WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Giant Brands, Inc. v. Boston Galleries, Inc.
Case No. D2000-1419
1. The Parties
The Complainant is Giant Brands, Inc., a corporation organized under the laws of the State of Delaware , United States of America, having its principal place of business at Landover, Maryland, United States of America. The Respondent is Boston Galleries, Inc., an entity of unknown characteristics with an address in Bethesda, Maryland, United States of America.
2. The Domain Name and Registrar
The domain name at issue is , which domain name is registered with Network Solutions Inc. ("NSI"), a registrar based in the State of Virginia, United States of America.
3. Procedural History
A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on October 18, 2000, in electronic form. The hard copy version of the Complaint was received by the WIPO Center on October 25, 2000. WIPO Center acknowledged receipt of the Complaint on October 24, 2000.
On October 24, 2000, a Request for Registrar Verification was transmitted to NSI, on which NSI replied October 29, 2000.
On October 30, 2000, the WIPO Center requested that Complainant amended its Complaint to specify the correct name of the Respondent. An Amendment to this effect was transmitted by email and hard copy, the hard copy being received on November 6, 2000 and the email on November 8, 2000.
A Formal Requirements Compliance Checklist was initiated by the assigned WIPO Center Case Administrator and completed on November 8, 2000. The Panelist has independently reviewed the Requirements and agrees with the assessment of the WIPO Center Case Administrator that the Complainant is in formal compliance with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules"). The required fees for a single-member Panel were paid by the Complainant on time and in the required amount.
No formal deficiencies having been recorded, on November 9, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of November 27, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in NSI�s Whois confirmation, and by post/courier to the indicated postal address. Having reviewed the communications records in the case file, the Panelist finds that the WIPO Center has discharged its responsibility under Paragraph 2(a), Rules, "to employ reasonably available means calculated to achieve actual notice to Respondent."
On November 30, 2000, having received no Response from the designated Respondent, the WIPO Center transmitted to the parties a Notification of Respondent Default using the same contact details and methods as were used for the Commencement Notification.
On December 7, 2000, the WIPO Center invited Richard Allan Horning to serve as the Sole Panelist in Case No. D2000-1421, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence. Richard Allan Horning�s Statement of Acceptance and Declaration of Impartiality and Independence was received on December 7, 2000. On December 8, 2000, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Richard Allan Horning was formally appointed as the Sole Panelist. The Projected Decision Date was December 21, 2000.
On January 16, 2001 the assigned WIPO Center Case Administrator became aware of a request by the Respondent to be granted an extension of the deadline for the Response. The request was made by telefax and dated November 29, 2000. The said telefax was received by the WIPO Center November 30, 2000, but due to a communication error within the WIPO Center it was not forwarded to the Case Administrator immediately.
The Panelist has noted that:
1) The telefax from the Respondent was not copied to the Complainant as required by the Rules.
2) The telefax was sent after the expiration of the deadline for the Response.
3) The Respondent made no further effort to file a Response after the date of sending the telefax, although on November 30, 2000 the WIPO Center transmitted to the Respondent a Notification of Respondent Default.
Nevertheless, to ensure full compliance with the Rules and to provide Respondent with a fair opportunity to participate in this proceeding, the Panelist issued an Interim Order on January 19, 2001 as follows:
"Pursuant to Rule 10, the Panel grants Respondent to submit within10 days a Response to the Complaint in case no D2000-1419. The Response should be submitted to the Complainant and to the WIPO Center according to the requirements that are described in Rules, Paragraph 5 and the Supplemental Rules. The last day for sending the Response is January 30, 2001."
There has been no further response from the Respondent, and the time within which to respond in accordance with the January 19, 2001 Interim Order has lapsed.
The Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Policy, Rules and WIPO Supplemental Rules.
The Panelist shall issue his Decision based on the Complaint, the Policy, the Rules, the WIPO Supplemental Rules, and without the benefit of any Response from Respondent.
4. Factual Background
Complainant is the owner of record of various U.S. trademarks, which it has licensed to Giant Food Inc for use in connection with the operation supermarket services and private label food products since 1936. The Complainant has provided evidence of the registration of the following marks, which have been adopted and used in this regard:
A.
GIANT AND G
Registration Number:
Goods & Services:
First Use:
Goods & Services:
First Use:
Goods & Services:
US PTO 1,085,784
Class 21, for inter alia metallic buckets, plastic fruit storage bags, paper plates and drinking cups.
January, 1965
Class 16, for inter alia cleaning and toilet tissues, paper towels and napkins, plastic wrapping film and wax paper
August 31, 1959
Class 38, for inter alia periodical publications, press releases, corporate and stockholder reports and directories. June 1968
First Use:
Goods & Services:
First Use:
Goods & Services:
First Use:
Goods & Services:
First Use:
Class 42, for inter alia restaurant and catering services.
February 12, 1964
Class 35, for inter alia retail, grocery, supermarket, delicatessen, bakery , department store, and general merchandising, pharmacy and drugstore services.
February 12, 1964
Class 40, for inter alia photographic processing services.
February 19, 1969
B.
SUPER GIANT
Registration Number:
Goods & Services:
First Use:
Goods & Services:
First Use:
Goods & Services:
First Use:
Goods & Services:
First Use:
US PTO 1,085,787
Class 42, for inter alia prescription lens grinding and eyeglass fitting services
May 19, 1958
Class 35, for inter alia retail supermarket and department store, pharmacy and drug store services
May 19, 1958
Class 37, for inter alia laundry, dry cleaning, automobile service station, jewelry and watch repair, shoe repair, eyeglass repair, appliance repair, installation of carpeting and custom making of draperies services
May 19, 1958
Class 40, for inter alia finishing services
May 19, 1958
C.
