WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Publix Asset Management Company v. Lin Yanxiao
Case No. DCO2015-0033
1. The Parties
The Complainant is Publix Asset Management Company of Lakeland, Florida, United States of America ("US"), represented by Thomas & LoCicero PL, US.
The Respondent is Lin Yanxiao of Guangzhou, Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <publix.co> is registered with Name.com LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 5, 2015. On October 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 5, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on October 14, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 4, 2015.
The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on November 16, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is the owner of US Trade Mark Registration No. 1,339,762 for the trade mark PUBLIX for class 42 retail grocery store services, filed on November 8, 1984 and registered on June 4, 1985. The trade mark registration records that the mark was first used in 1930.
Information provided by the Complainant as to its rights (beyond its registered trade mark in the US) is relatively sparse. The Complainant is also the owner of the domain name <publix.com>. It has owned this domain name since 1995. Information on the extract from the Complainant's website <publix.com> provided by the Complainant states that (as at July 25, 2006) Publix Super Markets are "the largest and fastest-growing employee-owned supermarket chain in the United States."
The disputed domain name was registered on July 20, 2010. It was transferred to the Respondent on January 23, 2015.
5. Parties' Contentions
A. Complainant
As to the requirement in paragraph 4(a)(i) of the Policy, the Complainant contends that the disputed domain name is identical to the Complainant's registered trade mark No. 1,339,762, as the addition of the Top-Level Domain ("TLD") ".co" does not distinguish the disputed domain name from that mark. This is because a number of previous UDRP decisions have determined that for the purposes of determining identity in UDRP proceedings, the TLD does not need to be considered.
As to the requirement in paragraph 4(a)(ii) of the Policy, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It contends that the Respondent's website purports to offer a "Publix Visitor Survey", but the Respondent has no authorization to conduct such a survey on behalf of the Complainant. The Complainant contends that when a visitor clicks to respond to the survey, the unauthorized survey leads to advertising for grocery-store products that are not sold through the Complainant's stores. The Complainant states that the Respondent's use of the disputed domain name is competitive and intended for commercial gain and as such is not a noncommercial or fair use.
As to the requirement in paragraph 4(a)(iii) of the Policy, the Complainant contends that the disputed domain name has been registered and is being used in bad faith. The Complainant contends that the PUBLIX mark is not a word in common use, nor is it identified with a legitimate business or activity apart from the business of the Complainant. The Complainant therefore contends that the Respondent has wrongfully and deliberately appropriated the Complainant's mark and combined it with a TLD to encourage direct Internet traffic to the disputed domain name based on a false association with the Complainant. As the disputed domain name includes the PUBLIX trade mark in its entirety, the Complainant argues that it is difficult to conceive of any use of the domain name that would not cause confusion, and the only reason for the Respondent to select such a domain name "is in order to profit from Complainant's marks and the associated goodwill." Further, the Respondent's WhoIs listing offers to sell the disputed domain name for USD 3,358. The Complainant contends this is more than the Respondent's out-of-pocket costs and further demonstrates bad faith.
In its Complaint, the Complainant states that the provision of an unauthorized survey which ultimately connects the user to "exclusive rewards" of "free trials" for those who agree to be billed in the future is evidence that the Respondent is intentionally attracting Internet users to its website for the commercial purpose of selling products, which is sufficient to establish bad faith under the Policy. The Complainant also contends that the fine print disclaimer on the website at the disputed domain name does not prevent consumers from being misled into thinking the Respondent is legitimately affiliated with the Complainant. This is because the disclaimer appears only after a consumer clicks on a pop-up box reading "Congratulations Publix Visitor!" In addition, the Complainant contends that the disclaimer does not overcome the initial interest confusion which attracted consumers to the website and does not prevent the Respondent from profiting from this confusion.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:
(i) That the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has established trade mark rights in US registered trade mark No. 1,339,762 PUBLIX in respect of grocery store services.
As the ".co" country code ccTLD ("ccTLD") present in the disputed domain name <publix.co> may be disregarded due to it being a technical requirement of registration, the Panel finds that the disputed domain name and the trade mark PUBLIX are identical.
The Panel accordingly finds that the disputed domain name is identical to a trade mark in which the Complainant has rights and finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
(i) That before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to a disputed domain name in connection with a bona fide offering of goods or services; or
(ii) That the Respondent has been commonly known by the disputed domain name, even if it had acquired no trade mark or service mark rights; or
(iii) That the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trade mark or service mark at issue.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.
