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Generic Top Level Domain Name (gTLD) Decisions |
Albertson's, Inc. v. Ginsberg and
Associates
Claim Number: FA0203000108062
PARTIES
Complainant
is Albertson's Inc., Boise, ID
(“Complainant”) represented by David J.
Steele, of Christie, Parker &
Hale LLP. Respondent is Ginsberg and Associates, West Hills,
CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <savoninsurance.com>,
registered with Network Solutions, 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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically
on March 28, 2002; the Forum received
a hard copy of the Complaint on April 1,
2002.
On
April 2, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <savoninsurance.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
April 2, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of April 22,
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@savoninsurance.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
May 2, 2002, pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed the Honorable
Charles K. McCotter, Jr.
(Ret.) 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
1.
The disputed domain name <savoninsurance.com>
is confusingly similar to
Complainant common law SAV-ON mark.
2.
Because Respondent has not made an active use of the website in connection with
the disputed domain name and since Respondent is
not commonly known as <savoninsurance.com>, Respondent has no rights or legitimate
interests to the disputed domain name.
3. Respondent’s constructive knowledge that
Complainant held rights to the SAV-ON mark and Respondent’s passive use of the
disputed
domain name are evidence that Respondent has registered and used <savoninsurance.com> in bad faith.
B.
Respondent
No
Response was submitted.
FINDINGS
Complainant and its predecessors have
been using the SAV-ON mark continuously for more than fifty-five years, for its
drug stores
and pharmacies. Complainant
is closely connected with the health care and health insurance industries. As a result of this extensive use, it has
generated tremendous goodwill and grown to almost 800 stores, including at
least 15 stores
within ten miles of Respondent’s home of West Hills,
California. Complainant is also the
registrant of the domain names <savon.com>, <sav‑ondrugs.com>,
<savonhealth.com>,
and <savonhealthinsurace.com>, whose web sites
provide further details on the goods and services offered by SAV-ON drug
stores.
Respondent registered <savoninsurance.com> April 6,
1999. Complainant has not authorized
Respondent to use its SAV-ON trademark.
According to the Complaint, Respondent has not made an active use of the
website associated with the disputed 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
By using the SAV-ON mark for the past
fifty-five years, and by using the mark in connection with around 800 stores in
the United States,
Complainant has established its rights to the SAV-ON
mark. It has been held that when a
party can establish that it has been using the mark for a long period of time
in connection with its
business, registration is not necessary to establish
that it has rights to the mark. See British
Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting
that the UDRP “does not distinguish between registered and unregistered
trademarks and service
marks in the context of abusive registration of domain
names” and applying the UDRP to “unregistered trademarks and service marks”);
see
also Sunkist Growers, Inc. v. S G
& Delmonte-Asia.com, D2001-0432 (WIPO May 22, 2001) (finding that the
domain names <sunkistgrowers.org> and <sunkistgrowers.net> are
identical
to Complainant’s common law SUNKIST GROWERS mark); see also Down East Enter. Inc. v. Countywide
Communications, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain
name <downeastmagazine.com> confusingly similar to Complainant’s
common
law mark DOWN EAST, THE MAGAZINE OF MAINE).
The disputed domain <savoninsurance.com> is confusingly similar to Complainant’s
SAV-ON mark. First, the omission of the
hyphen in the disputed domain name does not distinguish the domain name from
the mark. See Nat’l
Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June
19, 2000) (holding that the domain name <cspan.net>, which omitted the
hyphen from the trademark spelling,
C-SPAN, is confusingly similar to
Complainant's mark); see also Ritz-Carlton
Hotel Co. v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding
that removing a hyphen in the domain names is not sufficient to differentiate
the domain
names from the mark).
Second, the dominate term in the disputed domain name is “savon” and the
addition of the generic term “insurance” does not create
the distinction
necessary to overcome the confusing similarity between the disputed domain name
and Complainant’s mark. See Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of the
Complainant combined with a generic
word or term); see also 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). Finally, since Complainant’s SAV-ON mark is
closely connected with the health insurance industry, the confusing similarity
between
the mark and the disputed domain name becomes even more apparent. See Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13,
2000) (finding that the Respondent’s domain name <marriott-hotel.com> is
confusingly similar
to Complainant’s MARRIOTT mark); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the Respondent’s domain name combines the Complainant’s
mark
with a generic term that has an obvious relationship to the Complainant’s
business)
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent has not filed a Response. Thus, the Panel presumes that Respondent has
no rights or legitimate interests in <savoninsurance.com>.
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). Because a Response was not filed, the Panel
presumes that all allegations in the Complaint are true. See 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”).
Respondent has registered a domain name
that is confusingly similar to Complainant’s mark. According to Complainant, Respondent has not made an actual use
of the disputed domain name. Therefore,
the Panel finds that Respondent has not made a bona fide offering of goods and
services in connection with the disputed
domain name pursuant to Policy ¶
4(c)(i). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13,
2000) (finding no rights or legitimate interests where Respondent failed to
submit a Response to the Complaint
and had made no use of the domain name in
question); see also Vestel
Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, D2000-1244 (WIPO Nov.
11, 2000) (finding that “…merely registering the domain name is not sufficient
to establish rights or legitimate
interests for purposes of paragraph 4(a)(ii)
of the Policy”).
According to the evidence presented,
Respondent is not commonly known as <savoninsurance.com>
and thus does not have a right ior legitimate interest in the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no
rights or legitimate interest where Respondent was not commonly known by the
mark and
never applied for a license or permission from Complainant to use the
trademarked name); 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).
According to the Complaint, Respondent
has not made an actual use of the disputed domain name. Respondent has not answered the
Complaint. The Panel may presume that
Respondent is holding the disputed domain name passively. Respondent’s passive holding of the disputed
domain name does not demonstrate a legitimate, noncommercial or fair use pursuant
to
Policy ¶ 4(c)(iii). See Am. 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 Bloomberg
L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no
rights or legitimate interest can be found when Respondent fails to use
disputed domain names in any way).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Complainant uses its mark in connection
with at least fifteen drug stores within ten miles of Respondent’s
hometown. Based on the concentration of
stores near Respondent’s home address, it may be inferred that prior to
registering the disputed domain
name, Respondent either knew of Complainant’s
mark or should have known of Complainant’s mark. Thus, Respondent registered the disputed domain name in bad
faith. See Entrepreneur Media, Inc.
v. Smith, [2002] USCA9 115; 279
F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[ w]here an
alleged infringer chooses a mark he knows to be similar to another, one can
infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly
known mark at the time of registration).
Respondent’s passive holding of a domain
name that is confusingly similar to a mark that Respondent knew or should have
known was
connected with Complainant is evidence that Respondent has used the
disputed domain name in bad faith. 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 Alitalia –Linee Aeree
Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding
bad faith where the Respondent made no use of the domain name in question and
there are
no other indications that the Respondent could have registered and
used the domain name in question for any non-infringing purpose);
see also Body Shop Int’l PLC v. CPIC NET &
Hussain, D2000-1214 (Nov. 26, 2000) (finding bad faith where (1) Respondent
failed to use the domain name and (2) it is clear that Respondent
registered
the domain name as an opportunistic attempt to gain from the goodwill of the
Complainant).
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 <savoninsurance.com> domain name
be transferred from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: May 9, 2002
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