WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Trader Joe's Company v. Trader Joe's / John Murray of Trader Joes Inc., d/b/a Trader Joes Furniture

Case No. D2016-0591

1. The Parties

Complainant is Trader Joe's Company of Monrovia, California, United States of America, represented by O'Melveny & Myers, LLP, United States of America.

Respondent is Trader Joe's / John Murray of Trader Joes, Inc., d/b/a Trader Joes Furniture of Charleston, South Carolina, United States of America.

2. The Domain Name and Registrar

The disputed domain name <traderjoesgrocery.com> ("Disputed Domain Name") is registered with eNom, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 25, 2016. On March 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 30, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Complainant filed an amended Complaint on April 5, 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 Respondent of the Complaint, and the proceeding commenced on April 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2016. On April 29, 2016, an email communication was received from Respondent requesting a copy of the Complaint. The Center acknowledged receipt of this email on the same day (with a copy of the Complaint and annexes attached), stating that the Complaint had been previously sent to Respondent at the commencement of the proceeding, and notifying Respondent of its failure to comply with the deadline for Response as indicated in the Notification of Complaint and Commencement of Administrative Proceeding. The Center informed the parties that it would proceed to appoint an administrative panel in this proceeding.

The Center appointed Michael A. Albert as the sole panelist in this matter on May 6, 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

Complainant was founded in 1958 and has operated under the name Trader Joe's since 1967. Since founding the company, Complainant has grown from a small chain of convenience stores to a nationwide grocer, operating nearly 450 retail stores as of October 30, 2015.

Complainant holds 91 separate trademark registrations worldwide for the mark TRADER JOE'S registered and used in conjunction with retail grocery stores and food and beverage products. Complainant also holds an additional six registrations for marks containing TRADER JOE'S. The following are registrations of the TRADER JOE'S mark in the United States in connection with grocery-related items and services:

U.S. Reg. No. 1,420,628, Registered December 9, 1986

U.S. Reg. No. 1,421,310, Registered December 16, 1986

U.S. Reg. No. 1,421,358, Registered December 16, 1986

U.S. Reg. No. 1,421,383, Registered December 16, 1986

U.S. Reg. No. 1,420,216, Registered December 23, 1986

U.S. Reg. No. 1,424,176, Registered Jan. 6, 1987

U.S. Reg. No. 2,156,879, Registered May 12, 1998

U.S. Reg. No. 2,158,990, Registered May 19, 1998

U.S. Reg. No. 2,160,601, Registered May 26, 1998

U.S. Reg. No. 2,171,157, Registered July 7, 1998

U.S. Reg. No. 4,001,531, Registered July 26, 2011

U.S. Reg. No. 4,001,533, Registered July 26, 2011

Respondent submitted an application to the United States Patent and Trademark Office ("USPTO") on September 6, 2011 to register the mark TRADER JOE'S in connection with Respondent's retail furniture store. On August 13, 2012, Complainant filed a notice opposing the application, citing a likelihood of confusion with Complainant's registered marks. On May 4, 2013, the Trademark Trial and Appeal Board sustained Complainant's opposition, refusing registration and deeming Respondent's application abandoned.

Respondent subsequently registered the Disputed Domain Name on December 10, 2015. The Disputed Domain Name resolves to a page displaying sponsored advertising links.

Complainant sent Respondent a cease and desist letter on February 16, 2016 regarding the Disputed Domain Name.

5. Parties' Contentions

A. Complainant

Complainant contends that it has clear and unambiguous rights to the mark TRADER JOE'S in connection with grocery-related goods and services due to its worldwide registrations of the TRADER JOE'S mark and its continued use of this mark in commerce continually for over 45 years. Complainant contends that its continued use of the TRADER JOE'S mark has made the mark a distinctive identifier associated with Complainant's goods and services.

