Generic Top Level Domain Name (gTLD) Decisions

DECISION

The Stop & Shop Supermarket Company v. Ian Anderson

Claim Number: FA0211000133637

PARTIES

Complainant is The Stop & Shop Supermarket Company, Quincy, MA (“Complainant”) represented by Victor H. Polk, Jr., of Bingham McCutchen LLP. Respondent is Ian Anderson, New Bedford, MA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <stopandshopsucks.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 November 14, 2002; the Forum received a hard copy of the Complaint on November 15, 2002.

On November 20, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <stopandshopsucks.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 November 21, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 11, 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@stopandshopsucks.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 December 31, 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 makes the following assertions:

Respondent’s <stopandshopsucks.com> domain name is confusingly similar to Complainant’s registered STOP & SHOP mark.

Respondent does not have any rights or legitimate interests in the <stopandshopsucks.com> domain name.

Respondent registered and used the <stopandshopsucks.com> domain name in bad faith.

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

FINDINGS

Complainant, The Stop & Shop Supermarket Company, holds numerous registrations for the STOP & SHOP mark (e.g. U.S. Reg. Nos. 1,529,879; 2,056,169; and 2,278,312). Complainant holds many additional trademark registrations incorporating the STOP & SHOP mark. Complainant also maintains a presence on the Internet at <stopandshop.com>.

Respondent, Ian Anderson, registered the <stopandshopsucks.com> domain name on September 3, 2002. Respondent, a former employee of Complainant, is not licensed or authorized to use the STOP & SHOP family of marks for any purpose. Since its registration of the disputed domain name, Respondent’s website has undergone various changes, explained below.

As of November 7, 2002, the disputed domain name redirected Internet users to <stopandshop.netfirms.com>, which posted a statement by Respondent that it would be selling the domain name registration for <stopandshopsucks.com> for $20,000 in an auction on <ebay.com>, starting December 15, 2002. In addition to this statement, Respondent also posted confidential information gathered during the course of a loss prevention series sponsored by Complainant, advising the public on how to steal from Complainant’s stores. This statement included, inter alia:

1. The location of security cameras within the stores.

2. The schedules of security staff.

3. Tips for avoiding paying for items or obtaining reimbursement for items through fraud and deceit.

4. Advice as to the items which would be most easy to steal from the stores.

                 

The website further stated that it would soon begin to sell merchandise containing variations of the STOP & SHOP logo. The website also made false and defamatory statements about employees of Complainant.

On November 7, 2002, Complainant sent a cease-and-desist letter to Respondent, which prompted a modification of the disputed domain name. The above mentioned content was replaced with an annotated version of Complainant’s cease-and-desist letter, as well as a “Quote from Personal Journal,” which stated that among the options available to Respondent were the opportunities to:

1. Transfer the domain name registration to a friend, with all previous content intact, whereupon any consequent cease-and-desist letter would simply result in a further transfer to another friend.

2. Auction the domain name registration at <ebay.com>, “which means that an unknown buyer somewhere in the world can purchase it and put up the site.”

3. Sell the domain name registration to Ahold Financial, the parent company of Complainant, so that “[Complainant would] never have to worry about StopandShopsucks.com again.”

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 the STOP & SHOP mark through registration on the Principal Register of the United States Patent and Trademark Office.

Respondent’s <stopandshopsucks.com> domain name is confusingly similar to Complainant’s registered STOP & SHOP mark. The only difference between Complainant’s mark and the disputed domain name is the addition of the top-level domain “.com,” the replacement of the ampersand in Complainant’s mark with the word “and,” and the addition of the word “sucks” to Complainant’s mark. A top-level domain is a required feature for any Uniform Resource Locator (“URL”) and ampersands cannot be reproduced in a URL, so these alterations are irrelevant for purposes of determining confusing similarity between a domain name and a mark in which Complainant has rights. See 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); see also 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 Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to Complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL).

Respondent’s addition of the word “sucks” to Complainant’s mark also fails to create a distinction capable of overcoming any confusing similarity. The Internet is a forum that reaches a worldwide audience, many of which do not speak the English language; for those Internet users, the word “sucks” would not sufficiently eliminate any confusion between Complainant’s mark and the disputed domain name. The fact that any attempt by Internet users to find Complainant via a search engine will also turn up the disputed domain name adds an additional layer of confusion to the similarity between Complainant’s mark and Respondent’s domain name. See ADT Services AG v. ADT Sucks.com, D2001-0213 (WIPO Apr. 23, 2001) (exploring the difference of opinion among Panels on "sucks" domain name disputes and concluding that use of the "sucks" suffix does not defeat Complainant's confusing similarity argument); see also Cabela’s Inc. v. Cupcake Patrol, FA 95080 (Nat. Arb. Forum Aug. 29, 2000) (finding that Complainant, owner of the Federally registered trademark ‘Cabela’s,’ and user of the domain name <cabelas.com> was entitled to relief under UDRP against Respondent for the bad faith registration and use of the domain name <cabelassucks.com> because “by using Complainant’s marks in its domain names, Respondent makes it likely that Internet users entering "Cabela’s" into a search engine will find <cabelassucks.com> in addition to Complainant’s site <cabelas.com>. Respondent’s domain name is sufficiently similar to Complainant’s marks that the search engine results will confusingly list Respondent’s domain name when searching for Complainant’s mark).

