The old (1998) registration of the domain FoodClub.com did not matter when Topco Holdings, Inc filed a UDRP.
Its FOOD CLUB trademark came into play, registered in 1957 in the US for services that began as early as in 1945.
One has to wonder what took the Complainant this long—26 years—to file a UDRP. In this case, the Respondent’s complete silence did not help and the panelist had to make a decision in absentia.
The sole Forum (NAF) panelist ruled that the domain was used in a manner that infringed on the Complainant’s rights. The panelist referenced Archive.org records to justify his decision, ordering the domain FoodClub.com to be transferred to the Complainant.
DECISION
Topco Holdings, Inc. (Cooperative) v. Patricia Doolittle / Diversified Exchange LLC
Claim Number: FA2404002091468
PARTIES
Complainant is Topco Holdings, Inc. (Cooperative) (“Complainant”), represented by Sean J. Quinn of Gozdecki, Del Giudice, Americus & Brocato LLP, Illinois, USA. Respondent is Patricia Doolittle / Diversified Exchange LLC (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is foodclub.com, registered with GoDaddy.com, LLC.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honorable Neil Anthony Brown KC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on April 2, 2024; Forum received payment on April 2, 2024.
On April 3, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the foodclub.com domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 4, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 2024 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@foodclub.com. Also on April 4, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On March 13, 2024, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that 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” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, 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
Complainant made the following contentions.
1. Complainant is a prominent United States company engaged in the provision of aggregation, innovation and knowledge management solutions for its leading food industry member-owners and customers, including grocery retailers, wholesalers and food service companies. It has been so engaged since 1945.
2. Complainant provides those goods and services under the trademark for FOOD CLUB. In particular, the evidence will establish that Complainant has acquired registered trademark rights in the FOOD CLUB trademark by virtue of its registration of that trademark with the United States Patent and Trademark Office, registration Number 650,608, registered on August 20, 1957, and other word, design and common law trademarks for FOOD CLUB and derivatives (“the FOOD CLUB trademark”). The Complainant has used those trademarks since 1945 to offer its goods and services.
3. The FOOD CLUB trademark has attracted substantial goodwill and is uniquely associated with the Complainant’s goods and services.
4. As well as its trademark, Complainant has registered the domain names topco.com and foodclubbrand.com that it has used in its business and in particular for its websites (“the Complainant’s websites”) where it markets a broad range of food and related goods and services under the brand “Food Club Since 1945”.
5. Respondent registered the foodclub.com domain name on March 13, 1998, (“the disputed domain name”).
6. The disputed domain name embodies the FOOD CLUB trademark without the consent of the Complainant and with the addition of the the generic Top Level Domain “.com”.
7. The disputed domain name is identical and also confusingly similar to the FOOD CLUB trademark as it includes the entirety of the mark and the generic Top Level Domain “.com” which cannot negate a finding of identicality or confusing similarity.
8. (a)The Respondent has no rights or legitimate interests in the disputed domain name;
(b) in particular, the domain name is inactive.
9. The Respondent has registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
1. Complainant is a prominent United States company engaged in the provision of aggregation, innovation and knowledge management solutions for its leading food industry member-owners and customers, including grocery retailers, wholesalers and food service companies. It has been so engaged since 1945.
2. Complainant provides those goods and services under the trademark for FOOD CLUB. In particular, the evidence has established that Complainant has acquired registered trademark rights in the FOOD CLUB trademark by virtue of its registration of that trademark with the United States Patent and Trademark Office, registration Number 650,608, registered on August 20, 1957, and other word, design and common law trademarks for FOOD CLUB and derivatives (“the FOOD CLUB trademark”). The Complainant has used those trademarks since 1945 to offer its goods and services.
3. Respondent registered the foodclub.com domain name on March 13,1998, (“the disputed domain name”).
4. The disputed domain name embodies the entirety of the FOOD CLUB trademark without the consent of the Complainant and with the addition of the generic Top Level Domain “.com”.
5. By reason of the matters aforesaid and as demonstrated by the evidence, the disputed domain name is identical and confusingly similar to the Complainant’s FOOD CLUB trademark, the Respondent has no rights or legitimate interests in the domain name and the domain name has been registered and used by the Respondent in bad faith.