As to the first element of the Policy (confusing similarity), Complainant contends that the Disputed Domain Name is confusingly similar to Complainant's trademark because the Disputed Domain Name incorporates the TRADER JOE'S mark in its entirety, noting that the omission of the apostrophe is irrelevant in light of the fact that apostrophes are not permitted characters in domain names. Complainant also notes that the Disputed Domain Name adds only the generic term "grocery" to the end of the mark. Complainant contends that the term "grocery" is descriptive of its goods and services, heightening the likelihood of confusion with Complainant's mark.

As to the second element of the Policy (no rights in the Disputed Domain Name), Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name because Respondent only has a commercial interest in misleading and diverting consumers to the website associated with the Disputed Domain Name to generate revenue. Complainant contends that Respondent is not known by the name or mark "Trader Joe's Grocery". Complainant asserts that it has not licensed or otherwise authorized Respondent's use of the TRADER JOE'S mark in any form.

Complainant acknowledges that Respondent appears to have a store named "Trader Joes Furniture," but notes that Respondent does not use the mark TRADER JOE'S in connection with grocery-related goods or services and that there is no evidence suggesting that Respondent plans to do so in the future. Complainant contends that Respondent's official website, located at "www.traderjoesinc.com", exclusively offers new and used furniture. Complainant contends that there is no evidence that Respondent has used or intends to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods and services.

As to the third element of the Policy (bad faith), Complainant asserts that Respondent's conduct indicates that he registered and uses the Disputed Domain Name in bad faith. Complainant alleges that Respondent had actual knowledge of Complainant's mark as early as August 2012 when Complainant opposed Respondent's application for trademark registration. Complainant also alleges that Respondent uses the Disputed Domain Name to mislead consumers and generate revenue through pay-per-click links by falsely suggesting an affiliation with Complainant indicated by the Disputed Domain Name's inclusion of the term "grocery." Complainant points to the lack of a logical connection between the Disputed Domain Name and the content of Respondent's website. Complainant notes that Respondent has refused to cancel or transfer the Disputed Domain Name despite its February 16, 2016 cease and desist letter demanding compliance with the UDRP and applicable law.

B. Respondent

Respondent did not file a formal reply to Complainant's contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(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.

Respondent provided no Response, and the deadline for doing so expired on April 28, 2016. Accordingly, Respondent is in default. Given Respondent's default, the Panel can infer that Complainant's allegations are true where appropriate to do so. Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413. Nonetheless, Complainant retains the burden of proving the three requisite elements of paragraph 4(a) of the Policy.

The Panel finds that Complainant has met each of the elements required by the Policy. In particular, the Disputed Domain Name is confusingly similar to Complainant's marks, Respondent has no rights or legitimate interests in the Disputed Domain Name, and Respondent registered and is using the Disputed Domain Name in bad faith.

A. Identical or Confusingly Similar

Complainant's rights in its TRADER JOE'S mark are clearly established as contemplated by paragraph 4(a)(i) of the Policy. Complainant evidences multiple registrations in the United States dating back to 1986 and continued use of its mark since 1967. See EAuto, L.L.C. v. Triple S. auto Parts d/b/a Kung Fu Yea Enter., Inc., WIPO Case No. D2000-0047 (presumptive validity afforded where complainant registered its mark with the USPTO).

The Disputed Domain Name is also confusingly similar to Complainant's well-known TRADER JOE'S mark. The Disputed Domain Name incorporates Complainant's mark in its entirety. The Disputed Domain Name differs from Complainant's mark only by the omission of an apostrophe and the addition of the generic term "grocery" at the end of Complainant's mark. The omission of the apostrophe, a character not permitted in domain names, is irrelevant for analysis of whether the Disputed Domain Name is confusingly similar to Complainant's mark. See L'OREAL v. Lewis Cheng, WIPO Case No. D2008-0437 (finding that suppression of an apostrophe due to technical reasons failed to give any distinctiveness to the disputed domain name). The addition of the generic term "grocery" also fails to distinguish the Disputed Domain Name from Complainant's mark. See Abbott Laboratories v. United Worldwide Express Co., Ltd., WIPO Case No. D2004-0088 (noting that UDRP panels routinely hold that the addition of a generic term to a mark in a domain name does not distinguish the domain name from that mark). The addition of the non-distinctive Top-Level Domain ".com" is also insufficient to distinguish the Disputed Domain Name from Complainant's TRADER JOE'S mark.

