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 Domain Admin, Whois Privacy Corp. of Nassau, Bahamas / Carolina Rodrigues of Santiago, Chile. 2. The Domain Name and Registrar
The disputed domain name is registered with TLD Registrar Solutions Ltd. (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 disputed domain name. On June 10, 2016 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 Complainant on June 10, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 14, 2016.
The Center verified that the Complaint and 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 proceedings commenced on June 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 10, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 11, 2016.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on July 20, 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 is an American company founded in 1958 that operates over 450 retail stores.
Complainant is the holder of 91 separate trademark registrations worldwide for the mark TRADER JOE’S, including registration No. 1420628 in classes Int. Cl 42 and Prior U.S. Cl. 101, filed on May 12, 1986, and registered on December 9, 1986 with the United States Patent & Trademark Office (“USPTO”). The mark TRADER JOE’S is registered and used in conjunction with “retail grocery stores” and numerous food and beverage products (according to annex E of the Complaint).
Respondent registered the disputed domain name on July 27, 2012 (according to Annex A of the Complaint).
Complainant’s trademark registrations predate the disputed domain name’s registration. 5. Parties’ Contentions A. Complainant
Complainant alleges to be the holder of numerous trademarks for TRADER JOE’S in the United States, and argues that the disputed domain name incorporates the trademark TRADER JOE’S in its entirety, which establishes a confusing similarity with it, differing only in the addition of the common terms “products” and “online”.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Rather it has a purely commercial interest in misleadingly diverting Internet users, since Complainant has not licensed or authorized Respondent to use the trademark TRADER JOE’S in any form. Besides that, considering the available WhoIs information, there is no indication that Respondent or its business operations are known by the disputed domain name.
Complainant claims that Respondent does not intend to use the disputed domain name in connection with bona fide offering of goods or services. Instead, it intends to exploit the fame and good will associated with the TRADER JOE’S mark.
Complainant also affirms that does not resolve to a single website. Rather, it alternately directs users to either a landing page populated with pay-per-click links, search engine results pages for search term related to the Complainant’s business, and third-party websites.
Moreover, Complainant affirms that the fame of the trademark TRADER JOE’S makes it impossible for Respondent not to have been aware of it before registering the disputed domain name. Complainant also emphasizes that Respondent failed to reply to Complainant’s cease and desist letter.
Finally, Complainant stresses that Respondent impeded the parties reaching a resolution by using a privacy service (“Whois Privacy Corp.”) in order to mask its identity and to frustrate enforcement of the Policy. B. Respondent
Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The burden of proving these elements is on Complainant. A. Identical or Confusingly Similar
Complainant’s trademark TRADER JOE’S is used in its entirety as part of the disputed domain name. The inclusion in the disputed domain name of the expression “productsonline” does not add distinctiveness to the disputed domain name due to the generic nature of such expression. Thus, the Panel finds that the disputed domain name causes confusion and creates an improper association with Complainant’s products, leading consumers to believe that the disputed domain name is directly related with products and services provided by the trademark holder.
The Panel considers proved the first element of paragraph 4(a). B. Rights or Legitimate Interests
Respondent had twenty days to submit a response according to paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules, establishes that if Respondent does not respond to the Complaint, the Panel’s decision must be based upon the Complaint.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized at paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) as follows: “[A] complainant is required to make out 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 appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [...] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest[s], the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
In this case, Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests, so the burden of production shifts to Respondent. As Respondent has not filed any response, that burden has not been discharged, and the Panel has considered Complainant’s prima facie case to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name .
The Panel finds that Complainant has never entered into any agreement with Respondent, nor granted any authorization or license to Respondent regarding the use of Complainant’s trademarks, nor is Respondent affiliated with Complainant’s activities.
Therefore, the Panel holds that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed evidence of the registration and use of a domain name in bad faith. Those circumstances include: “(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”.
The Panel finds it highly unlikely that Respondent had no knowledge of Complainant’s rights to the trademark TRADER JOE’S at the time of registration of the disputed domain name, taking into consideration its notoriety worldwide. On the contrary, the evidence shows that Respondent was likely trying to create confusion that would generate sales to unwary customers of Complainant.
In this connection, the Panel notes that the disputed domain name resolves to a “link farm”, i.e. a web page in which there are several links for providers of goods and services competing with but not connected to Complainant, and such use of the disputed domain name is evidence of bad faith. See VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager,WIPO Case No. D2007-1881:
“Because Respondent has registered the disputed domain name that uses a unique combination of terms associated with Complainant, and has only used the disputed domain name to direct Internet users to a pay-per-click link farm parking page that includes third-party competitors of Complainant, the Panel determines that Respondent registered and has used the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy.”
In fact, the disputed domain name is being used in connection with a commercial link service, or “link farm”, as it is designed to lure users and divert them to other commercial sites. This is not a bona fide offering of goods or services and does not confer a right or legitimate interest in the disputed domain name (see more e.g., Minka Lighting, Inc. d/b/a Minka Group v. Lee Wongi, WIPO Case No. D2004-0984; Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC, WIPO Case No. D2006-0550).
Thus, the Panel concludes that Respondent acts in bad faith for the following reasons: (i) the widespread reputation of Complainant’s products and services, made it impossible to Respondent had no knowledge about Complainant’s rights regarding the trademark at the moment of the disputed domain name’s registration; and (ii) Respondent sought to divert Complainant’s clientele by hosting a “link farm” with links to providers of goods and services competing with but not associated with Complainant.
Lastly, the Panel notes that, in conjunction with all the above mentioned, the fact that Respondent opted to use a privacy service, preventing others to have access to their real identity, and did not present any response to the Complaint, reinforces the conclusion that Respondent acted in bad faith.
Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith, in compliance with paragraph 4(b)(iv) of Policy. 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 be transferred to the Complainant.
Gabriel F. Leonardos
Sole Panelist
Date: August 3, 2016
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