WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gardner�s Super Markets Inc. v. Ambassa Holdings, Inc.
Case No. D2002-0253
1. The Parties
The Complainant in this proceeding is Gardner�s Super Markets Inc. ("Complainant"), a Florida corporation having its principal place of business at 9351 S.W. 56 Street, Miami, Florida 33165, United States of America.
The Respondent is Ambassa Holdings, Inc., the Registrant of the domain name in issue ("Respondent"), with a listed mailing address of 5750 North Bay Road, Miami Beach, Florida 33140, United States of America.
2. The Domain Name and Registrar
The domain name in issue is .
The Registrar of the domain name in issue is B ("the Registrar") with a corporate address of 10 East Baltimore Street, Suite 1500, Baltimore, Maryland 21202, United States of America.
3. Procedural History
On March 15, 2002, the Complainant filed a Complaint with the WIPO Arbitration and Mediation Center ("the Center") concerning the domain name in issue and paid the required filing fee for appointing a Single Member Panel.
On April 10, 2002, the Center sent a "Complaint Deficiency Notification" as well as a further e-mail message to the Complainant requesting that it cure deficiencies with respect to the filing of the Complaint as well as the Complaint itself. Particularly, these deficiencies included the Complaint not being submitted in electronic format, only three copies of the Complaint being filed with the Center, the Complaint not correctly identifying the Registrar with which the domain name in issue was registered at the time the Complaint was filed and the exact domain name in dispute. On April 10, 2002, the Complainant confirmed with the Center that the domain name in dispute was . On April 15, 2002, the Complainant filed an Amendment to the Complaint ("the Amendment") in response to the Complaint Deficiency Notification addressing the deficiencies noted by the Center. Based upon such filing by the Complainant, on April 22, 2002, the Center found the Complaint to be in compliance with the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the ICANN 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"). On April 22, 2002, the Center also proceeded to send a "Notification of Complaint and Commencement of Administrative Proceeding" and the Complaint to the Respondent at the facsimile number and postal and e-mail addresses listed in the domain name registration. The Center received confirmation that the facsimile transmission and courier delivery of these documents were received by the Respondent. With respect to the e-mail transmission of these documents, the Center did not receive error messages or notices of non-delivery when the Notification and the Complaint were sent to the e-mail addresses listed in the domain name registration.
On May 16, 2002, after the twenty-day period had expired as required by paragraph 5(a) of the Rules and no response from the Respondent was received, the Center sent a "Notification of Respondent Default" to the Respondent by e-mail with a copy to the Complainant.
On May 27, 2002, the Center invited the undersigned Panelist to serve as a Single Member Panel in this proceeding. The Panelist, as required, submitted a "Statement of Acceptance and Declaration of Impartiality and Independence" with the Center and the Center sent a "Notification of Appointment of Administrative Panel and Projected Decision Date" by e-mail to the parties on May 31, 2002.
Having reviewed the entire record submitted for this proceeding, the Panelist concurs with the Center�s finding that the Complaint is now in compliance with the Policy, Rules and Supplemental Rules and finds that the Panel was properly constituted and appointed. The Panelist also finds that the Center has fully discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent" of this proceeding and that the Respondent is in default for failing to file a response to the Complaint. The Panelist shall therefore draw inferences from the Respondent�s default as the Panelist considers appropriate based upon paragraph 14(b) of the Rules and shall issue a decision based on the Complaint, the Amendment, the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant bases its Complaint on its common law rights in the trade name and mark "Gardner�s Market" and the stylized "Gardner�s Market" logo used in connection with high quality grocery stores in the South Florida area. It is also noted that the Complainant is the owner of the domain name having a web site accessible thereto that provides information on its various stores, services and products.
The domain name in issue was registered on February 14, 1999, to the Respondent and there is currently a "Coming Soon" hold page accessible at this domain name. A copy of the Whois record for the domain name in issue was attached as Annex 1 to the Complaint.
5. Parties� Contentions
Complainant
The Complainant asserts that it owns a well-established chain of high quality grocery stores in the South Florida area under the trade name and mark "Gardner�s Market". The Complainant asserts that the family business was found in 1912 and that it changed its name to "Gardner�s Super Markets, Inc." in 1952. In 1975, the Complainant first began doing business as "Gardner�s Market" and its plural form "Gardner�s Markets". The Complainant also asserts that it has a logo incorporating the words "Gardner�s Market", that the logo was designed in 1983 and that this logo has been used in the signage for its grocery stores and in other marketing materials since 1984.
