Sizzler USA Franchise, Inc., Sizzler International Marks, LLC, and Sizzler Restaurants Group Pty Ltd v. ICS INC.
Claim Number: FA1204001439294
Complainant is Sizzler USA Franchise, Inc., Sizzler International Marks, LLC, and Sizzler Restaurants Group Pty Ltd (“Complainant”), represented by Rod S. Berman of Jeffer Mangels Butler & Mitchell LLP, California, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sizzlersrestaurant.com>, registered with Tucows, Inc.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 13, 2012; the National Arbitration Forum received payment on April 16, 2012.
On April 13, 2012, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <sizzlersrestaurant.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 2012 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@sizzlersrestaurant.com. Also on April 19, 2012, the Written Notice of the Complaint, notifying Respondent of the email 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, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 14, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions:
1.Complainant owns the SIZZLER mark.
2. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its SIZZLER mark (e.g., Reg. No. 882,633 registered December 16, 1969).
3. Complainant owns trademark registrations for its SIZZLER mark with national trademark agencies throughout the world, such as with China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 772,921) and IP Australia (“IPA”) (Reg. No. 414,006).
4. Complainant own trademark rights in the SIZZLER mark, which provides a sufficient nexus for the purpose of this proceeding.
5.Respondent’s <sizzlersrestaurant.com> domain name is confusingly similar to Complainant’s SIZZLER mark because the additions of the letter “s,” the generic term “restaurant,” and the generic top-level domain (“gTLD”) “.com” are not sufficient to distinguish the disputed domain name from Complainant’s mark.
6. Respondent uses the <sizzlersrestaurant.com> domain name to resolve to a “portal” website that contains revenue-generating hyperlinks to third-party websites, including websites relating to competing restaurants and restaurant coupons.
7. Respondent is not commonly known by the disputed domain name because Respondent is not licensed or authorized to use Complainant’s mark and Respondent is not connected to Complainant.
8. Respondent acquired the disputed domain name for the purpose of selling the disputed domain name to Complainant.
9. Respondent registered and uses the <sizzlersrestaurant.com> domain name to benefit commercially by creating Internet user confusion as to Complainants’ affiliation with the disputed domain name.
10. Respondent must have been aware of Complainant’s mark when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1.Complainant is a well-known United States company engaged in the restaurant industry. It owns the SIZZLER mark and numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its SIZZLER mark (e.g., Reg. No. 882,633 registered December 16, 1969).
2. Complainant also owns trademark registrations for its SIZZLER mark with national trademark agencies throughout the world, such as with China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 772,921) and IP Australia (“IPA”) (Reg. No. 414,006).
3. Respondent registered the <sizzlersrestaurant.com> domain name on January 12, 2012. It uses the <sizzlersrestaurant.com> domain name to resolve to a “portal” website that contains revenue-generating hyperlinks to third-party websites, including websites relating to competing restaurants and restaurant coupons.
Paragraph 15(a) of 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 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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.).
Preliminary Issue: Multiple Complainants
There are three Complainants in this matter: Sizzler USA Franchise, Inc., Sizzler International Marks, LLC, and Sizzler Restaurants Group Pty Ltd. The separate Complainants allege that they each own trademark rights in the SIZZLER mark, which they claim provides a sufficient nexus for the purpose of this proceeding.
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the separate Complainants and it will therefore treat them all as a single entity in this proceeding. For ease of reference, throughout this decision, the Complainants will be collectively referred to as “Complainant.”
The first question is whether Complainant has rights in a trademark or service mark.
