WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Publix Asset Management Company v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2019-0658
1. The Parties
The Complainant is Publix Asset Management Company of Lakeland, Florida, United States of America (“United States” or “US”), represented by Thomas & LoCicero PL, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, DomainsByProxy.com, of Scottsdale, Arizona, United States / Carolina Rodrigues, Fundacion Comercio Electronico, of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <publixstockholderonline.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 25, 2019. On March 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 26, 2019, 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 29, 2019, 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 April 2, 2019.
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 April 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2019.
The Center appointed Angelica Lodigiani as the sole panelist in this matter on May 9, 2019. 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 US company based in Florida, and a subsidiary and a licensor of trademarks to Publix Super Markets, Inc. (“Publix”). Publix was founded in 1930 and today owns and operates 1,250 retail stores and employs more than 190,000 people. In 2017, Publix’s retail sales amounted to USD 34.6 billion.
The Complainant owns various US registrations for the trademark PUBLIX, in various classes of goods and services. Among these, US registration No. 3,774,699, dated January 26, 2010, filed on September 1, 2009, for retail delicatessen services in class 35, claims a first use in commerce dating back to 1961.
The Complainant is also the owner of the domain names <publix.com>, registered on January 31, 1995, and <publixstockholder.com>, registered in 2008. In addition, Publix uses the web address “www.stockholderonline.publix.com” displaying a website containing Publix stock and dividend information, financial information and filings, corporate governance, and Publix stockholder resources. The same web address is also used to display a login page through which Publix’ stockholders obtain access to additional information.
The Respondent is an individual named Carolina Rodriguez, of Fundacion Comercio Electronico, located in Panama City, Panama. For the registration of the disputed domain name the Respondent used the proxy service provider Domain By Proxy, LLC.
The disputed domain name was created on August 16, 2018.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark as it includes it entirely, followed by the descriptive terms “stockholder online”.
The Complainant further contends that the Respondent lacks rights and legitimate interests in the disputed domain name because the Complainant never granted the Respondent a license or other authorization to use its PUBLIX trademark, nor has the Respondent any relationship with the Complainant that would entitle the Respondent to use the Complainant’s mark. Furthermore, to the best of the Complainant’s knowledge, the Respondent has not been commonly known by, or associated with, the disputed domain name.
According to the Complainant, the Respondent is using the disputed domain name in an infringing manner. The contents of the disputed domain name vary from time to time. The disputed domain name has sometimes redirected users to malicious sites including “www.driver-fixer.com”, random scams, and drive-by downloads. On other occasions, the disputed domain name has rerouted the user to <verizonwireless.com>, or to a two-step security check and then to websites such as “www.realtor.com”. The Complainant presumes that these redirections are an attempt by the Respondent to garner “click-through” fees for diverting users seeking information about Publix to other websites.
Lastly, the Complainant contends that the disputed domain name has been registered and is being used in bad faith for a number of reasons.
Firstly, the Respondent’s clear intention is that of diverting Internet users from the legitimate Publix websites, as such, disrupting Publix’s relationships with its customers, potential customers, and anyone else seeking information concerning Publix. The Respondent is therefore intentionally attempting to attract, for commercial gain, Internet users to other websites, by creating a likelihood of confusion with the Complainant’s trademark, as to the source, sponsorship, affiliation or endorsement of said websites.
Secondly, the Complainant also stresses that the disputed domain name is used to display content with no disclaimer alerting visitors to the lack of relationship with the Complainant.
Thirdly, the Respondent failed to reply to the Complainant’s cease and desist letter, asking for the voluntary transfer of the disputed domain name.
Fourthly, the Respondent concealed her identity behind Domain By Proxy, but when the Registrar revealed the Respondent’s name it appeared that she was the Respondent in other recent UDRP procedures ordering the transfer of the subject domain names. As another UDRP panel has recently concluded, “this particular respondent ‘appears to be in the business of registering domain names based on well-known trademarks and has been named as the respondent in a number of other recent UDRP proceedings ordering the transfer of domain names’.”
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has provided sufficient evidence of ownership of the PUBLIX trademark registered in the US in various classes of goods and services. All these trademarks predate the date of registration of the disputed domain name, and some of them claim a first use in commerce of several decades ago.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark since its PUBLIX trademark is fully reproduced in the disputed domain name and is followed by the descriptive terms, “stockholder online”. These words does not prevent a finding of confusingly similarity of the disputed domain name with the Complainant’s trademark considering that the Complainant uses part of the same descriptive words within its domain name <publixstockholder.com> to redirect Internet users to a webpage containing stock and dividend information, financial information and filings, corporate governance, and Publix stockholder resources.
Thus, the Panel is satisfied that the first condition under the Policy is met.
B. Rights or Legitimate Interests
The second condition to be proved in order to succeed in a UDRP proceeding is that the Respondent lacks rights or legitimate interests in the disputed domain name.
While the overall burden of proof rests with the complainant, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore, a complainant must make a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name.
The Panel finds that the Respondent was not authorized to reflect the Complainant’s trademark in the disputed domain name, and that the Respondent does not appear to have been commonly known by the name “publix”.
Moreover, the disputed domain name redirects users to third parties’ websites most probably to gain some kind of profit. Said use does not amount to a bona fide offering of goods or services, or to a legitimate or fair use of the disputed domain name. The Respondent had the opportunity to rebut the Complainant’s arguments but failed to file any Response.
In view of the above circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Thus, the Panel is satisfied that also the second requirement under the Policy is met.
C. Registered and Used in Bad Faith
With respect to the third and last requirement under the Policy, the Panel finds that there are several reasons to conclude that the Respondent acted in bad faith.
First, it is the Panel’s view that at the time of the registration of the disputed domain name, the Respondent was well aware of the Complainant’s trademark and of its activity. The term “publix” should be considered distinctive and univocally associated to the Complainant. The additional words “stockholder online”, are too similar to the Complainant’s domain name <publixstockholder.com> to be the result of a mere coincidence. Furthermore, the Respondent has a long history of UDRP cases, all establishing the Respondent’s bad faith in the use and registration of the relevant domain names. The Respondent seems to be engaged in the business of registering domain names including third parties’ well-known trademarks (see, among others, Sanofi v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-2654).
Second, the Respondent is using the disputed domain name to redirect users to third parties’ websites, such as “www.verizonwirelss.com” and “www.realtor.com”. The unauthorized use of the Complainant’s distinctive trademark to access third parties’ websites cannot amount to a good faith use of the disputed domain name. Rather, it is likely that the Respondent gets some kind of profits from the illegitimate use of the disputed domain name. Therefore, by using the disputed domain name in the way described above, the Respondent is attempting to unduly take unfair advantage from the distinctive character of the Complainant's trademark.
Lastly, the Complainant sent a cease and desist letter to the Respondent, offering to settle the matter amicably though the voluntary transfer of the disputed domain name. However, the Respondent did not take this opportunity and this may be considered further evidence of the Respondent’s acting in bad faith.
For all reasons mentioned above, the Panel concludes 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 <publixstockholderonline.com> be transferred to the Complainant.
Date: May 20, 2019