The Complainant asserts that its company logo incorporating the words "Gardner�s Market" is featured prominently in all of the four stores operated by the Complainant, including on its shopping bags, uniforms, refrigerated trucks and on other materials. The Complainant further asserts that it maintains a presence throughout Dade and Monroe Counties in Florida and that it markets and sells its products exclusively under the marks "Gardner�s Market" and "Gardner�s Markets".
The Complainant asserts that the domain name in issue is therefore identical or confusingly similar to its common law trademark or service mark "Gardner�s Market" in which the Complainant has rights through decades of use in commerce.
The Complainant asserts that the Complainant�s counsel repeatedly contacted the Respondent demanding the transfer of the domain name in issue. The Complainant asserts that on or about April 27, 2001, the Complainant�s counsel contacted the Respondent by certified mail, demanding the transfer of the disputed domain name. The Complainant further asserts that on or about May 17, 2001, the Complainant�s counsel again contacted the Respondent by certified mail, demanding the transfer of the disputed domain name. The Complainant asserts that Christian Berdouare, who is listed as the administrative contact for the domain name in issue, contacted the Complainant�s counsel with an offer to sell the domain name to the Complainant for $10,000.
The Complainant asserts that on or about January 22, 2002, the Complainant�s counsel again contacted the Respondent by certified mail demanding the transfer of the domain name in issue. The Complainant asserts that in response to the Complainant�s correspondence of January 22, 2002, the administrative contact for the domain name in issue, Christian Berdouare, contacted the Complainant�s counsel reiterating his offer to sell the domain name to the Complainant for $10,000.
The Complainant asserts that the Respondent has no rights or legitimate interests in the domain name in issue and that the Complainant has the exclusive right to use the mark "Gardner�s Market". The Complainant further asserts that the Respondent has never been known by the domain name and has never acquired any trademark or service mark rights in the mark "Gardner�s Market". The Complainant further asserts that the Respondent has not made any good faith use of the domain name for any business purpose for the nearly three years since it initially registered the domain name and subsequently re-registered it on or about March 21, 2001. Instead, a search for the domain name directs the user to a website sponsored by R for the offer and sale of the domain name.
The Complainant asserts that the Respondent has registered and is using the domain name in bad faith for the purpose of disrupting the business of, and harassing, the Complainant. Support for this position is based on business disputes between the Complainant and Chicken Kitchen Corporation, a company that shares the same principal as the Respondent, Christian Berdouare, and that has a store located adjacent to one of the Complainant�s grocery stores.
The Complainant asserts that the Respondent has registered and is using the domain name in bad faith for the purpose of selling the domain name for an amount well in excess of its out-of-pocket costs for the transfer of the domain name. The Complainant asserts that the Respondent offered the domain name in issue for sale for the price of $10,000. The Complainant further asserts that the Respondent�s only business is the purchase and sale of domain names and bases this assertion on the deposition testimony of Christian Berdouare, the administrative contact for the domain name in issue and a principal of the Respondent. Moreover, the Complainant alleges that the Respondent has made no attempts to use or demonstrate any preparations for the use of the domain name for a period of three years.
Respondent
No response was received from the Respondent with respect to this proceeding.
6. Discussion and Findings
The Proceeding - Three Elements
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party complainant asserts to an ICANN approved dispute resolution service provider that:
(i) the domain name holder�s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights ("Element (i)"); and
(ii) the domain name holder has no rights or legitimate interests in respect of the domain name ("Element (ii)"); and
(iii) the domain name of the domain name holder has been registered and is being used in bad faith ("Element (iii)").
The Panelist can only rule in a complainant�s favor after the complainant has proven that the above-listed elements are present.
Element (i) - Domain Name Identical or Confusingly Similar to the Mark
The Complainant in this proceeding has not claimed that it owns any registrations for the mark "Gardner�s Market". Rather the Complainant bases its Complaint on common law trademark rights in the trade name and mark "Gardner�s Market" and the stylized "Gardner�s Market" logo and its long and continuous use thereof in conjunction with high quality grocery stores in the South Florida area. However, to establish such common law rights, the Complainant must show that its mark has achieved secondary meaning or association with it. In determining whether the Complainant�s mark has acquired secondary meaning, one must consider a variety of factors, including, but not limited to, advertising, promotion, sales, media coverage and the length, manner and exclusivity of use of the mark by the Complainant.
The Complainant has shown long, continuous and extensive use of the trade name and mark "Gardner�s Market" since 1975 in connection with its grocery stores at multiple locations in the South Florida area as well as the stylized "Gardner�s Market" logo since 1983 in connection with these grocery stores and in other marketing materials since 1984. In addition, evidence of the Complainant�s extensive and prominent use of the "Gardner�s Market" logo in its stores, on its web site, its shopping bags, its employee uniforms, refrigerated trucks, products and other materials, further demonstrates the Complainant�s promotion, marketing and advertising thereof in connection with its services and products. Accordingly, based on the findings and uncontested evidence presented and that the Respondent has not disputed or challenged the Complainant�s rights therein, the Panelist is satisfied for the purposes of this proceeding that the Complainant has shown it possesses common law trademark rights.