The Complainant states, and the Panel accepts, that the Complainant has not authorized the Respondent to conduct a Publix survey. The Panel infers from the Complaint that the Complainant has not otherwise licensed or authorized the Respondent to use the PUBLIX trade mark in any way.
In the circumstances, the Panel finds that the Complainant has satisfied the burden of showing a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, and in the absence of any formal response from the Respondent, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trade mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or
(ii) That the Respondent has registered the disputed domain name in order to prevent the owner of the trade mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) That the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) That by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.
It is established that the transfer of a disputed domain name does amount to a new registration of that domain name (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 3.7). Therefore the transfer of the disputed domain name to the Respondent on January 23, 2015 is to be treated as a new registration.
The Panel is satisfied that the disputed domain name was registered and is being used in bad faith.
(a) The Complainant's trade mark is a distinctive one because of the use of "x" as the final letter. "Publix", although derived from "public" is not a term that any person would use descriptively. The Complainant's US trade mark is a long-standing mark.
(b) The Panel finds that at the time of the Respondent's acquisition of the disputed domain name and therefore registration, the Respondent must have been aware of the Complainant's existing website "www.publix.com". This arises for three reasons:
(i) First, the website hosted at the disputed domain name redirects to a survey purportedly for customers of the Complainant. It states:
"Congratulations Publix Visitor! You have been selected to participate in an anonymous survey about your experiences with Publix. At the end of the short 30-second survey, you will be offered an exclusive reward (worth at least $50) for providing us with valuable consumer data."
"Hi, my name is Alice Boyle and we have selected you to participate in a short 30-second survey about Publix. Please tell me about your experiences with Publix and in exchange for your valuable consumer data, we will offer you a few exclusive rewards worth at least $50 or more! Want to know what the rewards are for this week? Complete this survey to find out."
This material on the website (and nothing more) indicates that at the time of registration the Respondent was intending to encourage and divert Internet traffic to the site based on a false association with the Complainant.
(ii) Secondly, paragraph 2 of the UDRP puts a burden on registrants where it states "By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to use that … to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of a third party … it is your responsibility to determine whether your domain name infringes or violates someone else's rights." The most cursory search prior to the Respondent acquiring the disputed domain name would instantly reveal the Complainant and its website "wwwpublix.com".
(iii) Thirdly, a disclaimer on the website specifically refers to "Publix" the Complainant. This strongly indicates that the Respondent was well aware of the Complainant.
(c) As to use, the disputed domain name redirects to an unauthorized survey promoting goods that the Complainant does not sell in its stores. The Panel therefore finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's PUBLIX mark. The unauthorized survey ultimately connects the user to "exclusive rewards" of "free trials" for those who agreed to be billed in future after the trial period ends. This indicates that the Respondent is seeking to attract Internet users to his website for commercial gain.
(d) The Panel finds that the Respondent's disclaimer displayed at the footer of the website to which the disputed domain name redirects does not prevent a finding of bad faith. The disclaimer is at first obscured by a pop-up appearing on the website which reads "Congratulations Publix Visitor! You have been selected to participate in an anonymous survey about your experiences with Publix. At the end of the short 30-second survey, you will be offered an exclusive reward (worth at least $50) for providing us with valuable consumer data." In order to be able to read the disclaimer, the website visitor must click "Accept". Therefore by the time a visitor sees the disclaimer, the Respondent's objective of attracting visitors to the disputed domain name for commercial advantage, through use of the trade mark in the disputed domain name, will have been achieved as the visitor may go on to complete the survey and provide his or her billing information.
(e) The Panel notes that the Respondent's WhoIs listing was listing, at the date of complaint, the disputed domain name "for sale" at a price of USD 3,358. On its own, this would not be sufficient to establish bad faith registration and use. This is because the Panel is not prepared to find that this exceeds the Respondent's out of pocket costs for acquiring the disputed domain name, in the absence of any evidence as to the cost involved in acquiring the disputed domain name in January 2015. However, the Panel takes the fact that the disputed domain name is listed for sale into account in combination with the other factors discussed above, as suggesting bad faith registration and use.
(f) Finally, the Panel is entitled to draw inferences adverse to the Respondent as a result of the Respondent's failure to file any response to the Complaint.
Accordingly, the Panel finds that paragraph 4(a)(iii) is satisfied in favor of the Complainant.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <publix.co> be transferred to the Complainant.
Andrew Brown Q.C.
Sole Panelist
Date: November 24, 2015
