OS Asset, Inc. v. Yan / Yanli Li; Zhichao Yang
Claim Number: FA1311001529354
Complainant is OS Asset, Inc. (“Complainant”), represented by Courtni E. Thorpe of Baker & Hostetler LLP, Ohio, USA. Respondent is Yan / Yanli Li; Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <outbackonlineodering.com>, <outbackonlineorderin.com>, <outbackonlinordering.com>, <outbackordering.com>, <outbacksteakonlineordering.com>, <outbakonlineordering.com>, <outbackonlineorder.com>, <onlineoutbackordering.com>, <ourbackonlineordering.com>, and <oubackonlineordering.com>, registered with Pdr Ltd. d/b/a Publicdomainregistry.Com; Godaddy.Com, Llc; Internet.Bs Corp.
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.
Ho Hyun Nahm as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 11, 2013; the National Arbitration Forum received payment on November 11, 2013.
On November 12, 2013, Pdr Ltd. d/b/a Publicdomainregistry.Com; Godaddy.Com, Llc; Internet.Bs Corp. confirmed by e-mail to the National Arbitration Forum that the <outbackonlineodering.com>, <outbackonlineorderin.com>, <outbackonlinordering.com>, <outbackordering.com>, <outbacksteakonlineordering.com>, <outbakonlineordering.com>, <outbackonlineorder.com>, <onlineoutbackordering.com>, <ourbackonlineordering.com>, and <oubackonlineordering.com> domain names are registered with Pdr Ltd. d/b/a Publicdomainregistry.Com; Godaddy.Com, Llc; Internet.Bs Corp. and that Respondent is the current registrant of the names. Pdr Ltd. d/b/a Publicdomainregistry.Com; Godaddy.Com, Llc; Internet.Bs Corp. has verified that Respondent is bound by the Pdr Ltd. d/b/a Publicdomainregistry.Com; Godaddy.Com, Llc; Internet.Bs Corp. 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 November 22, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 12, 2013 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@outbackonlineodering.com, postmaster@outbackonlineorderin.com, postmaster@outbackonlinordering.com, postmaster@outbackordering.com, postmaster@outbacksteakonlineordering.com, postmaster@outbakonlineordering.com, postmaster@outbackonlineorder.com, postmaster@onlineoutbackordering.com, postmaster@ourbackonlineordering.com, and postmaster@oubackonlineordering.com. Also on November 22, 2013, 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 December 19, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm 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 issues 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 names be transferred from Respondent to Complainant.
A. Complainant
a) “Yanli Li” and “Zhichao Yang” are the same person or entity operating under different aliases. Complainant traced all the dispute domain names back to the same IP address. See Complainant’s Exhibit 2. Further, the name servers are identical for all ten disputed domain names. See Exhibit 3. Additionally, the fact that the disputed domain names are all similar and that the resolving content connected to each domain name is virtually identical indicates the domain names were all registered by a single person or entity. Lastly, Complainant points to National Mortgage LLC v. Zhichao Yang, FA 1450754 (Nat. Arb. Forum Oct. 10, 2012) where Zhichao Yang registered ten domain infringing domain names, noting that a reverse WHOIS report shows that Yanli Li registering two similar domain names to those in the National Mortgage case on the same date that Zhichao Yang registered nine of the infringing domain names in that case. See Complainant’s Exhibit 6.
b) Complainant is in the business of operating and franchising a successful chain of restaurants. Complainant has been in business since 1988 and operates more than 700 restaurants in the United States and more than 100 restaurants in over twenty countries and territories.
c) Complainant contends it has rights in the OUTBACK mark, used in connection with its restaurant chain. Complainant owns registrations for the OUTBACK mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,020,110 registered Feb. 15, 1994).
d) Respondent’s <outbackonlineodering.com>, <outbackonlineorderin.com>, <outbackonlinordering.com>, <outbackordering.com>, <outbacksteakonlineordering.com>, <outbakonlineordering.com>, <outbackonlineorder.com>, <onlineoutbackordering.com>, <ourbackonlineordering.com>, and <oubackonlineordering.com> domain names are all confusingly similar to Complainant’s OUTBACK mark. All of the disputed domain names include the generic terms “online,” “ordering,” “order,” or a misspelled version of one of the terms. The disputed domain names also include the generic top-level domain (“gTLD”) “.com.”
