Publix Asset Management Company, Publix Super Markets, Inc. v; Agu Tech, AguTec

WIPO Case No. D2025-2289

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Publix Asset Management Company, Publix Super Markets, Inc. v.
Agu Tech, AguTec

Case No. D2025-2289

1. The Parties

The Complainants are Publix Asset Management Company, United States of America, and Publix Super Markets, Inc., United States of America, represented by Holland & Knight LLC, United States of America (“United States”).

The Respondent is Agu Tech, AguTec, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <publixcorp.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2025. On June 12, 2025, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain name. On June 13, 2025, the Registrar transmitted by email to the Center its verif ication response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verif ied that the Complaint 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 notif ied the Respondent of the Complaint, and the proceedings commenced on June 23, 2025. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2025. The Respondent did not submit any response. Accordingly, the Center notif ied the Respondent’s default on July 26, 2025.

The Center appointed Mireille Buydens as the sole panelist in this matter on August 5, 2025. The Panel f inds 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.

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4. Factual Background

The Complainants are corporations established under the law of the State of Florida, United States and headquartered in Lakeland, Florida. Publix Super Markets, Inc. (“the f irst Complainant”), an employee- owned Fortune 500 company, was founded in 1930. It operates a large chain of supermarkets in the

Southeastern United States, with more than 1,350 stores and more than 250,000 employees. Its af f iliate Publix Asset Management Company, the other Complainant in this proceeding (“the second Complainant”), owns and manages PUBLIX trademarks that are licensed to the f irst Complainant for use in its business.

The f irst Complainant has been advertising and providing retail grocery, pharmacy and catering services, as well as food products and beverages, vitamins and supplements, hygiene items and other products for more than 90 years under the PUBLIX trademark.

The f irst Complainant has also registered, on January 31, 1995, and uses the domain name <publix.com> to access the official PUBLIX website where the f irst Complainant promotes its grocery store services and food products sold in connection with the PUBLIX trademark.

The second Complainant owns at least 65 current United States trademark registrations for PUBLIX (word marks and word- and device trademarks) (hereaf ter “the PUBLIX Trademark”). These notably include:

- United States Registration No. 1339762 for PUBLIX (word mark), registered on June 4, 1985;

- United States Registration No. 1373131 for PUBLIX (word and device mark), registered on
November 26, 1985;

- United States Registration No. 1370458 for PUBLIX (word mark), registered on November 12, 1985 The disputed domain name was registered on February 1, 2025. According to the Complaint, it directed to a website using Complainants’ name and logo repeatedly, displaying photographs of Complainants’ grocery stores (of both the exterior and interior of the stores). Emails have been sent f rom the email address “[…]@publixcorp.com” (i.e., originating f rom the disputed domain name) to some of the Complainants’ vendors. The sender of these emails presented himself as being the Senior Vice President of

“Global Procurement Publix Super Markets, Inc.” and asked the Publix vendors for various information.

At the time of this decision, the disputed domain name directs to a page stating that the website has been suspended.

5. Parties’ Contentions
A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainants contend that the disputed domain name is confusingly similar to the PUBLIX Trademark, as it includes the word element “publix” identically, and only adds “corp”, which only serves to further confusion as it suggests it is the Publix corporate website. The Complainants have used the PUBLIX Trademark, which is a strong and fanciful trademark, for decades. The Respondent’s use of the disputed domain name is likely to cause deception, mistake, and confusion among consumers.

The Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainants have never granted the Respondent rights to use the PUBLIX Trademark. Given the fame and acquired distinctiveness in the PUBLIX Trademark, and its 93 year history, it is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainants’

Trademark.

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Moreover, the Respondent’s use of Complainants’ design trademarks and images f rom the Complainants’ grocery stores indicates that the Respondent had constructive and actual notice of the Complainants’ trademark rights when it began using the disputed domain name and had clear intention to copy the

Complainants’ brand identity and confuse Internet users into believing that website of the Respondent is a genuine Complainants’ website.

The Complainants further explain that there is no evidence that the Respondent is commonly known by the disputed domain name, nor is there any evidence of use or demonstrable preparations to use the disputed domain name for a bona f ide of fering of goods or services. There is no evidence of legitimate

noncommercial or fair use of the disputed domain name, either.

