WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Publix Asset Management Company v. Sergey Ryabov
Case No. D2010-0958
1. The Parties
The Complainant is Publix Asset Management Company of Lakeland, Florida, United States of America, represented by Thomas & LoCicero PL, United States.
The Respondent is Sergey Ryabov of Saint-Petersburg, Russian Federation.
2. The Domain Name and Registrar
The Disputed Domain Name <publixpharmacy.org> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2010. On June 11, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On June 11, 2010, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on July 15, 2010.
The Center appointed Dawn Osborne as the sole panelist in this matter on July 23, 010. 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
The Complainant owns United States registered trade marks for, inter alia, PUBLIX and has used this mark in relation to pharmacy services since 1991. The Respondent recently registered the Disputed Domain Name and is using it to sell pharmaceuticals.
5. Parties' Contentions
The submissions in the Complaint can be summarised as follows:
A. The Disputed Domain Name is confusingly similar to service marks and trademarks in which the Complainant has rights
The Complainant and its parent company, Publix Super Markets, Inc., and affiliates (collectively “Publix”) together comprise one of the largest retail grocers in the United States. Publix's grocery stores contain retail pharmacies and offer pharmacy services throughout the Southeastern United States. Publix also operates the web sites “www.publix.com” and “www.publixpharmacy.com”, which explain Publix's pharmacy services and offer online prescription refills to Publix pharmacy customers.
The Complainant owns numerous U.S. Trademark Registrations for the mark PUBLIX. The Complainant's marks PUBLIX and P PUBLIX & Design have been used in commerce in connection with pharmacy services since at least as early as November 17, 1991.
The domain name <publix.com> has been registered since January 31, 1995. Publix also owns the registrations for <publixpharmacy.com> and <publixpharmacy.net>. Over the years, the Complainant has invested in advertising its products, grocery store services and pharmacy services under the PUBLIX marks. The PUBLIX marks and domain names have been used continuously and have become well known in the United States and elsewhere.
The Disputed Domain Name is confusingly similar to the Complainant's PUBLIX marks. Indeed, it is identical to the Complainant's PUBLIX mark except that the Respondent has added the word “pharmacy”. The addition of “pharmacy” to the PUBLIX mark, does not distinguish the Respondent's domain name from the Complainant's mark. Additionally, persons searching for the “www.publix.com” web site are likely to erroneously believe that the “www.publixpharmacy.org” site is sponsored by or affiliated with the Complainant. The addition of a generic or descriptive term “likely exacerbates the confusion” of persons who encounter such a domain name, because those people “would very likely, if not reflexively think, that this name and [the associated web site are] affiliated in some fashion with the Complainant.” See Cable News Network LP, LLP v. Elie Khouri d/b/a Channel News Network et al., NAF Case No. 117876 (December 16, 2002).
The <publixpharmacy.org> domain name leads to an infringing site that offers prescription drugs for erectile disfunction, pain management, depression and other prescription medications. The Respondent uses the PUBLIX mark in combination with the term “pharmacy,” displayed in the page heading “Publix Pharmacy.” The site also displays the name “Publix Pharmacy” in the portion that explains the delivery of orders. The similarity of Publix's services to those offered on the Respondent's <publixpharmacy.org> site makes confusion particularly likely.
B. The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name
The Respondent has no right or legitimate interest in the Disputed Domain Name. The Respondent is not associated with any legitimate use of PUBLIX as a mark or trade name. the Respondent is not commonly known by the domain name <publixpharmacy.org> and has no authorization to use the Complainant's marks for any purpose. Clearly, the Respondent's use is not a non-commercial use, nor is it a fair use. The Respondent's use of the Disputed Domain Name on an infringing site is a pretext and intended to suggest a connection with the Complainant that simply does not exist. The Respondent's use is commercial, competitive and intended for commercial gain. Indeed, the nature of the use constitutes infringement of the Complainant's rights in the <publix.com>, <publixpharmacy.com> and <publixpharmacy.net> domain names and the PUBLIX mark.