e) Respondent does not have any rights or legitimate interests in the disputed domain names.
a. Respondent is not commonly known by the disputed domain names, and Complainant has not authorized Respondent to use its mark in any way. The WHOIS record for all of the disputed domain names lists “Yan / Yanli Li” or “Zhichao Yang” as the domain name registrant.
b. The disputed domain names resolve to nearly identical landing pages displaying “Related Links.” See Complainant’s Exhibit 4. Click on one of the links take the user to another website displaying advertisement hyperlinks to Complainant’s official website, <outback.com> and websites of some of Complainant’s competitors. See Complainant’s Exhibit 4.
c. All the disputed domain names include common misspellings of either Complainant’s mark or the generic terms added to Complainant’s mark, and this constitutes typosquatting.
f) Respondent registered and is using the disputed domain names in bad faith.
a. Respondent has engaged in a pattern of cybersquatting in the current case, and Respondent has been ordered to transfer infringing domain names in other UDRP disputes.
b. Respondent’s use of competing hyperlinks on the advertisements page connected to the all the disputed domain names’ resolving websites disrupt Complainant’s business. See Complainant’s Exhibit 4.
c. Respondent’s is attempting to attract and mislead Internet users be creating a likelihood of confusions with Complainant’s mark for Respondent’s own commercial profit. Complainant presumes the links on the resolving websites provide Respondent with click-through revenue.
d. Respondent had knowledge of Complainant’s mark because Respondent registered ten domain names in the case that all include Complainant’s mark and each of the resolving websites directs Internet users to hyperlinks of Complainant’s competitors.
e. Respondent’s conduct constitutes typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered all of the dispute domain names on October 20, 2013.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that “Yanli Li” and “Zhichao Yang” are the same person or entity operating under different aliases. Complainant traced all the dispute domain names back to the same IP address. See Complainant’s Exhibit 2. Further, Complainant notes that the name servers are identical for all ten disputed domain names. See Exhibit 3. Additionally, Complainant states that the fact that the disputed domain names are all similar and that the resolving content connected to each domain name is virtually identical indicates the domain names were all registered by a single person or entity. Lastly, Complainant points to National Mortgage LLC v. Zhichao Yang, FA 1450754 (Nat. Arb. Forum Oct. 10, 2012) where Zhichao Yang registered ten domain infringing domain names, noting that a reverse WHOIS report shows that Yanli Li registering two similar domain names to those in the National Mortgage case on the same date that Zhichao Yang registered nine of the infringing domain names in that case. See Complainant’s Exhibit 6.
It is of the Panel’s view that the consolidation of the disputed domain names against multiple respondents should be allowed where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.
In circumstances indicating that a single person or entity has registered multiple domain names using fictitious names, common control or ownership has been found. See Yahoo!, Inc v. Somsak Sooksripanich and Others, WIPO Case No. D2000-1461; Yahoo! Inc. v. Yahoosexy.com, Yahoo-sexy.com, Yahoosexy.net, Yahousexy.com and Benjamin Benhamou, WIPO Case No. D2001-1188.
Previous panels have rendered against multiple respondents in single proceedings based on the presence of a common administrative or technical contact, or other instances of commonality in the registration information, such as the same postal address or email address. See, e.g., ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002, WIPO Case No. D2000-0034; Caesars World, Inc. v. Starnet Communications and Atlantic West Gaming Entertainment, Ltd., WIPO Case No. D2002-0066; Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057; Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587.
Previous Panels have also found multiple respondents to be commonly controlled where the content of their websites were substantially identical and referred Internet visitors to a common “homepage”. CSA International (a.k.a. Canadian Standards Association) v. John O. Shannon and Care Tech Industries, Inc., WIPO Case No. D2000-0071. See also Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments, WIPO Case No. D2004-0659 (consolidation of multiple respondents and multiple domain names appropriate where domain names were registered with same registrar and resolved to essentially identical websites).
The Panel notes that Complainant traced all the dispute domain names back to the same IP address. The Panel also observes that the name servers are identical for all ten disputed domain names. It is further recognized that the disputed domain names are all similar and that the resolving content connected to each domain name is virtually identical.