The Complainants finally contend that the Respondent registered and uses the disputed domain name in bad faith. The PUBLIx Trademark is fanciful and well known in the United States as it has gained notoriety with continuous use since 1930. The Respondent could not ignore the Complainants’ PUBLIX Trademark and chose to register a domain name incorporating the PUBLIX Trademark in its entirety, decades af ter the Complainants first registered the PUBLIX Trademark. Besides, the Respondent has hidden its true identity by providing the Complainants’, rather than Respondent’s, address on the “Contact Us” page of the website under the disputed domain name. Additionally, the Respondent has sent emails using the disputed domain name to some of the Complainants’ vendors, representing itself as being a Complainants senior manager. As a result, the Respondent is knowingly trading on the Complainants’ trademark rights and is exploiting them for its own commercial gain.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the Complainants prove each of the following three elements in order to succeed in its Complaint:

(i)        the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;

(ii)       the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii)      the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the f irst element functions primarily as a standing requirement. The standing
(or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison
between the Complainants’ trademark and the disputed domain name. WIPO Overview of WIPO Panel
Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Panel f inds the entirety of the PUBLIX Trademark is reproduced within the disputed domain name. The only difference between the PUBLIX Trademark and the disputed domain name is the addition of the term “corp”. Although the addition of this term may bear on assessment of the second and third elements, the Panel f inds the addition of such term does not prevent a f inding of confusing similarity between the disputed domain name and the Publix Trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

Further, the generic Top-Level Domain “.com” is a standard registration requirement and does not prevent the disputed domain name f rom being confusingly similar to the PUBLIX Trademark.

Accordingly, the disputed domain name is confusingly similar to the PUBLIX Trademark for the purposes of the Policy.

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The Panel f inds the f irst element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is of ten primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisf ied the second element. WIPO Overview 3.0,

section 2.1.

Having reviewed the available record, the Panel finds the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainants’ prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Respondent is not licensed by, nor affiliated with, the Complainants in any way. There is no evidence that the Respondent is commonly known by the disputed domain name, nor is there any evidence of use or demonstrable preparations to use the disputed domain name for a bona fide offering of goods or services. There is no evidence of legitimate noncommercial or fair use of the disputed domain name, either. On the contrary, the Panel notes that the disputed domain name reproduces the PUBLIX Trademark in its entirety with the mere addition of the term “corp” (which may refer to “corporation” and thereby can serve to further confusion with the Complainants as it may be understood as referring to the PUBLIX corporate website). The disputed domain name carries a high risk of implied af f iliation, which cannot constitute fair use as it ef fectively impersonates or suggests sponsorship or endorsement by the Complainants. Noting also the impersonating nature of the content exhibited on the website at the disputed domain name, the Respondent induces Internet users into believing that the disputed domain name resolves to a website operated or endorsed by the Complainants. Further, the website under the disputed domain name provides the

Complainants’, rather than Respondent’s, address on the “Contact Us” page of the website and the Respondent has sent emails using the disputed domain name to some of the Complainants’ vendors, representing itself as a Complainants senior representative. Panels have held that the use of a domain name for illegitimate activity, here, claimed impersonation/passing off, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel f inds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

Concerning the registration in bad faith, the Panel notes that the Respondent has composed the disputed domain name by combining the Complainant’s well-known PUBLIX Trademark with the term “corp”, which refers to “corporation” and thereby serves as further confusion as it suggests the disputed domain name resolves to the Complainants’ PUBLIX corporate website. A quick search for the term “publix” online would

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have revealed to the Respondent the existence of the Complainants and their PUBLIX Trademark, which is used for decades. As a result, the Panel finds that the Respondent was more likely than not aware of the Complainant’s Trademark at the time of the registration of the disputed domain name. WIPO Overview 3.0 section 3.2.2.

Concerning the use of the disputed domain name in bad faith, panels have held that the use of a domain name for illegitimate activity, including impersonating or passing of f , constitutes bad faith. WIPO Overview 3.0, section 3.4. In the present case, the Respondent passes itself of f as the

Complainants: the disputed domain name resolves to a website depicting the Complainants’ PUBLIX Trademarks and logo as well as pictures from its grocery stores, it displays the Complainants’ address and gives details about the Complainants’ history. Furthermore, it of fers for sale the same type of products (grocery products) and offers potential customers to order and leave their contact details. This website does not contain any information allowing Internet users to identify the company

operating the website, nor any kind of disclaimer. Besides, the Complainants have provided evidence gather information. It results f rom the foregoing that the Respondent has knowingly targeted the Complainants and their PUBLIX Trademark in order to drive traffic by directing to the Respondent’s own website and taking unfair advantage of the likelihood of confusion between the disputed domain name and the Complainants’ PUBLIX Trademark.
showing that the Respondent has sent emails using the disputed domain name to some of the

In light of this, it seems inconceivable that the Respondent would have registered and used the disputed domain name for a reason other than seeking to unduly benef it f rom the Complainant, its PUBLIX Trademark, and associated goodwill. The disputed domain name’s current direction to a page stating that the website has been suspended does not prevent a f inding of bad faith.

The Panel f inds that the Complainant has established the third element of the Policy.

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 <publixcorp.com> be transferred to the Complainant.

/Mireille Buydens/
Mireille Buydens
Sole Panelist
Date: August 12, 2025