SUPERVALU INC. v. Xedoc Holding SA
Claim Number: FA0802001142605
Complainant is SUPERVALU
INC. (“Complainant”), represented by William Schultz, of Merchant & Gould,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shoppers.com>, registered with Scoopdomain.ca Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 5, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 6, 2008.
On February 6, 2008, Scoopdomain.ca Inc. confirmed by e-mail to the National Arbitration Forum that the <shoppers.com> domain name is registered with Scoopdomain.ca Inc. and that the Respondent is the current registrant of the name. Scoopdomain.ca Inc. has verified that Respondent is bound by the Scoopdomain.ca 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 February 14, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 5, 2008 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on March 5, 2008.
On March 10, 2008, Complainant submitted an Additional Submission with the Forum that was received and determined to be complete.
On March 17, 2008, an Additional Submission was received from Respondent, in a timely manner.
On March 20, 2008, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed
Complainant requests that the domain name be transferred from Respondent to Complainant.
Although Respondent’s electronic submission was received in a timely manner, we are advised by the Forum that Respondent’s hard copy was received after the March 5, 2008 deadline as required by ICANN Rule 5. Therefore the Panel has sole discretion as to the amount of weight given to the Response. See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the response is solely in the discretion of the panelist). The Panel has decided to accept and consider the response. See Bd. of Governors of the Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a panel may consider a response which was one day late, and received before a panelist was appointed and any consideration made); see also Gaiam, Inc. v. Nielsen, FA 112469 (Nat. Arb. Forum July 2, 2002) (“In the interest of having claims decided on the merits and not by default and because Complainant has not been prejudiced in the presentation of its case by the late submission, Respondent’s opposition documents are accepted as timely.”).
Complainant has a principal place
of business in
Complainant, through its subsidiary SFW Licensing Corp., is the owner of trademarks and has invested substantial sums of money in developing and marketing its products and services under its SHOPPERS family of marks and has developed substantial goodwill and customer loyalty under said mark through more than twenty-seven (27) years of continuous use of SHOPPERS in the relevant retail grocery, pharmacy and distribution services industry.
Complainant’s established trademark rights in its SHOPPERS Marks predate Respondent’s registration of the domain name <shoppers.com>. As established above, Complainant has continuously used its SHOPPERS Marks since at least as early as 1980. Respondent did not obtain the domain name <shoppers.com> until February 5, 2008, over 27 years after Complainant’s first use. Moreover, at the time Complainant initially filed its Complaint with the National Arbitration Forum, the domain name <shoppers.com> was in an auction at Pool.com—meaning Respondent had no rights to the domain name. At that time, no company was listed as the registrant in the WHOIS database—rather the domain name was in control of Pool.com, Inc.
At the time Complainant filed its Complaint, Pool.com, Inc. was the owner of the domain name and was holding an auction relating to the domain name. Pool.com was placed on notice of Complainant’s trademark rights to the domain name on February 4, 2008. Additionally, Complainant requested by telephone conversation with Pool.com’s attorney that Pool.com stop the auction so that no third party would obtain the domain name. Pool.com was not making a legitimate, noncommercial use of the domain name <shoppers.com>. Pool.com intentionally allowed third parties to bid on the domain name despite the fact that the domain name is subject to federal trademark registrations. Moreover, Pool.com auctioned the domain name to the highest bidder, which cannot be considered a legitimate use and is indicative of bad faith. Pool.com failed to stop the auction, and awarded the domain name to Respondent on February 5, 2008. Respondent obtained the domain name <shoppers.com> on February 5, 2008, through the Pool.com auction.
The Respondent has no statutory or common law trademark rights or any other right or legitimate interest to the mark SHOPPERS FOOD & PHARMACY, SHOPPERS PHARMACY, SHOPPERS FOOD WAREHOUSE and SHOPPRS [sic] or in the infringing domain name <shoppers.com>. The Respondent is not licensed or authorized to use any of Complaint’s family of SHOPPERS marks, in particular the SHOPPERS trademark of the Complainant or any confusingly similar trademark for any purpose.