Given the circumstances above, the Panel finds that (i) the disputed domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation of all of the disputed domain names into the current proceedings would be fair and equitable to all parties. Accordingly, the Panel believes that Complainant has sufficiently presented evidence demonstrating that the disputed domain names are commonly controlled by a single Respondent who is using multiple aliases. Therefore, the Panel determines to permit the consolidation of all the disputed domain names against multiple respondents in the current proceedings.
Complainant established that it had rights in the mark contained in the disputed domain names.
Respondent has no rights to or legitimate interests in the disputed domain names.
Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain names in bad faith.
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.”).
Complainant contends that it has rights in the OUTBACK mark, used in connection with its restaurant chain. Complainant owns registrations for the OUTBACK mark with the USPTO (e.g., Reg. No. 2,020,110 registered Feb. 15, 1994). The Panel notes that Respondent resides or operates in a different country than that in which Complainant holds its trademark registrations; however, past panels have determined that a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country. See 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). Therefore, the Panel finds that Complainant has established rights in the OUTBACK mark pursuant to Policy ¶ 4(a)(i) via a valid trademark registration with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant’s claim Respondent’s <outbackonlineodering.com>, <outbackonlineorderin.com>, <outbackonlinordering.com>, <outbackordering.com>, <outbacksteakonlineordering.com>, <outbakonlineordering.com>, <outbackonlineorder.com>, <onlineoutbackordering.com>, <ourbackonlineordering.com>, and <oubackonlineordering.com> domain names are all confusingly similar to Complainant’s OUTBACK mark. Complainant asserts that all the disputed domain names include the generic terms “online,” “ordering,” “order,” or a misspelled version of the terms. The Panel notes that all the disputed domain names incorporate Complainant’s mark in its entirety, with the exception of the <outbakonlineordering.com>, <ourbackonlineordering.com>, and <oubackonlineordering.com> domain names, which each include Complainant’s mark misspelled by a single letter. The Panel also notes that the <outbackonlineodering.com>, <outbackonlineorderin.com>, <outbackonlinordering.com>, <outbacksteakonlineordering.com>, <outbakonlineordering.com>, , <onlineoutbackordering.com>, <ourbackonlineordering.com>, and <oubackonlineordering.com> domain names all include the generic terms “online” and “ordering” or a misspelled version of those terms. Additionally, the Panel notes that the <outbackonlineorder.com> domain name includes the generic terms “online” and “order,” and the <outbackordering.com> domain name includes only the generic term “ordering.” Complainant also notes that the disputed domain names also include the gTLD “.com.” First, the Panel finds that the addition of generic terms to a Complainant’s marks in a disputed domain name does not negate a finding of confusing similarity. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Next, the Panel finds that the addition of a gTLD is irrelevant for the purposes of confusing similarity. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that Respondent’s <outbackonlineodering.com>, <outbackonlineorderin.com>, <outbackonlinordering.com>, <outbackordering.com>, <outbacksteakonlineordering.com>, <outbakonlineordering.com>, <outbackonlineorder.com>, <onlineoutbackordering.com>, <ourbackonlineordering.com>, and <oubackonlineordering.com> domain names are all confusingly similar to Complainant’s OUTBACK mark under Policy ¶ 4(a)(i).
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.”).
Complainant claims Respondent does not have any rights or legitimate interests in the disputed domain names. Complainant asserts that Respondent is not commonly known by the disputed domain names, and Complainant has not authorized Respondent to use its mark in any way. Complainant notes that the WHOIS record for all of the disputed domain names lists “Yan / Yanli Li” or “Zhichao Yang” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by a disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the OUTBACK mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant contends the disputed domain names resolve to nearly identical landing pages displaying “Related Links.” See Complainant’s Exhibit 4. Complainant asserts that clicking on one of the links takes the user to another website displaying advertisement hyperlinks to Complainant’s official website, <outback.com>, and websites of some of Complainant’s competitors. Id. The Panel notes that the advertisement page includes links such as <lonestarsteakhouse.com> and <nationaldiningcoupons.com>. Id. In previous cases, panels have held that displaying competing hyperlinks on a confusingly similar domain name does not demonstrate a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because the disputed domain names resolve to websites that direct Internet users to hyperlinks of Complainant’s competitors.