Further, the Panel agrees with Complainant's contention that the addition of the term "grocery" at the end of Complainant's mark heightens confusion by referring to the exact goods and services that Complainant's mark is associated with. See Dr. Ing. h.c.F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888 (finding that the descriptive term "autoparts" added to the "Porsche" trademark added "confusion by leading users to believe that the Complainant operate[d] the website associated with the disputed domain name").

Respondent does not rebut the above showing or make any contrary claim or assertion. Consequently, the Panel finds the Disputed Domain Name confusingly similar to Complainant's TRADER JOE'S mark in which Complainant has rights, and continues to have rights. The first condition of paragraph 4(a) is, therefore, satisfied.

B. Rights or Legitimate Interests

Respondent has no rights or legitimate interests in the Disputed Domain Name for purposes of paragraph 4(a)(ii) of the Policy.

It is uncontested that Complainant has not licensed or otherwise authorized Respondent to use its TRADER JOE'S mark in any form. See Arcelormittal S.A. v. Ram Mittal, WIPO Case No. D2016-0449 (treating the lack of authorization to use complainant's trademark as prima facie evidence of the absence of respondent's rights or legitimate interests in a disputed domain name).

It is also uncontested that Respondent does not use the Disputed Domain Name for a bona fide offering of goods or services as defined by the Policy. Rather, the Disputed Domain Name resolves to a parked website containing pay-per-click links, seemingly unrelated to Complainant's mark or grocery-related products and services. See Compart AG v Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462 (finding no legitimate interests where "Respondent's website . . . [was] not using the Domain Name in any way that is related to its generic meaning"). While Respondent operates a store named "Trader Joes Furniture," associated with the domain name <traderjoesinc.com>, which sells only new and used furniture, this possibly bona fide offering of goods and services is not made in connection with the Disputed Domain Name.

Moreover, at the time the Disputed Domain Name was registered, Respondent had actual knowledge of Complainant's trademark, given Complainant's opposition to Respondent's application at the USPTO. See Raymond Weil SA v. Watchesplanet (M) Sdn Bhd, WIPO Case No. D2001-0601 ("[A]t the time of the registration of the Domain Name, the Respondent was fully aware of the Complainant's trademark. The Panel, therefore, finds that the Respondent selected and used the Domain Name solely in order to attract Internet users to its website by trading on the fame of the Complainant's trademark. This does not constitute a 'bona fide' offering of goods.").

C. Registered and Used in Bad Faith

Respondent's registration and use of the Disputed Domain Name falls within the meaning of paragraph 4(b)(iv) of the Policy.

Complainant's well-known mark permits an inference that Respondent knew of Complainant's mark prior to registration of the Disputed Domain Name. See The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113 ("[T]he Panel concurs with previous …UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements."). Moreover, Respondent had actual knowledge of Complainant's TRADER JOE'S mark when it registered the Disputed Domain Name due to Complainant's August 2012 opposition against Respondent's 2011 application before the USPTO. Thus, the Panel finds that Respondent registered the Disputed Domain Name in bad faith.

The Disputed Domain Name resolves to a website that does not offer goods or services for sale, but offers only sponsored advertising links. The use of the Disputed Domain Name in this manner is evidence of use in bad faith. See F. Hoffmann-La Roche AG v. Transure Enterprise Ltd., WIPO Case No. D2008-0422 (finding use in bad faith were disputed domain name was aimed at attracting Internet traffic associated with complainant's mark for commercial gain). Consequently, the Panel finds that Respondent is using the Disputed Domain Name in bad faith.

7. Decision

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 <traderjoesgrocery.com> be transferred to Complainant.

Michael A. Albert
Sole Panelist
Date: May 20, 2016