The Respondent has registered and continues to use a domain name that is confusingly similar to Complainant's SHOPPERS trademarks in bad faith. There is no evidence the domain name was registered for a legitimate reason. Rather, the evidence shows that the Respondent registered the domain name <shoppers.com> primarily for the purpose of commercial gain. The Respondent's company is in the business of acquiring domain names and then using those domain names as links pages or offering the domain names for sale. Respondent is the owner of at least 6,020 domain names.
Xedoc acquired the Domain Name for $166,000 in an open and transparent manner during a public auction conducted by Pool.com. Complainant placed a Backorder with Pool.com on November 27, 2007 for the Domain Name. On February 2, 2008, Complainant received written notification from Pool that the Domain Name was available and would be auctioned. Written notice of the auction was provided on February 2, 2008 to all Backorder customers, including Complainant. The auction proceeded and was completed on at 16:26 GMT3 on February 5, 2008. Xedoc was the highest bidder and was awarded the Domain Name. Per the T&C’s (§2 requires payment in 24 hours) Xedoc immediately paid Pool for the Domain Name which was then registered in Xedoc’s name. Complainant cannot claim ignorance. By placing the Backorder, Complainant knowingly agreed to and participated in the auction, agreed to the Terms & Conditions of Pool.com and submitted a binding and irrevocable bid to acquire the Domain Name. Having done so, it helped caused the very auction of which it now complains. Complainant could have purchased the Domain Name but chose not to do so. It now seeks to take it from Xedoc without payment. Complainant’s own exhibit 5 shows it monitored the auction.
Xedoc was not aware of Complainant,
its business, or its asserted claims until it received a copy of the Complaint
in this action on February 6th. By then it
had already paid the purchase price per its
binding contractual commitment with Pool which requires payment within 24
hours. Xedoc is under no duty of notice
of Complainant’s claims, and is entitled to register and use a domain name
corresponding to a generic word. That
Complainant may have a trademark registered at the USPTO does not place Xedoc
on actual or constructive knowledge. Xedoc
“Shoppers” is a common English word used by millions and its definition expressly incorporates the concept of comparison shopping. There is nothing in the public record that would preclude the real ability to register and use the Domain Name outside of any trademark context.
The historical use of the Domain Name has included a general shopping site, a comparison shopping site and Direct Navigation. The history does not reflect use to sell or promote grocery or pharmaceutical goods/services. Xedoc’s intended and actual use is consistent with the term “shoppers” as used and defined.
Trademark rights are limited to the classification of goods/services stated in the trademark application. Here Complainant has a trademark for “retail grocery store services”. No right is granted beyond this classification. Uses outside of this classification are not only expected, they are expressly allowed. The European Directive on Trademarks Art 2, 3 & 6 (governing law binding Xedoc) not only permits a person to use a term in its descriptive sense, it precludes a trademark holder from interfering with such use even if the term used is identical to a registered trademark.
Complainant’s mark is not “famous” or even distinctive. A “famous mark” is one that retains its source significance when encountered outside the context of the goods or services with which it is used by the trademark owner. It “must be a household name.” (Emphasis in the original).
The exact nature of use applied by Xedoc-the use of a generic word as a domain name in accordance with its primary meaning-was unanimously approved by a 3-member NAF panel in Kaleidoscope Imaging, Inc. v. V Entm’t (“Kaleidoscope 1”), FA 203207 (Nat. Arb. Forum Jan. 5, 2004) and again in Grattan Plc v. Xedoc Holding SA (“Kaleidoscope II”), D2007-0927 (WIPO Oct. 4, 2007).
C. Additional Submission (By Complainant)
The law clearly establishes that Respondent had constructive notice of SUPERVALU’s registered trademarks. Respondent simply chose to ignore that fact and acquired the domain name with the risk that SUPERVALU would assert its rights.
Respondent incorrectly contends
that it was “not aware of Complainant, its business, or its asserted claims
until it received a copy of the Complaint in this action on February 6th.” Respondent further contends that it is not
bound by the constructive notice provisions because it is a company based in
Respondent actually uses the domain
name at issue in this case to forward to a website and business that is
Evidence submitted by Respondent shows that Respondent contacted Pool.com to provide information related to SUPERVALU and SUPERVALU’s counsel. That information is confidential. Indeed, Slavik Viner, President of Logical Ideas, Inc. and a declarant for Respondent, stated “I know that individual bidders are assigned a bidding identity by Pool and that their actual identities are not published to the other bidders.” (Emphasis in the original).