GIANT RX PHARMACIES [DESIGN]
Registration Number:
Goods & Services:
First Use:
US PTO 1,129,400
Class 42, for inter alia retail pharmacy and drug store services.
January 29, 1966
D.
GIANT LEAN
Registration Number:
Goods & Services:
First Use:
US PTO 1,176,399
Class 29, for inter alia fresh meats and meat products
February 17, 1975
E.
GIANT G
Registration Number
Goods & Services:
First Use:
US PTO 1,337,159
Class 36, for inter alia financial services namely automated teller machine services
August 25, 1984
F.
GIANT RX DISCOUNT DRUG
Registration Number
Goods & Services:
First Use:
US PTO 1,348,729
Class 42, for inter alia retail pharmacy and drug store services
June 24, 1984
G.
GIANT
Registration Number:
Goods & Services:
First Use:
US PTO 1,406,293
Class 42, for inter alia retail supermarket services
February 6, 1936
H.
GIANT FOOD
Registration Number:
Goods & Services:
First Use:
US PTO 1,078,672
Class 35, for inter alia retail grocery, supermarket and general merchandising store services
February 5, 1936
I.
GIANT G [LOGO]
Registration Number:
Goods & Services:
First Use:
US PTO 2,032,086
Class 36, for inter alia credit card services
March 13, 1996
J.
GIANT G THAT'S MY GIANT [LOGO]
Registration Number:
Goods & Services:
First Use:
US PTO 2,182,027
Class 25, for inter alia clothing, namely, caps, hats, shirts, sweatshirts and T-shirts
September 9, 1996
K.
GIANT FOOD & DRUG
Registration Number:
Goods & Services:
First Use:
US PTO 2,182,028
Class 25, for inter alia clothing, namely, caps, hats, shirts, sweatshirts and T-Shirts
September 9, 1996
L.
GIANT G PHARMACY
Registration Number:
Goods & Services:
First Use:
US PTO 2,319,083
Class 35, for inter alia retail pharmacy and drug store services
September 13, 1998
Complaint, Annexes C, D.
The Complainant registered the domain name on August 19, 1999 (Complaint, Annex A).
At the time of the initiation of the proceedings the website as constructed by Respondent resolved to a page stating "Welcome to . To Get Your Own Domain Name like it, please click here." Complaint, Annex E. The webpage was headlined "Domains Are Free" and referenced various web programming resources.
5. Parties� Contentions
A. Complainant
Complainant contends that Respondent has registered a domain name which is nearly identical to and confusingly similar to the service marks and trademarks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
B. Respondent
Respondent has not contested the allegations of the Complaint.
entered
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panelist as to the principles the Panelist is to use in determining the dispute: "A Panel shall 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 directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and used in bad faith.
The domain name at issue is either identical (Hewlett-Packard Company v. Cupcake City, NAF Case No. NAF0002000093562; America Online, Inc.v. Avrasya Yayincilik Danismanlik Ltd., NAF Case No. FA0002000093679) or confusingly similar (Marriott International, Inc. v. John Marriot, NAF Case No. FA 0002000094737; Identigene, Inc. v. Genetest Laboratories, WIPO Case No. D2000-1100; Seiko Epson Corporation v. Distribution Purchasing & Logistics Corp., NAF Case 0003000094219) to Complainant's mark.
Complainant has alleged and Respondent has failed to deny that Respondent has no legitimate interests in respect of the domain name at issue. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-007; Bronson Plc v. Unimetal Sanayai ve Tic. A.S., WIPO Case No. D2000-0011.
The question thus arises whether the domain name at issue has been registered and is being used in bad faith. Paragraph 4.b of the Policy sets forth "in particular but without limitation" circumstances which "shall be evidence of registration and use of a domain name in bad faith." Those circumstances are:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Complainant has alleged and the Panelist finds that Respondent's use of the domain name at issue, to resolve to a web site where the name GIANTFOOD is prominently displayed in connection with a site featuring web programming services including Photoshop, is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site. GIANT and FOOD are a feature of various trademarks of Complainant, and among the registered uses of Complainant�s trademarks are marks explicitly referring to photographic services. The use of the domain name by Respondent under these circumstances tends to confuse the user into believing that the Complainant is associated with the www. site.
Giant Foods has been in business since 1936, and its stores and products are widely known in the area where Respondent is located. Indeed, the record before the Panelist indicates that there are three Giant stores operating in the Bethesda, MD area where Respondent is located. These facts, coupled with the long history of operation of Complainant and its predecessors-in-interest, and the multiplicity of registered marks in numerous classes all featuring the word GIANT and many with the word FOOD as part of the word or design mark, suggest that Respondent was or ought to have been aware of Complainant's rights.
These facts constitute evidence of bad faith registration and use under the Policy, cf Policy, Paragraph 4(b)(iv), InfoS, Inc. v. Hari Prakash, WIPO Case No. D2000-0076, and America Online Inc. v. Cyber Network LLP, WIPO Case No. D2000-0977.
7. Decision
For all of the foregoing reasons, the Panelist decides that the domain name registered by Respondent is identical or confusingly similar to the trademarks and service marks in which the Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondent's domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4.i of the Policy, the Panelist requires that the registration of the domain name be transferred to the Complainant.
Richard Allan Horning
Sole Panelist
Dated: February 4, 2001
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