DECISION

Albertson's, Inc. v. For Sale or Lease a/k/a Eddie Jones

Claim Number: FA0208000123865

PARTIES

Complainant is Albertson's, Inc., Boise, ID (“Complainant”) represented by David J. Steele, of Christie, Parker & Hale LLP.  Respondent is Eddie Jones a/k/a For Sale or Lease, Burbank, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <oscodrugstore.com>, <oscosdrug.com>, and <save-onpharmacy.com>, registered with eNom, Inc.

PANEL

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

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 23, 2002; the Forum received a hard copy of the Complaint on August 26, 2002.

On August 29, 2002, eNom, Inc. confirmed by e-mail to the Forum that the domain names <oscodrugstore.com>, <oscosdrug.com>, and <save-onpharmacy.com> are registered with eNom, Inc. and that Respondent is the current registrant of the names.  eNom, Inc. has verified that Respondent is bound by the eNom, 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 August 29, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 18, 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@oscodrugstore.com, postmaster@oscosdrug.com, and postmaster@save-onpharmacy.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 October 7, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The <oscodrugstore.com> and <oscosdrug.com> domain names are confusingly similar to Complainant's OSCO and OSCO DRUG marks.

The <save-onpharmacy.com> domain name is confusingly similar to Complainant’s SAV-ON DRUGS mark.

Respondent has no rights or legitimate interests in the disputed domain names.

Respondent registered and used the disputed domain names in bad faith.

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Complainant has used the OSCO and OSCO DRUG marks in commerce since 1937, when it opened its first drug store.  Complainant operates over 533 drugs stores under the OSCO mark.  Complainant also uses websites extensively in relation to its drug retail business.  Complainant registered its OSCO mark with the United States Patent and Trademark Office as Registration Number 1,003,861.  Complainant also operates a website at <oscodrug.com> and <oscodrugs.com>.

Complainant has used the SAV-ON DRUGS mark since 1945.  Complainant operates over 400 drug stores under the SAV-ON DRUGS mark throughout the western United States.  Complainant spends millions of dollars in advertising to promote its SAV-ON DRUGS mark.  It also uses the domain names <sav-ondrugs.com> and <savon.com> to further promote its store and service customers.  Several million customers have accessed the <sav-ondrugs.com> domain name in search of information about Complainant.  Complainant currently has a trademark application pending in the United States Patent and Trademark Office for SAV-ON DRUGS (App. No. 74,652,534).

Respondent registered all of the disputed domain names on January 19, 2002.  Respondent is using the disputed domain names in order to divert Internet users to a search engine website.  Respondent has listed the domain names for sale by stating in its WHOIS information that all of the domain names are “For Sale or Lease.”

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 that it has rights in the OSCO mark through registration with the United States Patent and Trademark Office and continuous use.  Complainant has established its rights in the OSCO DRUGS and SAV-ON DRUGS marks through continuous and extensive use. The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the Complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy.  McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000).

Respondent’s <oscodrugstore.com> domain name is confusingly similar to Complainant’s OCSO and OSCO DRUGS marks because it incorporates the majority of both marks and merely adds that word “store” to the end.  The addition of a descriptive term such as “store” does not create a distinct mark capable of overcoming a claim of confusing similarity.  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

The <oscosdrug.com> domain name is confusingly similar to Complainant’s OSCO DRUG mark because it uses Complainant’s entire mark and merely deletes the “s” from the end and adds an “s” to the end of OSCO.  The omission of the letter “s” at the end of a mark in a domain name does not create a distinct mark capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis, nor does the addition of an “s” to a mark create any distinctive characteristic.  See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from Complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Nat’l Geographic Soc. v. Stoneybrook Inv., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to Complainant’s “National Geographic” mark).

The <save-onpharmacy.com> domain name is confusingly similar to Complainant’s common law SAV-ON DRUGS mark because the “save-on” portion is phonetically similar, and incorporates a common typing error (the added “e”).  The misspelling of a mark in a domain name does not create a distinct mark capable of overcoming a claim of confusing similarity.  See Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark); see also Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the Policy). Furthermore, the addition of a descriptive term such as “pharmacy” to replace “drugs” does not eradicate any potential confusion on the part of the consumer, because drugstores are often called pharmacies and, therefore, customers of Complainant will probably believe that words “drugs” and “pharmacy” are interchangeable.  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to come forward with a Response.  Therefore, the Panel is permitted to make reasonable inferences in favor of Complainant and accept Complainant’s allegations as true.  See 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); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”). 

Furthermore, based on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain names.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interest in the domain name because Respondent never submitted a Response nor provided the Panel with evidence to suggest otherwise).

Respondent is using all three of the disputed domain names in order to divert Internet users to a search engine website.  The use of Complainant’s mark in order to divert Internet users interested in Complainant to Respondent’s website is not considered to be in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”).

There is no evidence on record, and Respondent has not come forward with any evidence to show that it is commonly known as <oscodrugstore.com>, <oscosdrug.com>, or <save-onpharmacy.com>.  Therefore, Respondent has failed to establish that it has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

It can be inferred that Respondent registered the disputed domain names with the intent to sell its rights in the domain names because it put “For Sale or Lease” in its WHOIS information.  Registration of a domain name for the primary purpose of selling, renting or transferring the registration is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See Parfums Christain Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where Respondent’s WHOIS registration information contained the words, “This is domain name is for sale”); see also Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (finding “the manner in which the Respondent chose to identify itself and its administrative and billing contacts both conceals its identity and unmistakably conveys its intention, from the date of the registration, to sell rather than make any use of the disputed domain name”).

Furthermore, it can be inferred that Respondent it making a profit from the Internet users it is directing to its search engine website.  The use of domain names, confusingly similar to Complainant’s marks, in order to divert Internet users interested in Complainant to Respondent’s website for Respondent’s profit is evidence of bad faith use pursuant to Policy ¶ 4(b)(iv).  See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

Accordingly, it is Ordered that the domain names <oscodrugstore.com>, <oscosdrug.com>, and <save-onpharmacy.com> be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated: October 21, 2002.

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