Complainant asserts that all the disputed domain names include common misspellings of either Complainant’s mark or the generic terms added to Complainant’s mark, and this constitutes typosquatting. The Panel notes that each of the disputed domain names does in fact contain a common misspelling, but each domain name includes other terms in addition to Complainant’s OUTBACK mark. Previous panels have found typosquatting where the disputed domain name only included a common misspelling of the complainant’s mark and the domain name did not include any other terms. See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”); see also Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Therefore, the Panel acknowledges that, as the disputed domain names are altered beyond the usual, minute changes generally accepted to constitute typosquatting under Policy ¶ 4(a)(ii), Complainant’s arguments regarding typosquatting is disregarded.
Complainant states that Respondent registered and is using the disputed domain names in bad faith. Complainant notes that Respondent has engaged in a pattern of cybersquatting in the current case, and Respondent has been ordered to transfer infringing domain names in other UDRP disputes. The Panel notes that a search of the National Arbitration Forum decision database for Respondent results in sixteen cases involving “Zhichao Yang,” all of which ordered the transfer of the disputed domain names. See National Mortgage LLC v. Zhichao Yang, FA 1450754 (Nat. Arb. Forum Oct. 10, 2012); see also MoneyGram Int’l, Inc. v. Zhichao Yang, FA 1511887 (Nat. Arb. Forum Sept. 11, 2013). The Panel also notes that same search resulted in zero cases for “Yan / Yanli Li.” Previous panels have found that evidence of a respondent’s infringing conduct in other UDRP cases demonstrates bad faith registration and use under Policy ¶ 4(b)(ii) in the current case. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Additionally, previous panels have held that registering multiple infringing domain names in the current case is also bad faith registration and use under Policy ¶ 4(b)(ii). See YAHOO! INC v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in the respondent's registration of two domain names incorporating the complainant's YAHOO! mark). Therefore, the Panel finds that Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(ii) because Respondent has a history of registering infringing domain names that have been transferred by other UDPR proceedings and Respondent registered ten infringing domain names in the instant case.
Complainant claims Respondent’s use of competing hyperlinks on the advertisements page connected to all the disputed domain names’ resolving websites disrupt Complainant’s business. See Complainant’s Exhibit 4. The Panel notes that the advertisement page includes links such as <lonestarsteakhouse.com> and <nationaldiningcoupons.com>. Id. In previous cases, panels have found that using a confusingly similar domain name to display links that compete with a complainant constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names). Therefore, the Panel finds that Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) because Respondent is using confusingly similar domain names to display links that compete with Complainant.
Complainant contends Respondent’s is attempting to attract and mislead Internet users by creating a likelihood of confusions with Complainant’s mark for Respondent’s own commercial profit. Complainant presumes the links on the resolving websites provide Respondent with click-through revenue. In previous cases, panels have found that using a confusingly similar domain name to display competing links that presumably provide a respondent with click through revenue demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Therefore, the Panel finds Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent is using confusingly similar domain names to display links that compete with Complainant for Respondent’s own commercial profit.
Complainant asserts that Respondent had knowledge of Complainant’s mark because Respondent registered ten domain names in the case that all include Complainant’s mark and each of the resolving websites directs Internet users to hyperlinks of Complainant’s competitors. The Panel notes that constructive notice is generally regarded as insufficient to support a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith).
The Panel notes that Complainant is in the business of operating and franchising a successful chain of restaurants. Complainant has been in business since 1988 and operates more than 700 restaurants in the United States and more than 100 restaurants in over twenty countries and territories. As such, the Panel infers that Respondent could not have been unaware of Complainant’s mark at the time of its registering the disputed domain names and concludes that Respondent had actual knowledge of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Complainant lastly alleges that Respondent’s conduct constitutes typosquatting. Again, the Panel does not find that Respondent has engaged in typosquatting unless the disputed domain names contain only a common misspelling of Complainant’s mark without any added terms. See Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (holding that the practice of typosquatting “diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typosquatting’ has been recognized as evidencing bad faith registration and use under Policy ¶ 4(b)(iv).”; see also Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark). Therefore, the Panel does not find that Respondent’s conduct constitutes typosquatting.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <outbackonlineodering.com>, <outbackonlineorderin.com>, <outbackonlinordering.com>, <outbackordering.com>, <outbacksteakonlineordering.com>, <outbakonlineordering.com>, <outbackonlineorder.com>, <onlineoutbackordering.com>, <ourbackonlineordering.com>, and <oubackonlineordering.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Panelist
Dated: December 30, 2013
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