DECISION

Albertson's, Inc. v. Shinsegi, Inc.

Claim Number: FA0209000125224

PARTIES

Complainant is Albertson's, Inc., Boise, ID (“Complainant”) represented by David J. Steele, of Christie, Parker & Hale LLP.  Respondent is Shinsegi Inc. (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <albertsons.net>, registered with Hangang Systems.

PANEL

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

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 13, 2002; the Forum received a hard copy of the Complaint on September 18, 2002.

On September 16, 2002, Hangang Systems confirmed by e-mail to the Forum that the domain name <albertsons.net> is registered with Hangang Systems and that Respondent is the current registrant of the name. Hangang Systems has verified that Respondent is bound by the Hangang Systems 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 September 24, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 14, 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@albertsons.net 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 November 5, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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’s Submission makes the following assertions:

1. Respondent’s <albertsons.net> domain name is identical to Complainant’s registered ALBERTSONS mark.

2. Respondent does not have any rights or legitimate interests in the <albertsons.net> domain name.

3. Respondent registered and used the <albertsons.net> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Albertson's, Inc., is the holder of the trademark ALBERTSONS (U.S. Reg. No. 885,630) Complainant registered this mark on January 31, 1995 on the Principal Register of the United States Patent and Trademark Office (“USPTO”) and first used it in commerce in 1939. Complainant also holds numerous variations of this mark. Complainant is currently the second largest food-drug retailer in the United States, and uses its family of marks in conjunction with its combination food-drug stores. Complainant has also operated an online shopping and informational site related to its food-drug services at <albertsons.com> for nearly 11 years.

Respondent, Shinsegi, Inc., registered the <albertsons.net> domain name on November 24, 2000, and is not licensed or otherwise authorized to make any use of the ALBERTSONS mark for any purpose. Respondent has done nothing to develop the disputed domain name other than to advertise on its website that the domain name registration is for sale and to list contact information for anyone interested in purchasing it.

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 its ALBERTSONS mark through registration on the Principal Register of the USPTO as well as via continuous and widespread use of the mark worldwide.

Respondent’s <albertsons.net> domain name is identical to Complainant’s ALBERTSONS mark. The only difference between Respondent’s domain name and the registered mark of Complainant is the addition of the top-level domain “.net” after the mark. This minimal difference does not prevent a finding of identicality under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

Accordingly, the Panel finds that the <albertsons.net> domain name is identical to Complainant’s registered ALBERTSONS mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

The burden of proving a lack of rights or legitimate interests in a domain name rests initially upon Complainant. Under Policy ¶¶ 4(c)(i-iii), Respondent can rely on an “bona fide offering of goods or services” connected with the disputed domain name, the fact that it has been “commonly known by the domain name”, or that it is making a “legitimate noncommercial or fair use of the domain name” to demonstrate a right or legitimate interest in a domain name. If Complainant rebuts each of these elements, it has satisfied its burden by successfully addressing any of the specified claims Respondent could make under Policy ¶¶ 4(c)(i-iii), therefore shifting the burden to Respondent. 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).

It is neither a bona fide offering of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii) when the holder of a domain name that is identical to an established mark passively holds the domain name. See Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or legitimate interests where “Respondent registered the domain name and did nothing with it”); see also Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name).

Respondent has made no use of its domain name for nearly two years except to advertise the domain name registration for sale. This is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).

Respondent also is not commonly known by the name ALBERTSONS or <albertsons.net>. According to its contact information, Respondent is known by the name Shinsegi, Inc. Furthermore, Complainant has not given Respondent permission or consent to use its ALBERTSONS mark, and Respondent’s registration of the disputed domain name occurred decades after Complainant initially registered its mark and began using it in commerce. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in its domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered and used the disputed domain name in bad faith. While Policy paragraph 4(b) illustrates four examples that evidence bad faith, this list is not exhaustive. SeeCellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in ¶4 (b), does not mean that the domain names at issue were not registered in and are not being used in bad faith”).

One example of conduct evidencing bad faith use and registration not enumerated in the Policy is the passive holding of a domain name. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).

Respondent did nothing to develop the disputed domain name for nearly two years. As Respondent submitted no Response to the Complaint, the Panel concludes that Respondent has no ultimate plan to develop the website, and infers that Respondent’s registration and passive use of the disputed domain name constitutes bad faith. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint); see also Hewlett-Packard Co. v. Martineau, FA 95359 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent’s failure to submit an assertion of good faith intent to use the domain name, in addition to the passive holding of the domain name, reveal that Respondent registered and uses the domain name in bad faith).

Accordingly, the Panel finds that Respondent both registered and used its domain name in bad faith, and Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

Accordingly, it is Ordered that the <albertsons.net> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated: November 11, 2002

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