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Generic Top Level Domain Name (gTLD) Decisions |
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Giant Brands, Inc. v. Michael Jeffress
Case No. D2000-1421
1. The Parties
The Complainant is Giant Brands, Inc., a corporation organized under the laws of the State of Delaware, United States of America, having its principal place of business at Landover, Maryland, United States of America. The Respondent is Mike Jeffress, an individual with an address in Harrisburg, Pennsylvania, United States of America.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is <giantfoods.com>, which domain name is registered with Network Solutions Inc. ("NSI"), a registrar based in the State of Virginia, United States of America.
3. Procedural History
A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on October 18, 2000, in electronic form. The "hard copy" version of the Complaint was received by the WIPO Center on October 25, 2000. WIPO Center acknowledged receipt of the Complaint on October 24.
On October 24, 2000, a Request for Registrar Verification was transmitted to NSI requesting it to: (1) confirm that a copy of the Complaint was sent to NSI by the Complainant; (2) confirm that the domain name at in issue is registered with NSI; (3) confirm that the person identified as the Respondent is the current registrant of the domain name; (4) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar’s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (5) confirm that the Uniform Domain Name Dispute Resolution Policy ("Policy") applies to the domain name at issue; and (6) indicate the current status of the domain name at issue.
In an email on October 27, 2000, NSI confirmed that the domain name is registered with NSI and that the Respondent was the current registrant of the name. NSI also forwarded the requested Whois details, as well as confirming that: (1) NSI received a copy of the Complaint from the Complainant; (2) that NSI's Rev. 5.0. Service Agreement was in effect and was applicable to the domain name.
A Formal Requirements Compliance Checklist was initiated by the assigned WIPO Center Case Administrator and completed on November 7, 2000. The Panelist has independently reviewed the Requirements and agrees with the assessment of the WIPO Center Case Administrator that the Complainant is in formal compliance with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules"). The required fees for a single-member Panel were paid by the Complainant on time and in the required amount.
No formal deficiencies having been recorded, on November 8, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of November 27, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in NSI’s Whois confirmation, and by post/courier to the indicated postal address. Having reviewed the communications records in the case file, the Panelist finds that the WIPO Center has discharged its responsibility under Paragraph 2(a), Rules, "to employ reasonably available means calculated to achieve actual notice to Respondent."
On November 30, 2000, having received no Response from the designated Respondent, the WIPO Center transmitted to the parties a Notification of Respondent Default using the same contact details and methods as were used for the Commencement Notification.
On December 7, 2000, the WIPO Center invited Richard Allan Horning to serve as the Sole Panelist in Case No. D2000-1421, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence. Richard Allan Horning’s Statement of Acceptance and Declaration of Impartiality and Independence was received on December 7, 2000. On December 8, 2000, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Richard Allan Horning was formally appointed as the Sole Panelist. The Projected Decision Date was December 21, 2000.
The Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Policy, Rules and WIPO Supplemental Rules. The Panelist shall issue his Decision based on the Complaint, the Policy, the Rules, the WIPO Supplemental Rules, and without the benefit of any Response from Respondent.
4. Factual Background
Complainant is the owner of record of various U.S. trademarks, which it has licensed to Giant Food Inc for use in connection with the operation supermarket services and private label food products since 1936. The Complainant has provided evidence of the registration of the following marks, which have been adopted and used in this regard:
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A. GIANT AND G | ||
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Registration Number: Goods & Services: First Use: Goods & Services: First Use: Goods & Services: First Use: Goods & Services: First Use: Goods & Services: First Use: Goods & Services: First Use: |
US PTO 1,085,784 Class 21, for inter alia metallic buckets, plastic fruit storage bags, paper plates and drinking cups. January, 1965 Class 16, for inter alia cleaning and toilet tissues, paper towels and napkins, plastic wrapping film and wax paper August 31, 1959 Class 38, for inter alia periodical publications, press releases, corporate and stockholder reports and directories. June 1968 Class 42, for inter alia restaurant and catering services. February 12, 1964 Class 35, for inter alia retail, grocery, supermarket, delicatessen, bakery, department store, and general merchandising, pharmacy and drugstore services. February 12, 1964 Class 40, for inter alia photographic processing services. February 19, 1969 | |
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B. |
SUPER GIANT |
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Registration Number: Goods & Services: First Use: Goods & Services: First Use: Goods & Services: First Use: Goods & Services: First Use: |
US PTO 1,085,787 Class 42, for inter alia prescription lens grinding and eyeglass fitting services May 19, 1958 Class 35, for inter alia retail supermarket and department store, pharmacy and drug store services May 19, 1958 Class 37, for inter alia laundry, dry cleaning, automobile service station, jewelry and watch repair, shoe repair, eyeglass repair, appliance repair, installation of carpeting and custom making of draperies services May 19, 1958 Class 40, for inter alia finishing services May 19, 1958 |
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C. |
GIANT RX PHARMACIES [DESIGN] |
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Registration Number: Goods & Services: First Use: |
US PTO 1,129,400 Class 42, for inter alia retail pharmacy and drug store services. January 29, 1966 | |