The Panelist also finds based upon the evidence submitted by the Complainant that the domain name in issue is identical to the mark "Gardner�s Market". A review of the evidence submitted shows that the domain name differs from the mark "Gardner�s Market" by the omission of an apostrophe in the domain name. The apostrophe in the mark, while not reproducible in a domain name, is not considered a distinguishing feature in this case sufficient to avoid a finding that the domain name is identical or confusingly similar to the mark. The Panelist also finds that the domain name in issue is confusingly similar to the Complainant�s "Gardner�s Market" logo. The Panelist therefore finds that Element (i) has been satisfied.
Element (ii) - Rights or Legitimate Interests in the Domain Name
No evidence has been presented that the Respondent is commonly known by the domain name in issue. Furthermore, no evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent had been using or was making demonstrable preparations to use the domain name in connection with any type of bona fide offering of goods or services. The Complainant asserted in its Complaint, and the Panelist confirmed, that the web site corresponding to the domain name in issue resolves to a "Coming Soon" hold page. This hold page, however, does not support a finding that the Respondent was making a legitimate non-commercial or fair use of the domain name in issue. The evidence submitted by the Complainant also shows that the registration of the domain name in issue by the Respondent does not predate the Complainant�s much earlier first use and first use in commerce of its mark and logo. Nor has any evidence been presented that the Complainant has at any time assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use its mark or logo in any manner. Thus based on the Complainant�s assertions and the lack of evidence to show otherwise, the Panelist finds that Element (ii) has been satisfied based on the Respondent having failed to establish rights or legitimate interests in the domain name in issue.
Element (iii) - Domain Name Registered and Used in Bad Faith
Based upon the uncontested evidence submitted by the Complainant, the Panelist finds that the Respondent was clearly aware of and had knowledge of the Complainant�s mark "Gardner�s Market" when registering the domain name in issue. This finding is supported by the evidence showing that the domain name in issue was registered well after the first use by the Complainant of its mark. Moreover, this finding is supported by the uncontested evidence of the Complainant showing that the Respondent is also located in Miami, Florida and that Chicken Kitchen Corporation, a company affiliated with the Respondent, owns a restaurant adjacent to one of the Complainant�s grocery stores. Thus the Respondent was clearly aware and had knowledge of the Complainant�s mark prior to registering the domain name in issue. Coupled with the above findings that the domain name in issue is identical to the Complainant�s mark "Gardner�s Market" and that the Respondent has established no rights or legitimate interests in the domain name, the Panelist finds that the Respondent registered the domain name in issue in bad faith.
The Complainant further asserts and certifies that the Respondent offered to sell the domain name in issue to the Complainant for $10,000, an amount in excess of the Respondent�s out-of-pocket costs directly related to the domain name. Although generally assertions in a Certified Complaint are not by themselves sufficient, the additional evidence presented supports the Complainant�s assertions of the Respondent�s offer of the domain name for sale. The Complainant has established that the Respondent registered the domain name with the knowledge of the Complainant�s mark and has provided uncontested assertions that because there have been business disputes between the Complainant and the Respondent�s affiliated company the Respondent thus registered the domain name in issue for the purpose of disrupting the Complainant�s business or preventing the Complainant from reflecting its mark in a corresponding domain name. Moreover, the Complainant has provided evidence of a deposition under oath of Mr. Christian Berdouare, the Respondent�s administrative contact and a principal of the Respondent, where he answered affirmatively to the question that the only business the Respondent had ever done was to hold title to internet domain names. Finally, no evidence has been presented by the Respondent of any type of actual or contemplated legitimate non-commercial, good faith or fair use of the domain name since it was initially registered over three years ago and subsequently renewed on March 21, 2001, for a two year period. Accordingly, when considering such findings and the uncontested evidence and assertions in their entirety, the Panelist thus concludes that the Respondent registered and is using the domain name in issue in bad faith and that Element (iii) has been satisfied.
7. Decision
The Panelist finds that: (i) the domain name is identical to the Complainant�s mark "Gardner�s Market" and is confusingly similar to the Complainant�s logo; (ii) the Respondent has no rights or legitimate interests in the domain name; and (iii) the Respondent has registered and is using the domain name in bad faith. The Panelist therefore requires that the registration of the domain name be transferred to the Complainant.
Marylee Jenkins
Sole Panelist
Dated: June 14, 2002
Full & Egal Universal Law Academy