Complainant avers that it owns the SIZZLER mark and numerous trademark registrations with the USPTO for its SIZZLER mark (e.g., Reg. No. 882,633 registered December 16, 1969). Complainant provides the Panel with evidence of its USPTO trademark registrations for its SIZZLER mark. See Complainant’s Exhibit C. Complainant also claims that it owns trademark registrations for its SIZZLER mark with national trademark agencies throughout the world, such as the SAIC (Reg. No. 772,921) and IPA (Reg. No. 414,006). The Panel accepts this submission and concludes that Complainant has established rights in its SIZZLER mark under Policy ¶ 4(a) (i) through its trademark registrations with the USPTO, regardless of where Respondent resides or operates. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a) (i).”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
The next question is whether the disputed domain name is identical or confusingly similar to the SIZZLER mark. Complainant claims that Respondent’s <sizzlersrestaurant.com> domain name is confusingly similar to Complainant’s SIZZLER mark. Complainant notes that the disputed domain name contains Complainant’s mark and the letter “s,” the generic word “restaurant,” and the gTLD “.com.” Complainant alleges that the term “restaurant” describes Complainant’s business and the Panel accepts that submission in view of Complainant’s fame. Complainant contends that these additions are not sufficient to distinguish the disputed domain name from Complainant’s mark. The Panel agrees and holds that Respondent’s <sizzlersrestaurant.com> domain name is confusingly similar to Complainant’s SIZZLER mark pursuant to Policy ¶ 4(a) (i). See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arab. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii) and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SIZZLER trademark and to use it in its domain name , adding the letter “s” and the generic word “restaurant,” thus enhancing the confusing similarity between the domain name and the trademark;
(b) Respondent has then decided to use the domain name by causing it to resolve to a “portal” website that contains revenue-generating hyperlinks to third-party websites, including websites relating to competing restaurants and offering restaurant coupons.
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant also submits that that Respondent is not commonly known by the disputed domain name. Complainant asserts that Respondent is not licensed or authorized to use Complainant’s mark. Complainant further claims that Respondent is not connected to Complainant or Complainant’s SIZZLER mark. The Panel notes that the WHOIS information identifies “ICS INC.” as the registrant of the <sizzlersrestaurant.com> domain name. Based on this evidence and the lack of a Response, the Panel holds that Respondent is not commonly known by the <sizzlersrestaurant.com> domain name for the purposes of Policy ¶ 4(c) (ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
(e) Complainant also alleges that Respondent uses the <sizzlersrestaurant.com> domain name to resolve to a “portal” website that contains revenue-generating hyperlinks to third-party websites, including websites relating to competing restaurants and restaurant coupons. Complainant provides the Panel with a screen shot of the resolving website. See Complainant’s Exhibit D. The Panel thus determines that Respondent’s use of the <sizzlersrestaurant.com> domain name to provide competing hyperlinks is neither a Policy ¶ 4(c)(I) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(I) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c) (i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c) (iii)).
All of these matters go to make out the prima facie case against Respondent. As 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 has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant asserts that Respondent acquired the disputed domain name for the purpose of selling it to Complainant. There is no direct evidence of this intention, but it may be inferred and the Panel will accept Complainant’s assertion in light of the lack of a Response and holds that Respondent therefore registered and uses the <sizzlersrestaurant.com> domain name in bad faith pursuant to Policy ¶ 4(b )(I). See CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) (“There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent”).
Secondly, Complainant contends that Respondent registered and uses the <sizzlersrestaurant.com> domain name in bad faith under Policy ¶ 4(b) (iv). Complainant alleges that Respondent uses the <sizzlersrestaurant.com> domain name to host revenue generating hyperlinks that resolve to the websites of competing restaurants or restaurant coupon providers. Complainant claims that Respondent is attempting to benefit commercially by creating Internet user confusion as to Complainant’s affiliation with the disputed domain name. The Panel finds this claim to be true and therefore holds that Respondent registered and uses the <sizzlersrestaurant.com> domain name in bad faith under Policy ¶ 4(b) (iv). See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Thirdly, Complainant also claims that Respondent was aware of Complainant’s SIZZLER mark due to Complainant’s use of the mark throughout the world. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a) (iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a) (iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the SIZZLER mark, adding to it the letter “s” and the word “restaurant” and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sizzlersrestaurant.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC, Panelist
Dated: May 16, 2012
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