, the Panel agrees with the Complainant that the Respondent’s participation in numerous other proceedings under the Policy involving blatant “typosquatting” strongly indicates the Respondent’s bad faith. The same goes for the Respondent’s use of a privacy service to mask its details in the WhoIs. In this instance this was clearly intended to frustrate the enforcement of the Policy and so further underlines the Respondent’s bad faith.
The Panel therefore finds that the Domain Name has been registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy is satisfied.
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, <traderjos.com> be transferred to the Complainant.
Date: August 1, 2016