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D. |
GIANT LEAN |
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Registration Number: Goods & Services: First Use: |
US PTO 1,176,399 Class 29, for inter alia fresh meats and meat products February 17, 1975 | |
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E. |
GIANT G |
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Registration Number Goods & Services: First Use: |
US PTO 1,337,159 Class 36, for inter alia financial services namely automated teller machine services August 25, 1984 | |
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F. |
GIANT RX DISCOUNT DRUG |
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Registration Number Goods & Services: First Use: |
US PTO 1,348,729 Class 42, for inter alia retail pharmacy and drug store services June 24, 1984 | |
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G. |
GIANT |
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Registration Number: Goods & Services: First Use: |
US PTO 1,406,293 Class 42, for inter alia retail supermarket services February 6, 1936 | |
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H. |
GIANT FOOD |
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Registration Number: Goods & Services: First Use: |
US PTO 1,078,672 Class 35, for inter alia retail grocery, supermarket and general merchandising store services February 5, 1936 | |
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I. |
GIANT G [LOGO] |
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Registration Number: Goods & Services: First Use: |
US PTO 2,032,086 Class 36, for inter alia credit card services March 13, 1996 | |
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J. |
GIANT G THAT'S MY GIANT [LOGO] |
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Registration Number: Goods & Services: First Use: |
US PTO 2,182,027 Class 25, for inter alia clothing, namely, caps, hats, shirts, sweatshirts and T-shirts September 9, 1996 | |
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K. |
GIANT FOOD & DRUG |
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Registration Number: Goods & Services: First Use: |
US PTO 2,182,028 Class 25, for inter alia clothing, namely, caps, hats, shirts, sweatshirts and T-Shirts September 9, 1996 | |
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L. |
GIANT G PHARMACY |
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Registration Number: Goods & Services: First Use: |
US PTO 2,319,083 Class 35, for inter alia retail pharmacy and drug store services September 13, 1998 | |
See Complaint, Annexes C, D.
The Complainant registered the domain name <giantfoods.com> on September 8, 1998. See Complaint, Annex A.
At the time of the initiation of the proceedings the giantfoods.com website as constructed by Respondent resolved to a page stating "You have reached the future website of giantfoods.com". See Complaint, Annex E.
5. Parties’ Contentions
A. Complainant
Complainant contends that Respondent has registered a domain name which is nearly identical to and confusingly similar to the service marks and trademarks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
B. Respondent
Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panelist as to the principles the Panelist is to use in determining the dispute: "A Panel shall 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."
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and used in bad faith.
The domain name at issue is either identical (Hewlett-Packard Company v. Cupcake City, NAF Case No. NAF0002000093562; America Online, Inc.v. Avrasya Yayincilik Danismanlik Ltd., NAF Case No. FA0002000093679) or confusingly similar (Marriott International, Inc. v. John Marriot, NAF Case No. FA 0002000094737; Identigene, Inc. v. Genetest Laboratories, WIPO Case No. D2000-1100; Seiko Epson Corporation v. Distribution Purchasing & Logistics Corp., NAF Case 0003000094219) to Complainant's mark.
Complainant has alleged and Respondent has failed to deny that Respondent has no legitimate interests in respect of the domain name at issue. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-007; Bronson Plc v. Unimetal Sanayai ve Tic. A.S., WIPO Case No. D2000-0011.
The question thus arises whether the domain name at issue has been registered and is being used in bad faith. Paragraph 4.b of the Policy sets forth "in particular but without limitation" circumstances which "shall be evidence of registration and use of a domain name in bad faith." Those circumstances are:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(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.
Complainant has alleged and the Panelist finds that Respondent's use of the domain name at issue, to resolve to a web site where no services are offered to Internet users but where the name <giantfoods.com> is prominently displayed with a tacit invitation to return, is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services to be offered at the site in the future. The use of the domain name in this regard tends to reflect poorly on Complainant and the goods and services associated with its marks.
Giant Foods has been in business since 1936, and its stores and products are widely known in the area where Respondent is located. Indeed, the record before the Panelist indicates that there are four Giant stores operating in the Harrisburg, PA area where Respondent resides. These facts, coupled with the long history of operation of Complainant and its predecessors-in-interest, and the multiplicity of registered marks in numerous classes all featuring the word GIANT and many with the word FOOD as part of the word or design mark, suggest that Respondent was or ought to have been aware of Complainant's rights.
These facts constitute evidence of bad faith registration and use under the Policy. Policy, Paragraph 4(b)(iv). InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076; America Online Inc. v. Cyber Network LLP, WIPO Case No. D2000-0977.
7. Decision
For all of the foregoing reasons, the Panelist decides that the domain name registered by Respondent is identical or confusingly similar to the trademarks and service marks in which the Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondent's domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4.i of the Policy, the Panelist requires that the registration of the domain name <giantfoods.com> be transferred to the Complainant.
Richard Allan Horning
Sole Panelist
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