DECISION

Albertson's, Inc. and Albertsons Employees Federal Credit Union v. Modern Limited - Cayman Web Development

Claim Number: FA0308000178222

PARTIES

Complainants are Albertson's, Inc. and Albertsons Employees Federal Credit Union Boise, ID (“Complainants”) represented by Gary J. Nelson of Christie Parker & Hale LLP. Respondent is Modern Limited - Cayman Web Development, George Town, Grand Cayman (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <albertsonscreditunion.com> registered with Address Creation.

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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainants submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 1, 2003; the Forum received a hard copy of the Complaint on August 1, 2003.

On August 11, 2003, Address Creation confirmed by e-mail to the Forum that the domain name <albertsonscreditunion.com> is registered with Address Creation and that Respondent is the current registrant of the name. Address Creation has verified that Respondent is bound by the Address Creation 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 August 12, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 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@albertsonscreditunion.com by e-mail.

On August 12, 2003, in response to the Forum’s service of the Complaint on Respondent, the Forum received an e-mail that stated, in its entirety, “We have no use for this domain and it was purchased in an automated system. You can have the domain.” This informal Response raised no substantive claim recognized by the Policy.

Having received no formal 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 September 29,2003, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachin 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 formal Response from Respondent.

RELIEF SOUGHT

Complainants request that the domain name be transferred from Respondent to Complainant, Albertsons Employees Federal Credit Union.

PARTIES' CONTENTIONS

A.  Complainants make the following assertions:

1. Respondent’s <albertsonscreditunion.com> domain name is confusingly similar to Complainants’ ALBERTSONS mark.

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

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

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

FINDINGS

Complainants have produced evidence of a number of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ALBERTSONS mark, including Reg. No. 885,630 (registered on February 3, 1970) related to retail grocery store services.

Complainant, Albertsons Employees Federal Credit Union, has been using the ALBERTSONS service mark for the operation of a credit union since 1965 under license from Complainant, Albertson’s, Inc.

Respondent registered the <albertsonscreditunion.com> domain name on April 15, 2003. Respondent is using the disputed domain name to redirect Internet traffic to a commercial website, which features links to a variety of different websites.

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 Complainants 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

Complainants have established rights in the ALBERTSONS mark through registration with the USPTO. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Complainants contend that Respondent’s <albertsonscreditunion.com> domain name is confusingly similar to Complainants’ ALBERTSONS mark because the disputed domain name appropriates Complainants’ entire mark and adds the generic or descriptive terms “credit” and “union” to Complainants’ mark. The addition of these generic or descriptive terms does not serve to vitiate the confusing similarity between the domain name and the mark because the terms “credit” and “union” directly relate to one of the services offered by Complainant, Albertsons Employees Federal Credit Union, through a license arrangement with Complainant, Albertson’s, Inc. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark).

The Panel finds that Complainant has demonstrated Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has failed to rebut the allegations contained in Complainants’ submission. Therefore, the Panel accepts all reasonable allegations and inferences in the Complaint as true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); 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).

Moreover, based on Respondent’s failure to contest Complainants’ allegations, the Panel presumes that Respondent lacks any rights to or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See 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); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a Response or provided the Panel with evidence to suggest otherwise).

Respondent is using the <albertsonscreditunion.com> domain name to divert Internet traffic to a website that offers links to commercial websites in a variety of fields. Respondent’s diversionary use of the disputed domain name to redirect Internet users to commercial websites represents 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 WeddingChannel.com Inc. v. Vasiliev a/k/a NA and Free Domains Parking, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that Respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to Complainant’s mark, websites where Respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Disney Enterss, Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum March 17, 2003) (finding that Respondent’s diversionary use of Complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).

Furthermore, after being served with the Complaint, Respondent, via e-mail, indicated that it had no use for the <albertsonscreditunion.com> domain name and would be willing to transfer the domain name to Complainant. Respondent’s willingness to transfer the disputed domain name indicates Respondent has no rights to or legitimate interests in the domain name. See Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent’s willingness to transfer the domain name at issue indicates that it has no rights or legitimate interests in the domain name in question); see also Land O’ Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding that Respondent’s willingness to transfer upon notification of the Complaint is evidence of its lack of legitimate interests or rights).

Respondent has presented no proof and there is no evidence in the record that suggests that Respondent is commonly known by ALBERTSONS CREDIT UNION or <albertsonscreditunion.com>. Thus, the Panel concludes that Respondent has failed to establish any rights to or legitimate interests in the disputed domain name in accordance with Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); 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 Complainant has demonstrated Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s use of the <albertsonscreditunion.com> domain name to divert Internet traffic to a search engine featuring commercial websites suggests that Respondent profits from its use of a domain name confusingly similar to Complainant’s mark. Respondent’s use indicates that Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Kmart v. Khan, 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)).

Moreover, Respondent has volunteered to transfer the <albertsonscreditunion.com> domain name to Complainant. Respondent’s offer, after being served with the present Complaint, suggests that the disputed domain name was registered and used in bad faith. See Global Media Group, Ltd. v. Kruzicevic, FA 96558 (Nat. Arb. Forum Mar. 7, 2001) (finding Respondent’s failure to address Complainant’s allegations coupled with its willingness to transfer the names is evidence of bad faith registration and use); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that Respondent’s failure to submit a formal Response combined with its agreement at the onset of the Complaint to transfer the disputed names satisfies all the requirements of  4(a)).

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

DECISION

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

Accordingly, it is Ordered that the <albertsonscreditunion.com> domain name be TRANSFERRED from Respondent to Complainant, Albertsons Employees Federal Credit Union.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  September 30, 2003

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