BR IP Holder LLC v. Scott Grady
Claim Number: FA1405001561806
Complainant is BR IP Holder LLC (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Scott Grady (“Respondent”), British Columbia, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <baskinrobbins.menu>, registered with GoDaddy.com, LLC.
The undersigned certifies that he 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 29, 2014; the National Arbitration Forum received payment on June 4, 2014.
On May 29, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <baskinrobbins.menu> 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 June 5, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 2014 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@baskinrobbins.menu. Also on June 5, 2014, 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 July 1, 2014, 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.
a) Complainant has used the BASKIN-ROBBINS mark since 1954 in connection with the operation of ice cream parlors, restaurants, and the sale of related products. Complainant owns registrations for the BASKIN-ROBBINS marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,185,045 registered January 15, 1982).
b) Respondent’s <baskinrobbins.menu> domain name is confusingly similar to Complainant’s BASKIN-ROBBINS mark. The disputed domain name removes only the hyphen from Complainant’s mark while adding the generic top-level domain (“gTLD”) “.menu.”
c) Respondent does not have any rights or legitimate interests in the <baskinrobbins.menu> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its BASKIN-ROBBINS mark in any way.
b. Respondent is using a pay-per-click website to divert Complainant’s customers and promote links to Complainant’s competitors. See Complainant’s Exhibit F.
d) Respondent registered and is using the <baskinrobbins.menu> domain name in bad faith.
a. Respondent is intentionally attempting to attract Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s BASKIN-ROBBINS mark. The <baskinrobbins.menu> domain name resolves to a pay-per-click website featuring third-party links to Complainant’s competitors, and Complainant presumes that Respondent obtains the click-through revenue derived from these links. See Complainant’s Exhibit F.
b. Respondent had knowledge of Complainant’s BASKIN-ROBBINS mark prior to registering the <baskinrobbins.menu> domain name because of Complainant’s extensive use of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1.Complainant is a United States company engaged in the ice cream industry, operating ice cream parlors, restaurants, and the sale of related products.
2. Complainant owns registrations for the BASKIN-ROBBINS marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,185,045 registered January 15, 1982).
3. Respondent registered the <baskinrobbins.menu> domain name on April 17, 2014.
4. Respondent is using a pay-per-click website to divert Complainant’s customers and promote links to Complainant’s competitors.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it can rely. Complainant contends it has used the BASKIN-ROBBINS mark since 1954 in connection with the operation of ice cream parlors, restaurants, and the sale of related products. Complainant states it owns registrations for the BASKIN-ROBBINS marks with the USPTO (e.g., Reg. No. 1,185,045 registered January 15, 1982). 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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the BASKIN ROBBINS mark within the meaning of Policy ¶ 4(a)(i) because Complainant holds valid registrations for the mark 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))
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BASKIN-ROBBINS mark. Complainant claims Respondent’s <baskinrobbins.menu> domain name is identical to Complainant’s BASKIN-ROBBINS mark. Complainant alleges that the disputed domain name removes only the hyphen from Complainant’s mark while merely adding the generic top-level domain gTLD “.menu.” Complainant urges that the gTLD term “menu” serves to increase confusion because Complainant operates in the restaurant business. Past panels have found that the removal of a hyphen and addition of a gTLD are irrelevant for the purposes of confusing similarity analysis. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Therefore, the Panel finds that Respondent’s <baskinrobbins.menu> domain name is identical to Complainant’s BASKIN-ROBBINS mark under Policy ¶ 4(a)(i).
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 BASKIN-ROBBINS mark and
to use it in its domain name, adding only the <.menu> generic Top Level domain which simply emphasizes the confusing similarity with the trademark;
(b) Respondent has been using a pay-per-click website to divert Complainant’s customers and promote links to Complainant’s competitors;
(c) Respondent has engaged in these activities without the consent or
approval of Complainant;
(d) Complainant alleges that Respondent does not have any rights or legitimate interests in the <baskinrobbins.menu> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its BASKIN-ROBBINS mark in any way. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as a whole in determining whether the respondent is commonly known by the 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 BASKIN-ROBBINS 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 <baskinrobbins.menu> domain name under Policy ¶ 4(c)(ii);
(e) Complainant claims Respondent is using a pay-per-click website to divert Complainant’s customers and promote links to Complainant’s competitors. See Complainant’s Exhibit F. The Panel notes that the links include “Local Restaurants,” “Dunkin Donut Coupons,” and “Free Printable Coupons.” Id. Past panels have held that using a confusingly similar domain name to promote a complainant’s competitors fails to demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use. See 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)). Therefore, the Pane 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 <baskinrobbins.menu> domain name displays third-party links of Complainant’s competitors without providing any other legitimate goods or services on the website.
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 alleges that Respondent registered and is using the <baskinrobbins.menu> domain name in bad faith. Complainant claims Respondent is intentionally attempting to attract Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s BASKIN-ROBBINS mark. Complainant states that the <baskinrobbins.menu> domain name resolves to a pay-per-click website featuring third-party links to Complainant’s competitors, and Complainant presumes that Respondent obtains the click-through revenue derived from these links. See Complainant’s Exhibit F. The Panel notes that the links include “Local Restaurants,” “Dunkin Donut Coupons,” and “Free Printable Coupons.” Id. In similar cases, panels have found the respondent to have violated Policy ¶ 4(b)(iv) regarding bad faith via attraction for commercial gain. 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 that Respondent registered and is using the <baskinrobbins.menu> domain name in bad faith under Policy ¶ 4(b)(iv) because Respondent is using the disputed domain name to operate a pay-per-click website promoting links to Complainant’s competitors.
Secondly, Complainant argues that Respondent had knowledge of Complainant’s BASKIN-ROBBINS mark prior to registering the <baskinrobbins.menu> domain name because of Complainant’s extensive use of the mark. 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). However, as the Panel determines Respondent was well aware of Complainant’s mark at the time Respondent registered the disputed domain name, the Panel concluds that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that [the] [r]espondent knew of, and targeted, [the] [c]omplainant’s trade mark.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
Thirdly, 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 names using the BASKIN-ROBBINS mark and in view of the conduct that Respondent has engaged in when using it, 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 <baskinrobbins.menu> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 3, 2014
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