DECISION

Albertson's Inc v. RXFILLS.NET

Claim Number: FA0201000103576

PARTIES

Complainant is Albertson’s, Inc., Boise, ID (“Complainant”) represented by David J. Steele, of Christie, Parker & Hale, LLP.  Respondent is RXFILLS.NET, Omaha, NE (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <albertsonsrx.com>, registered with Network Solutions, Inc.

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 January 4, 2002; the Forum received a hard copy of the Complaint on January 9, 2002.

On January 11, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <albertsonsrx.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 January 11, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 31, 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@albertsonsrx.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 February 11, 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

The disputed domain name <albertsonsrx.com> is confusingly similar to Complainant’s registered ALBERTSONS mark.

Respondent has no rights or legitimate interests in respect of the disputed domain name.

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

B. Respondent

Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant registered the ALBERTSONS service mark on the Principal register of the United States Patent and Trademark Office as Registration No. 885,630 on February 3, 1970 and has used it in connection with retail grocery store services since 1939.  Complainant has continuously used the mark in commerce in association with its combination food-drug stores since at least 1969.

Complainant operates pharmacies in many of its retail stores.  Complainant currently owns six retail stores in Respondent’s city of residence under the ALBERTSONS mark.

Respondent registered the disputed domain name on July 3, 2000, and has not linked the name to an active web server nor made any other apparent use of the domain name.

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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the 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 its rights in the ALBERTSONS mark through registration with the U.S. Patent and Trademark Office.

The disputed domain name is confusingly similar to Complainant’s mark, as it merely adds the letters “rx” to the mark.  The added letters do not defeat a claim of confusing similarity, but rather, work to increase confusion as they correspond to Complainant’s line of business.  See 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); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combined the Complainant’s mark with a generic term that had an obvious relationship to the Complainant’s business).

The inclusion of “.com” in the disputed domain name has no bearing on the confusingly similar inquiry as generic top-level domain names such as “.com” or “.net” are required in domain names.  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 Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark).

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

Rights or Legitimate Interests

Complainant has established its rights to and interests in the ALBERTSONS mark.  Because Respondent has not submitted a Response in this proceeding, the Panel may presume it has no such rights or interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

There is no evidence to suggest that Respondent is using or plans to use the domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii), or that Respondent is using the domain name for a legitimate noncommercial or fair purpose pursuant to Policy ¶ 4(c)(iii).  See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

The fact that Respondent has made no use of the domain name for approximately one and one-half years further suggests it has no rights or interests in the name.  See American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where Respondent made no use of the infringing domain names).

The Panel thus finds that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

In determining whether the Respondent has registered and used a domain name in bad faith, the Panel is not limited to the evidence enumerated in Policy ¶ 4(b).  See Cellular 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 Educational Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “[i]ndicates that its listing of bad faith factors is without limitation”).

Bad faith may be inferred from Respondent’s intentional registration of a domain name that so closely reflected Complainant’s well known mark.  See Singapore Airlines Ltd v. P & P Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000) (“The domain name <singaporeairlines.com> is so obviously connected with a well-known airline that its very registration and use by someone with no connection to the airline suggests opportunistic bad faith”); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark; thus, Respondent registered the domain name in bad faith).

Evidence of bad faith registration and use is also found in Respondent’s passive holding of the domain name for a period of approximately one and one-half years.  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

Accordingly, 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 should be hereby granted.

Accordingly, it is Ordered that the <albertsonsrx.com> domain name be transferred from Respondent to Complainant.

Sandra Franklin, Panelist

Dated: February 20, 2002

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