D. Additional Submission (By Respondent)
Concrete evidence shows that Supervalu (a) submitted a Backorder that in part caused the auction to occur, (b) agreed to the Pool Terms & Conditions and thus the validity of the auction, (c) submitted a bid, and (d) failed to make any of this known to the panel in any of its two (2) prior filings.
Complainant’s asserted marks are
generic and descriptive. By law they are
limited to the operation of a “retail grocery”. There is no evidence that the marks were
widely known in the
While Supervalu has baldly claimed that the current use of the Domain Name is in direct competition with Shoppers Food & Pharmacy, there is no evidence of any competition. First, the panel is reminded that the Domain Name had been used for almost a decade as a general shopping site in Direct Navigation, all without conflict or objection by Supervalu. Second, the only evidence of Shoppers Food & Pharmacy in the Internet is at <shoppersfood.com>. There is no evidence of any confusion.
(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;
(2) the Respondent has rights or legitimate interests in respect of the domain name; and
(3) the domain name has not been registered in bad faith and is not being so used.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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;
(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.
Complainant contends that the <shoppers.com> domain name is identical to Complainant’s SHOPPERS mark. The Panel finds that because Respondent’s domain name contains Complainant’s mark in its entirety and merely adds the generic top-level domain (“gTLD”) “.com,” Respondent’s domain name is identical to Complainant’s mark for purposes of Policy ¶ 4(a)(i). See Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000).
The <shoppers.com> domain name is comprised of a common, generic term, and as such, Respondent is free to own and use domain names incorporating this term. The Panel finds that the nature of the disputed domain name conveys rights or legitimate interests to Respondent under Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in Kaleidoscopes); see also Goepfert, President & CEO v. Rogers, 861124 (Nat. Arb. Forum Jan. 17, 2007) (finding that the respondent had rights or legitimate interests in the <sentimenttrader.com> domain name even though the complainant had common law rights in the SENTIMENTRADER mark, because the terms “sentiment” and “trader” are of common usage in the stock market industry).
Respondent is making a bona fide offering of goods and services under Policy ¶ 4(c)(i) by using the <shoppers.com> domain name, which is comprised of a generic term, to operate a website that places hyperlinks on the resulting website which are related to the generic nature of the disputed domain names. The Panel finds for Respondent under Policy ¶ 4(c)(i). See Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002) (finding that the respondent’s use of the disputed domain name as a portal to a commercial website featuring various advertisements and links constituted a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)); see also First Am. Funds, Inc. v. Ult.Search, Inc., D2000-1840 (WIPO Apr. 20, 2001) (finding that, absent bad faith, the operation of a portal website is a legitimate interest).
Involved here is a
common, descriptive word. It is not, in
fact, associated by most people in the English-speaking world with the
trademark of a regional
Contrary to the Complainant’s assertions, trademark law did not in any way prevent the auction of this domain. It does not give a mark owner exclusive right against the world, especially in regard to common words. Exclusive rights belong only to famous or coined marks and this one is neither. Further, famous marks give exclusive rights only in the jurisdiction where they are famous.
The Panel finds that Complainant failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
The Panel determines that the <shoppers.com> domain name is comprised of common, generic terms, and finds that Respondent did not register or use the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
The only bad faith that the Complainant claims here
is that there is a pattern of bad faith registration. Section 4 (b)(ii)
requires that the domain name was registered in order to prevent the owner of
the trademark or service mark from reflecting the mark in a corresponding
domain name. The requisite intent is
lacking here. This Respondent had no
idea of the Complainant when it bought this domain.
Having found that all three elements required under the ICANN Policy have not been established, the Panel concludes that relief shall be DENIED.
Carolyn M. Johnson, Panelist
Diane Cabell, Panelist
Dated: April 4, 2008
NATional Arbitration Forum