The Respondent's obvious goal in registering the Disputed Domain Name is to divert Internet users away from Publix's legitimate web site. Such diversion disrupts Publix's relationships with customers, potential customers, and anyone else wishing or potentially wishing to transact business with the Complainant.
On June 3, 2010, in an effort to protect its mark, the Complainant sent a cease and desist letter to the Respondent by electronic mail, which requested that the Respondent immediately take down the contents of the site and transfer the Disputed Domain Name to the Complainant. The Respondent has not replied.
C. The Disputed Domain Name was registered and has been used in bad faith
Under the Policy, circumstances that “shall be evidence” of bad faith include facts indicating an intentional attempt to attract, for commercial gain, Internet users to a web site by creating a likelihood of confusion with another's mark as to the source, sponsorship, affiliation, or endorsement of the web site. See Policy, paragraph 4(b)(iv). Web pages displayed at the Respondent's domain name demonstrate that it is attempting to attract visitors to the site for commercial gain by creating the likelihood of confusion with the Complainant's marks. The Disputed Domain Name was registered by the Respondent at least eighty years after Publix began using its PUBLIX mark in commerce, at least nineteen years after Publix began using the PUBLIX mark in commerce on pharmacy services, and at least fifteen years after Publix's registration of <publix.com>.
The Complainant's and the Respondent's sites offer similar services. For example, through its <publixpharmacy.com> and <publix.com> pharmacy domain names, the Complainant offers information concerning its pharmacy services, in both retail stores and over the Internet. The Complainant also offers online customers the ability to order prescription refills. The Respondent's domain name offers services that are directly in competition with Publix's pharmacy services. Unless the Disputed Domain Name is transferred permanently to the Complainant, the Respondent is likely to continue its infringing activities, thereby causing further harm and damage to the Complainant and the public interest.
The Respondent has exhibited a pattern of registering domain names that include trademarks registered to other parties and using them to operate online pharmacies. Those registrations include <acheter-valium-france.info>, <buyvaliumaustralia.info>, <buyvaliumonline-uk.info>, <valium-italia.info>, and <1-buyvaliumonline.info>. See F. Hoffmann-La Roche AG v. Nexton Limited, Ryabov Sergey, WIPO Case No. D2010-0101 (March 9, 2010) (ordering the transfer of the above-listed domain names to the owner of the VALIUM trademark). In addition, the DomainTools web site indicates that more than 1,500 other domain names are registered to the Respondent. This pattern of conduct provides strong evidence that <publixpharmacy.org> was not registered in good faith. See Policy, paragraph 4(b)(ii).
The use of Complainant's entire mark in the Disputed Domain Name demonstrates that the Respondent's use is not legitimate.
The Complainant's June 3, 2010, e-mail to the Respondent requested the Respondent to transfer ownership of the Disputed Domain Name. Failure to positively respond to a complainant's efforts to make contact provides “strong support for a determination of ‘bad faith' registration and use.” Encyclopaedia Britannica v. Zucarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330 (June 7, 2000). For all of these reasons, the Disputed Domain Name should be found to have been registered and used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
- The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
- The Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Disputed Domain Name consists of the Complainant's PUBLIX registered mark and the generic word “pharmacy”. The addition of the generic word “pharmacy” reflecting the area of business in which the Complainant operates does not serve to distinguish the Disputed Domain Name from the Complainant's PUBLIX trade mark. As such the Disputed Domain Name is confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy.
B. Rights or Legitimate Interests
The Respondent has not filed a Response, does not appear to have any trade marks associated with PUBLIX, is not commonly known by this name and does not have any consent from the Complainant to use this name. Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Rules sets out non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including circumstances where, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location. It does appear that the Respondent has attempted to attract and cause confusion amongst Internet users between the Complainants' marks and goods and the pharmaceuticals offered on the site attached to the Disputed Domain Name for commercial gain.
The Panel notes that the Respondent has been found to have registered and used domain names in bad faith in other UDRP decisions and, therefore appears to be commonly engaged in the activities of registering domain names containing the trade marks of third parties for profit.
Accordingly, the Panel finds that the Disputed Domain Name has been registered and used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <publixpharmacy.org> be transferred to the Complainant.
Dated: July 24, 2010