The Complainant is Trader Joe's Company of Monrovia, California, United States of America ("United States" or "USA"), represented by O'Melveny & Myers, LLP, United States.
The Respondent is Paul Ward of Prestatyn, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Domainbox Limited (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 1, 2016. On April 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 5, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's contact details.
The Center verified that the 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 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2016. The Response was filed with the Center on April 16, 2016.
The Center appointed Simon Minahan as the sole panelist in this matter on May 2, 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
For the purposes of this decision, after review of the materials and submissions the Panel finds as follows:
Since the 1950s the Complainant has continuously operated a chain of retail grocery stores under the name and mark TRADER JOE'S. It currently operates approximately 450 stores in the USA. It holds over 90 registrations for the trade mark TRADER JOE'S world-wide. In addition it holds further registrations of similar marks. It currently holds the domain name and maintains an online operation in connection with that domain name. The Complainant has an established reputation and interest in the TRADER JOE'S trade mark.
The disputed domain name was registered on March 6, 2016. On March 7, 2016, it was offered for sale to the Complainant by the Respondent.
Since registration the disputed domain name has been used, without the Complainant's consent or authority, for a website displaying pay per click links. 5. Parties' Contentions A. Complainant
The Complainant contends that:
a) It has an established trade mark interest in the TRADER JOE'S mark and the Respondent – having no identifiable history of use of the name – has none;
b) The disputed domain name incorporates the entirety of the Complainant's TRADER JOE'S mark (save for the apostrophe) and as such is identical, alternatively confusingly similar to the Complainant' s trade mark;
c) The disputed domain name, in light of its use and the offer of it for sale to the Complainant, was registered and is being used in bad faith. B. Respondent
The Respondent replied to the Complaint (excluding formal parts) as follows:
"It came as a bit of a surprise that I received this notice of complaint.
After reading the complainant's version of events and accusations of impropriety I would like to put forward my view.
I came across the domain name via a search for expiring domains. I thought that it was an interesting domain; maybe of interest to several different companies.
As stated by the complainant I contacted them to see if they were interested in purchasing the domain.
'Would your company be interested in purchasing the domain?
[. . .]'
As I didn't receive a reply I just thought; I guess not, perhaps as the USA hasn't really embraced the .co
There are several other businesses that trade under the exact same name here in the UK: Trader Joe's 129 Bayswater Road, London, W2 4RJ; Trader Joes 325 Hope Street, Glasgow, G2 3PT.
There are dozens of Trader Joe's product review; blog sites and recipe sites. E.g.
www.whatsgoodatm
www.clubm
These are what I would call unbiased review sites, in the spirit of the Internet. The Huffington Post also regularly recommend Trader Joe's products, sometimes they slate certain products.
I do not entertain pay per click links and refute doing so. I firmly believe I have been fair, honest and transparent. I only registered the domain less than 40 days ago, and have no control of its landing page at the present time.
Following this action by the complainant; I am considering using the domain T to host links to all the above product review; blog sites and recipe sites. No advertising, no banners, no advertising revenue stream (pay per click) In the meantime I will be happy to point the domain at a review, blog or recipe site of the complainants choice.
The Administrative panel member has to decide whether this use of T is in the free spirit of the internet. I only registered the domain some 40 days ago, and have no control of its landing page at the present time due to this dispute. 6. Discussion and Findings
The Panel's findings are based on the background facts set out above. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to the Complainant's TRADER JOE'S trade mark.
A domain name which incorporates a complainant's mark in its entirety without more is practically identical to a complainant's mark notwithstanding the presence of any generic Top-Level Domain (".gTLD") suffix or the absence of minor punctuation in the domain.(See, Telecom Personal, S.A. v. NAMEZERO.COM, Inc,WIPO Case No. D2001-0015; Nokia Corporation v. Private,WIPO Case No. D2000-1271).
Further reproduction of a whole mark in a domain name, even with banal variations or additions is to be taken as per se establishing confusing similarity, even if not being identical, under the Policy. (See, Sanofi-Aventis v. Direct Response Marketing aka DRM,WIPO Case No. D2005-0661; Sanofi-aventis v. Elizabeth Riegel and Andrew Riegel,WIPO Case No. D2005-1045; Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray Landers,WIPO Case No. D2000-1511; PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),WIPO Case No. D2003-0696; PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services,WIPO Case No. D2001-0174; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409; America Online, Inc. v. Chris Hoffman,WIPO Case No. D2001-1184; Pfizer Inc. v. United Pharmacy Ltd,WIPO Case No. D2001-0446; Wal-Mart Stores, Inc. v. Lars Stork,WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713; Wal-mart Stores, Inc. v. Yongsoo Hwang, NO-WALMART and NO-WALMART.COM,WIPO Case No. D2000-0838; AltaVista Company v. S.M.A., Inc.,WIPO Case No. D2000-0927; BIC Graphic Europe S.A. and Société BIC v. Alphabos B.V.,WIPO Case No. DNL2015-0060). B. Rights or Legitimate Interests
The Complainant contends that it has given no licence or consent to the Respondent to use the TRADER JOE'S trade mark and further that there is no history or evidence of any prior commercial use by the Respondent of the term "Trader Joe's" nor any evidence of it having any legitimate interest or right in that expression.
This is sufficient to make out a prima facie case for the Complainant and, under paragraph 4(a)(ii) of the Policy, once the Complainant has made out such a case, the burden to establish those rights or legitimate interests shifts to the Respondent. (See, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Time Out Group Ltd. v. Marc Jacobson,WIPO Case No. D2001-0317).
The Panel considers the Respondent's reply that he may possibly use the disputed domain name in the future for a review or comment site does not confer any legitimate interest on the Respondent, particularly where no such use has in fact been made of the disputed domain name. The Respondent has provided no evidence of any demonstrable preparations to use the disputed domain name in connection with a "blog site or recipe site". In any event the Panel is inclined to regard the assertion as a fig-leaf rationalization which comes too late in the circumstances to be credible.
In these circumstances the Panel finds on balance that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel finds that, in accordance with paragraph 4(b)(i) of the Policy the Respondent registered and is using the disputed domain name in bad faith.
The unsolicited offer to sell the disputed domain name to the Complainant the day after the Respondent registered the disputed domain name is evidence establishing both registration of the disputed domain name and its use in bad faith. (See, Mag Instrument, Inc. v. Richard Larkins Sets&Reps,WIPO Case No. DME2013-0001).
Further, this conduct, which is admitted by the Respondent, when coupled with the failure to make any subsequent legitimate use of the disputed domain name, makes this "a case of classic cybersquatting". (See, Martha Stewart Living Omnimedia. Inc. v. Josh Gorton,WIPO Case No. D2005-1109).
While the Respondent's denial of the use of the disputed domain name to earn click for view advertising is noted, it is also noted that no existing or past legitimate use of the disputed domain name is asserted by the Respondent. Insofar as the Respondent's assertion is at odds with the evidence submitted by the Complainant, the Panel credits the Complainant's evidence on this score.
It is not necessary to so find, however, because in the Panel's view the Respondent's immediate approach to the Complainant to sell the disputed domain name establishes the bad faith use and registration. In addition it would tend to establish that the Respondent knew of the Complainant's goodwill and reputation in the TRADER JOE'S trade mark and, conversely, was well aware that he himself had no such rights when he registered the domain name – which will also ground a finding of bad faith use and registration. (See, Express Scripts, Inc. v. TheSonicNet,WIPO Case No. DCO2010-0010).
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.
Simon Minahan
Sole Panelist
Date: May 27, 2016
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