DECISION

American Stores Company v. Henry Chan

Claim Number:  FA0306000161567

PARTIES

Complainant is American Stores Company, Boise, ID, (“Complainant”) represented by Gary J. Nelson, of Christie, Parker & Hale LLP.  Respondent is Henry Chan, Chai Wan, Hong Kong, China (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <jewelsosco.com>, registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com.

PANEL

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

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 4, 2003; the Forum received a hard copy of the Complaint on June 5, 2003.

On June 10, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by e-mail to the Forum that the domain name <jewelsosco.com> is registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com and that Respondent is the current registrant of the name. Iholdings.Com, Inc. d/b/a Dotregistrar.Com has verified that Respondent is bound by the Iholdings.Com, Inc. d/b/a Dotregistrar.Com 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 June 11, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 1, 2003 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@jewelsosco.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 July 10, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (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 makes the following assertions:

1. Respondent’s <jewelsosco.com> domain name is confusingly similar to Complainant’s JEWEL-OSCO mark.

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

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

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

FINDINGS

Since a merger in 1961, Complainant has used the JEWEL-OSCO mark in relation to providing goods and services through its food and drug combination stores.  Complainant has registered the JEWEL-OSCO mark through the U.S. Patent and Trademark Office (Reg. No. 2,128,535 – registered January 13, 1998). 

Complainant also owns and operates the <jewelosco.com> domain name in conjunction with its stores.

Respondent registered the <jewelsosco.com> domain name on April 10, 2003.  Respondent’s disputed domain name redirects Internet users to an advertisement and search engine website.  Also, Internet users who access Respondent’s disputed domain name encounter a series of “pop-up” windows that contain additional advertisements.

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 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 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 its rights in the JEWEL-OSCO mark through registration with the U.S. Patent and Trademark Office and through use in commerce.

Respondent’s <jewelsosco.com> domain name is confusingly similar to Complainant’s JEWEL-OSCO mark because the disputed domain name merely replaces the hyphen in Complainant’s mark with the letter “s.”  The Panel finds that Respondent’s disputed domain name is not sufficiently distinguishable from Complainant’s mark, and therefore is confusingly similar pursuant to Policy ¶ 4(a)(i).  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 Blue Cross & Blue Shield Ass’n v. InterActive Communications, Inc., D2000-0788 (WIPO Aug. 28, 2000) (finding that a domain name which merely adds the letter ‘s’ to Complainant’s mark is sufficiently similar to the mark to cause a likelihood of confusion among the users of the Complainant’s services and those who were to view a web site provided by the Respondent accessed through the contested domain name).

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

Rights or Legitimate Interests

Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain name.

Due to Respondent’s failure to dispute the allegations in the Complaint, the Panel chooses to presume that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  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 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).

Also, Complainant has submitted uncontested evidence that Respondent has used the goodwill associated with Complainant’s mark in an attempt to commercially benefit from such use.  Respondent has incorporated Complainant’s mark within the disputed domain name, which diverts Internet traffic to websites unassociated with Complainant.  The Panel chooses to presume that Respondent attempted to monetarily benefit from “kick-backs” provided by vendors whose websites were visited via links listed on Respondent’s disputed domain name.  Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> where Respondent was using these domain names to link to an advertising website); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).

Furthermore, the WHOIS information for the disputed domain name lists Respondent, Henry Chan as the registrant; however, it fails to establish Respondent as an “individual, business, or other organization” commonly known by the <jewelsosco.com> domain name.  Also, Respondent is not affiliated with Complainant and the record fails to establish that Respondent is authorized or licensed to register or use domain names or marks incorporating the JEWEL-OSCO mark.  Therefore, Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).

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

Registration and Use in Bad Faith

It can be inferred that Respondent had knowledge of Complainant’s JEWEL-OSCO mark because the mark has been used in interstate commerce since 1961, was registered with the U.S. Patent and Trademark Office, and Respondent’s disputed domain name incorporates Complainant’s mark.  Registration of a domain name, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Orange Glo Int’l v. Jeff Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”).

Also, Respondent registered the <jewelsosco.com> disputed domain name and incorporated Complainant’s mark with the intent to commercially benefit from the goodwill associated with Complainant’s mark.  The Panel presumes that Respondent attempted to monetarily benefit through redirecting Internet users to advertisement websites and receiving “kick-backs” from website vendors that received visitors through Respondent’s diversionary practice.  Respondent’s attempt to commercially benefit from Internet traffic confusion constitutes bad faith pursuant to Policy ¶ 4(b)(iv).  See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also 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).

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

DECISION

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

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

Judge Harold Kalina (Ret.), Panelist

Dated:  July 24, 2003

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