In the recent domain dispute Publix Asset Management Company v. (**Domain For Sale**) Momentum Technology Corp c/o Paul Barbell, (Nat. Arb. Forum 1238082 January 21, 2009), a single member panel was faced with a determination over www.publix.net. Publix offers grocery store services throughout the state of Florida. It owns a trademark registration for the mark PUBLIX, (Reg. No. 1,339,762 registered June 4, 1985). Publix also mainatins a website located at www.publix.com.
The panel reviewed the three elements of domain disputes, despite the lack of response by Respondent. First the panel reviewed whether the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights. The panel noted that the addition of “.net” failed to distinguish the domain from Complainant’s mark, therefore finding that this element was satisfied.
Next the panel addressed whether Respondent had any rights or legitimate interests in respect of the domain name. Since Respondent failed to respond, the panel could assume that there are no rights or legitimate interests, however, the panel opted instead to review the evidence submitted by Complainant. The Panel made the following observations:
Complainant contends that Respondent is neither commonly known by the disputed domain name nor licensed to register domain names using the PUBLIX mark. Respondent’s WHOIS information lists Respondent as “Paul Barbell (**Domain For Sale**) Momentum Technology Corp,” thus providing no affirmative evidence that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii)….
Complainant provides evidence and argues that Respondent’s use of the disputed domain name is both commercial and competitive with Complainant. Respondent’s <publix.net> domain name resolves to a website offering grocery store services in direct competition with Complainant. The Panel finds that Respondent’s use of the disputed domain name is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)….
In addition, the Panel finds that Respondent lacks rights and legitimate interests in the <publix.net> domain name pursuant to Policy ¶ 4(a)(ii) due to Respondent’s WHOIS information explicitly showing that the disputed domain name is for sale….
As such, the panel found this “no legitimate interest” element was satisfied as well. The panel finally moved to the last element, whether the domain name has been registered and is being used in bad faith. Here again the panel noted that since the domain was being presented for sale is also evidence of bad faith. The panel further explained:
The Panel finds that Respondent’s registration and use of the disputed domain name to operate a website in direct competition with Complainant constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iii)….Respondent’s use of the disputed domain name in order to intentionally attract Internet users to its website by creating a strong possiblity of confusion with Complainant’s PUBLIX mark and offering products and services in direct competition with Complainant is further evidence of bad faith. Therefore, pursuant to Policy ¶ 4(b)(iv), the Panel finds this use of the disputed domain name constitutes bad faith registration and use.
Ultimately, the panel found that all three elements had been satisfied and ruled to TRANSFER the disputed domain.
