DECISION

Albertson's, Inc. v. Cesar Gomez a/k/a Gomez.Co

Claim Number: FA0212000135609

PARTIES

Complainant is Albertson's, Inc., Boise, ID (“Complainant”) represented by David J. Steele, of Christie, Parker & Hale LLP. Respondent is Cesar Gomez a/k/a Gomes.Co, Las Vegas, NV (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <albertsonns.com>, registered with Go Daddy Software, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 3, 2002; the Forum received a hard copy of the Complaint on December 6, 2002.

On December 4, 2002, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <albertsonns.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On December 9, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 30, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@albertsonns.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On January 9, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. Complainant argues that Respondent’s <albertsonns.com> domain name is confusingly similar to Complainant’s ALBERTSONS mark.

2. Complainant argues that Respondent does not have rights to or legitimate interests in the <albertsonns.com> domain name.

3. Complainant argues that Respondent registered and used the <albertsonns.com> domain name in bad faith.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Albertson’s Inc., was founded in 1939 and engages in providing numerous services, inter alia, retail grocery services, drug store services, electronic retailing services, convenience store services, and gasoline dispensing services. Complainant has grown since its foundation to 2,492 stores in 37 states domestically. Through continuous use of the ALBERTSONS mark combined with extensive marketing and advertising, Complainant has generated tremendous goodwill in the ALBERTSONS mark.

Complainant also operates a commercial website at <albertsons.com>. Internet consumers can shop online and obtain extensive information about numerous topics, including the numerous services Complainant provides. A significant portion of Complainant’s several million customers access the website each day.

Complainant holds numerous valid registrations for the ALBERTSONS mark and other variations incorporating the ALBERTSONS mark on the Principal Register of the United States Patent and Trademark Office (“USPTO”) (Reg. Nos. 885,630 & 1,073,368).

Respondent registered the <albertsonns.com> domain name on November 9, 2002. Respondent’s <albertsonns.com> re-directs Internet traffic to <mygasupusa.com>, a commercial website which offers a method for potentially selling discount gasoline.

DISCUSSION

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.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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

(1) The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) The domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established rights in the ALBERTSONS mark through registration with the USTPO, and subsequent continuous use of the mark.

Respondent is engaging in typosquatting. Typosquatting is the intentional registration of a domain name that is a misspelling of a distinctive or famous mark, causing an Internet user who makes a slight spelling or typing error to reach an unintended website. The addition of an “N” to the ALBERTSONS mark does not significantly alter the domain name as to distinguish it from Complainant’s famous mark. Therefore, Respondent’s  <albertsonns.com>  domain name is confusingly similar to the ALBERSONS mark under a Policy ¶ 4(a)(i) confusingly similar analysis.  See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also America Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to Complainant’s mark, ICQ).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has thus been satisfied.

Rights or Legitimate Interests

Respondent did not respond to the Complaint, thereby allowing the Panel to accept all reasonable inferences alleged by the Complainant. The initial burden rests with Complainant to allege a prima facie case. After the prima facie case has been satisfied, the burden shifts to Respondent to rebut all allegations. Respondent, by failing to reply, failed to fulfill its burden of demonstrating rights or legitimate interests in the disputed domain name.  See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”);  see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence). 

Respondent’s <albertsonns.com> has been used to link Internet users to the commercial website <mygasupusa.com>. Respondent’s utilization and management of the domain name shows that it is intentionally capitalizing on the fame of Complainant’s mark to attract Internet traffic to another website, which has no relationship with Complainant. Respondent’s conduct with relation to the use of the domain name does not represent a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).  See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, it's use of the names was not in connection with the offering of goods or services or any other fair use); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).

Respondent, by virtue of failing to respond, has not put forward any evidence that it is “commonly known” by the <albertsonns.com> domain name.  Further, failure to reply to Complainant’s allegations leads to no viable alternative supporting the rationale behind the use of Complainant’s mark.  Conversely, Complainant has submitted evidence establishing itself as the principal holder of all rights and legitimate interests in the ALBERTSONS mark.  Thus, the Panel accepts Complainant’s allegations that Respondent has no rights or legitimate interests to the domain name under Policy ¶ 4(c)(ii).  See Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

Complainant has sufficiently supported its allegation that Respondent is not engaging in a noncommercial or fair use manner of the disputed domain name under Policy ¶ 4(c)(iii). Respondent intentionally misspelled the famous ALBERTSONS mark to benefit from the substantial reputation and goodwill associated with Complainant’s mark. Additionally, Respondent is diverting Internet traffic to a commercial website not associated with Complainant. Neither of these circumstances lead the Panel to conclude that the <albertsonns.com> is being used in accord with Policy ¶ 4(c)(iii). See Encyclopaedia Brittanica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of Complainant's mark); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has thus been satisfied.

Registration and Use in Bad Faith

Respondent registered and is using the disputed domain name in bad faith. Complainant’s ALBERTSONS mark is registered on the Principal Register of the USPTO, thereby placing Respondent on constructive notice of Complainant’s rights in the ALBERTSONS mark. In addition, based on the fame of Complainant’s name and mark, coupled with its reputation as a leading national retail grocer, it can be inferred that Respondent had actual knowledge of Complainant’s rights in the ALBERTSONS mark when it registered the disputed domain name. Registration of a domain name that incorporates Complainant’s mark, notwithstanding actual or constructive knowledge to the contrary, is a precursor to finding bad faith. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).

Respondent’s management of the <albertsonns.com> domain name illustrates bad faith registration and use under Policy ¶ 4(b)(iv). Respondent has intentionally attempted to attract Internet users to <mygasupusa.com> by creating a liklihood of confusion as to the affiliation with, or sponsorship of the disputed domain name by Complainant since Complainant also engages in providing services in the gasoline industry. By redirecting unwary Internet users to <mygasupusa.com>, and presumably doing it for monetary gain, Respondent is acting in bad faith. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the Respondent had engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks).  

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has thus been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel hereby concludes that the requested relief shall be GRANTED.

Accordingly, it is ordered that the domain name <albertsonns.com> be TRANSFERRED from Respondent to Complainant.

___________________________________________________

                                      

                                                                                                 Judge Harold Kalina (Ret.), Panelist

                                                                                                 Dated:  January 21, 2003

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