Accordingly, the Panel finds that the <stopandshopsucks.com> domain name is confusingly similar to Complainant’s STOP & SHOP mark and Policy ¶ 4(a)(i) is satisfied.

Rights or Legitimate Interests

Complainant can meet is burden of showing that Respondent has no rights or legitimate interests in the disputed domain names through a showing that the elements of the Policy outlined in Policy ¶ 4(c)(i)-(iii) are inapplicable to Respondent. At that point, the burden will shift to Respondent to rebut Complainant’s allegations, and without a response to rely upon, the result will be a finding for Complainant. 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 G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where a Complainant has asserted that Respondent has no rights or legitimate interests in respect of the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).

Through its lack of response to the Complaint, Respondent not only fails to meet its burden, but concurrently makes an affirmative gesture that it has no rights or legitimate interests in the disputed domain names. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

In the absence of a Response, all reasonable and substantiated facts alleged by Complainant will be accepted as true by Panel, as well as all reasonable inferences arising from those facts. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also 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).

In the present dispute, the Panel infers that Respondent registered the <stopandshopsucks.com> domain name with the ultimate intent of selling the domain name registration to Complainant. Complainant alleges that Respondent designed the website content “to be as offensive as possible in an attempt to coerce Complainant into purchasing the domain name [registration] at a profit to Respondent,” and the Panel agrees. Respondent’s posting of confidential information on its website, inclusion of defamatory statements about employees of Complainant, and the offensive nature of the domain name itself, combined to create a situation where Complainant was compelled to purchase the domain name. While Respondent’s activities alone were enough to deny it the protections of Policy ¶ 4(c)(i) and (iii), its subsequent activities confirm that it is not making a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name.

After the above mentioned material was posted on the website, Respondent updated the domain name to note that, of three possible uses for the domain name, one was to sell the registration to Complainant’s parent company (previously offered for sale at an asking price of around $20,000). One of the other “possible uses” listed was no more than a threat to commence a process of “cyberflying,” where a registrant repeatedly transfers a domain name registration in order to prevent a trademark holder from being able to protect or reflect its mark on the Internet. The third “possible use” for Respondent’s domain name implied transfer of the domain name registration to a competitor of Complainant. Registering a domain name in order to attempt to coerce a Complainant into purchasing the domain name registration does not evidence a circumstance encompassed by Policy ¶ 4(c)(i) or (iii). See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where Respondent registered the domain name with the intention of selling its rights); see also Kinko’s Inc. v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27, 2000) (finding that Respondent has no rights or legitimate interests in the domain name where it appeared that the domain name was registered for ultimate use by Complainant).

Respondent’s WHOIS information lists itself as “Ian Anderson.” In light of Respondent’s previous employment relationship with Complainant, and Respondent’s lack of response, the Panel infers that Respondent is not “commonly known by” STOPANDSHOPSUCKS or  <stopandshopsucks.com>, and Policy ¶ 4(c)(ii) is likewise inapplicable to Respondent. See Vestel Elektronik Sanayi ve Ticaret AS v. 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”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

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

Registration and Use in Bad Faith

In determining whether a domain name was registered and used in bad faith, the Panel will assess all of the reasonable and substantiated facts alleged by Complainant, as well as all reasonable inferences permitted by those facts in coming to its conclusion. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).

The circumstances of this dispute indicate that Respondent registered its domain name for the primary purpose of selling the domain name registration to either Complainant or a competitor of Complainant. Respondent’s use of the domain name permits the inference that the website’s content was intended to coerce Complainant into purchasing the domain name registration. Respondent’s stated intent to auction the domain name registration for at least $20,000, and its subsequent statement that it was willing to either sell the registration to “an unknown buyer somewhere in the world” or the parent company of Complainant attest to the conclusion that sale of the registration was Respondent’s ultimate goal when acquiring the <stopandshopsucks.com> domain name. This activity runs afoul of Policy ¶ 4(b)(i), and evidences bad faith use and registration of the domain name. See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith based on the apparent willingness of the Respondent to sell the domain name in issue from the outset, albeit not at a price reflecting only the costs of registering and maintaining the name); see also Ingram Micro Inc v. Noton Inc., D2001-0124 (WIPO Mar. 6, 2001) (finding bad faith registration and use where Respondent attempted to blackmail Complainant into buying the disputed domain names with threats of exposure to the media and adverse publicity to Complainant’s employees and customers).

Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith, and Policy ¶ 4(a)(iii) is 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 <stopandshopsucks.com> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated: January 8, 2003

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