Franchise Times Corporation v. Domain Administrator / Paydues Inc
Claim Number: FA1208001460269
Complainant is Franchise Times Corporation (“Complainant”), represented by Ryan R. Palmer of Monroe Moxness Berg PA, Minnesota, USA. Respondent is Domain Administrator / Paydues Inc (“Respondent”), New Mexico, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <franchisetimes.org>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 28, 2012; the National Arbitration Forum received payment on August 28, 2012.
On August 29, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <franchisetimes.org> 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 August 31, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 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@franchisetimes.org. Also on August 31, 2012, 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, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco, 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 contends as follows:
Complainant publishes information relevant to franchised business, both in print and online, under the FRANCHISE TIMES mark and owns trademark registrations for the FRANCHISE TIMES mark, as well as related marks containing FRANCHISE TIMES, with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,372,759 registered August 1, 2000).
The <franchisetimes.org> domain name is identical to Complainant’s FRANCHISE TIMES mark.
Respondent is not commonly known by the <franchisetimes.org> domain name.
The <franchisetimes.org> domain name resolves to a website that purports to sell franchise advice branded as “Franchise Analyzer.”
Respondent has a record of registering infringing domain names and should be considered a serial cybersquatter.
Respondent had knowledge of Complainant’s rights in the FRANCHISE TIMES mark at the time Respondent registered the <franchisetimes.org> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns trademark registrations for the FRANCHISE TIMES mark with the USPTO.
Complainant has not authorized Respondent to use its mark.
Respondent registered the at-issue domain name after Complainant acquired rights in its FRANCHISE TIMES trademark.
The <franchisetimes.org> domain name resolves to a website that purports to sell franchise advice branded as “Franchise Analyzer.”
Respondent has a record of registering infringing domain names.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant established rights in the FRANCHISE TIMES mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
The at-issue domain name includes Complainant’s mark in its entirety, omitting the space between terms and appending the generic top-level domain, “.org.” These alterations are insufficient to differentiate the at-issue domain name from Complainant’s trademark. Therefore, the Panel finds Respondent’s <franchisetimes.org> domain name is identical to Complainant’s FRANCHISE TIMES mark for the purposes of Policy ¶ 4(a)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark); see also BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding that there is “no doubt” that the domain name <bmw.org> is identical to the complainant’s well-known and registered BMW trademarks); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
The WHOIS information for the at-issue domain names identifies the domain name registrant as “Domain Administrator / Paydues Inc” and the record before the Panel contains no evidence that tends to prove that Respondent is commonly known by the <franchisetimes.org> domain name. The Panel therefore concludes that Respondent is not commonly known by the <franchisetimes.org> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses <franchisetimes.org> to address a website that purports to sell franchise advice branded as “Franchise Analyzer.” The at-issue domain name impermissibly trades on Complainant’s mark to attract visitors to Respondent’s website, which encourages visitors to provide personal information and to purchase “Franchise Analyzer.” Respondent’s use of the <franchisetimes.org> domain name in this manner cannot be considered 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 Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, multiple Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude under Policy ¶4(a)(iii) that Respondent acted in bad faith.
Since Respondent registered the at-issue domain name Complainant has been unable to register and use the domain name for its own legitimate purposes. Respondent has a history of engaging in cybersquatting with a variety of franchise-related companies and there are multiple UDRP cases in which Respondent was found to have registered a disputed domain name in bad faith. See PFIP, LLC v. Paydues Inc., FA 1411907 (Nat. Arb. Forum Nov. 25, 2011); see also Batteries Plus, LLC v. Jason Rager / Paydues Inc., FA 1418065 (Nat. Arb. Forum Jan. 10, 2012); see also LC Trademarks, Inc. v. PayDues Inc., D2011-2125 (WIPO Jan. 24, 2012). Respondent’s demonstrated history of registering domain names in bad faith provides evidence that Respondent registered the <franchisetimes.org> domain name in bad faith as well. The Panel thus concludes that the foregoing circumstances demonstrate bad faith registration and use under Policy ¶4(b)(ii). See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
Respondent’s use of Complainant’s mark to address its website, a banner headline that reads “Franchise Times,” and inclusion of the statement that Respondent website is “Your Home for Franchise Times” urges that Respondent is seeking to trade off of the goodwill associated with Complainant’s FRANCHISE TIMES mark. There is little doubt that Respondent generates revenue, or desires to generate revenue, from operating its <franchisetimes.org> website and further that Respondent’s selection of a domain name that is identical to Complainant’s trademark was meant to create confusion as to Complainant’s affiliation with the website and to usurp Complainant’s goodwill. These circumstances demonstrated bad faith registration and use under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Finally, Respondent's inclusion of a banner headline on its <franchisetimes.org> website that reads “Franchise Times” along with a statement that the website is “Your Home for Franchise Times” indicates that Respondent had knowledge of Complainant's mark and trademark rights therein prior to registering the at-issue domain name. Registering and using a domain with knowledge of a complainant’s rights in such domain name shows bad faith registration and use pursuant to Policy ¶4(a)(iii). See 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <franchisetimes.org> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 26, 2012
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