6. Accordingly, the disputed domain name should be transferred to the Complainant.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and 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 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.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical and/or Confusingly Similar
The first question that arises is whether the Complainant has rights in a trademark or service mark on which it may rely. The evidence adduced by the Complainant has established that the Complainant has acquired registered trademark rights in the FOOD CLUB trademark by virtue of its registration of that trademark with the United States Patent and Trademark Office, registration Number 650,608, registered on August 20, 1957, and other word, design and common law trademarks for FOOD CLUB and derivatives (“the FOOD CLUB trademark”). The Complainant has also established that the Complainant has used those trademarks since 1945 to offer its goods and services.
Accordingly, the Complainant has established by evidence that it has rights in the FOOD CLUB trademark as aforesaid and that it has standing to bring this proceeding.
The next question that arises is whether the disputed domain name is identical or confusingly similar to the Complainant’s FOOD CLUB trademark. The Panel finds that the disputed domain name is, as the Complainant submits, both identical and confusingly similar to the FOOD CLUB trademark for the following reasons. It is identical, as it includes the entirety of the trademark and the generic Top Level Domain “.com” which cannot negate a finding of identicality. It is also confusingly similar to the trademark, as it generates confusion with the trademark as it invokes the trademark and thus relates to the goods and services for the provision of which the Complainant is renowned in the provision of those goods and services under the trademark. Internet users could not help but conclude that the domain name related to the Complainant and its business of providing food-related goods and services under the trademark and that it was intended to be so read. Thus, the domain name is similar to the trademark and confusingly so, the confusion being that the domain name would undoubtedly be seen as a domain name of the Complainant or as one that was authorized by it. Internet users would also assume that the domain name would lead to an official FOOD CLUB website or one that was authorized by the Complainant. Again, the generic Top Level Domain “.com” cannot negate a finding of confusing similarity. The Panel therefore finds that the disputed domain name is also confusingly similar to the Complainant’s FOOD CLUB trademark under Policy ¶ 4(a)(i).
The Complainant has thus made out the first of the three elements that it must establish.
Rights or Legitimate Interests
It is now well established that the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and that, if the prima facie case is made out, the burden then shifts to the Respondent to show that it does have such rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)).
The Panel finds on the evidence that the Complainant has made out a prima facie case that arises from the following considerations:
(a) the evidence shows that the Complainant owns the FOOD CLUB trademark and has continuously used it since 1945 for the provision of its goods and services, that the Respondent does not hold any trademark rights in FOOD CLUB and that it is not an authorized dealer, distributor or licensee of the Complainant and has not been authorized or sponsored by the Complainant to use the FOOD CLUB trademark as a domain name or in any other manner;
(b) the Respondent registered the disputed domain name on March 13,1998, which was well after the Complainant had acquired its rights in the FOOD CLUB trademark; this shows that the Complainant’s trademark was well-established by the time the domain name was registered;
(c) the evidence shows that the Respondent registered the domain name without the knowledge or consent of the Complainant;
(d) the evidence shows that the Respondent has not made a bona fide use of the domain name within the meaning of Policy ¶ 4(c)(i) as it has been used to impersonate the Complainant by using its trademark and has not used it for any active purpose or any other purpose that can remotely be described as bona fide; it would therefore be a perversion of language to assert that such conduct was bona fide within the meaning of Policy ¶ 4(c)(i) as it is the opposite of that expression; moreover, it cannot be bona fide for the Respondent to permit its registrar to purport to offer the domain name for sale by using the words “Get This Domain” on the inactive website to which the domain name now resolves;
(e) moreover, the Wayback Machine at www.archive.org, to which panellists have recourse when it shows supportive evidence, demonstrates that the Respondent has long had knowledge of the significance of the FOOD CLUB trademark and either used it or allowed it to be used in many branches of the food and related industries genre. Thus, the Wayback Machine shows:
(i) that on August 28, 20041, the domain name resolved to a website with the heading “Most Popular Sites for Food & Recipes” detailing many food items from Coconut Diets to Gourmet Food;
(ii) that from 27 May 2003 – 14 Aug 20192, the domain name was linked to numerous food and related websites and sites linked under the headings Food and Recipes;
(iii) that on 2 June 2022 the domain name was for sale3;
(iv) on February 8, 2011 it was linked to sites on “diet and nutrition”4; and
(v) and that on numerous other occasions it was similarly used.
Thus, it cannot be said that the Respondent has made a bona fide use of the domain name when it has clearly been used by the Respondent for decidedly non-bona fide purposes and that it has been for sale on numerous occasions;
(f) the Respondent is not commonly known by the domain name; there is no evidence that the Respondent is commonly known by the domain name or anything like it; moreover, it cannot be concluded that anyone named Patricia Doolitle/Diversified Exchange LLC would answer to the name “foodclub.com”;
(g) the Respondent is not making a legitimate non-commercial or fair use of the domain name; there is nothing legitimate in a party taking a trademark to which it is not entitled and then registering a domain name implying that it is sponsored or authorized by the owner of the trademark to hold it; nor is it non-commercial, as this was obviously being done to make money by allowing it to be offered for sale, which is commercial; nor is it fair; and
(h) there is no other ground on which it could be said that the Respondent has a right or legitimate interest in the disputed domain name.
The Complainant has therefore made out all of the grounds it relies on to show that the Respondent does not have a right or legitimate interest in the disputed domain name.
All of these matters make out the prima facie case against Respondent.
As the Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
The Complainant has thus made out the second of the three elements that it must establish.
Registration and Use in Bad Faith
It is clear that to establish bad faith for the purposes of the Policy, the Complainant must show that the disputed domain name was registered and used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) are not exclusive but that UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
The Complainant has submitted that the Respondent has registered and used the disputed domain name in bad faith on several grounds. In view of the evidence discussed above, it is clear that the Complainant has made out all of the grounds relied on, as the entire modus operandi of the Respondent has clearly been motivated by bad faith in both the registration and the use of the domain name. In particular, it is clear from the evidence that:
(a) the Respondent has intentionally attempted to attract internet users by creating confusion as to its relationship to the Complainant and for commercial gain by one means or another within the meaning of Policy ¶ 4(b)(iv); in particular, the Respondent has registered and retained the domain name since 1998 and has allowed or caused its Registrar to offer it for sale by the use of the words “Get This Domain”. It is clear from the evidence that the Respondent wanted internet users to think that it was the Complainant or was authorized by it and that it set about confusing them by using the FOOD CLUB trademark in the domain name as described above; that conduct must have engendered in the minds of internet users confusion whether the purported connection with the trademark and its owner were genuine or not;
(b) the inference must be drawn from the evidence that the Respondent registered and used the domain name, by retaining it since 1998 and allowing or causing it to be offered for sale, used it frequently in the manner shows from the Wayback Machine as aforesaid and primarily to disrupt the Complainant’s business within the meaning of Policy ¶ 4(b)(iii);
(c) accordingly, when it registered the domain name, the Respondent must be taken to have had actual knowledge of the Complainant’s pre-existing FOOD CLUB trademark which is itself, ipso facto, bad faith; moreover, the uses of the domain name shown from the Wayback Machine show this to be more likely than not;
(d) the Complainant is also correct, on the evidence, in its cogent submission that internet users would naturally conclude that in view of the very existence of the domain name, the Complainant did not have an active URL related to its extensively promoted FOOD CLUB branded products, inevitably giving rise to harm to the Complainant’s reputation and disruption to its business, as it did have such a URL; and
(e) the evidence shows that the entirety of the Respondent’s conduct amounts to bad faith registration and use of the domain name.
All of the foregoing matters show bad faith registration and use, as the domain name was registered on an unauthorized use of the Complainant’s trademark, the creation of an identical and confusingly similar domain name, and the Respondent’s causing or allowing the domain name to be offered for sale.
Finally, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent’s registration of the disputed domain name using the FOOD CLUB trademark and in view of the conduct that the Respondent has engaged in as shown by all of the available evidence, the Respondent registered and used the domain name in bad faith within the generally accepted meaning of that expression.
The Complainant has thus made out the third of the three elements that it must establish.
The Complainant has correctly cited numerous prior UDRP decisions that support its contentions on all of the required elements.
The Complainant has therefore established all of the elements that it must show under the Policy and it is therefore entitled to the relief it seeks.
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 foodclub.com domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: April 26, 2024
