Taco John's Seasonings Limited Partnership v. DVLPMNT MARKETING, INC. / Domain Administrator
Claim Number: FA1409001578087
Complainant is Taco John's Seasonings Limited Partnership (“Complainant”), represented by Daniel J. Block, Colorado, USA. Respondent is DVLPMNT MARKETING, INC. / Domain Administrator (“Respondent”), St. Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tacojohn.com>, registered with DNC Holdings, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 3, 2014; the National Arbitration Forum received payment on September 3, 2014.
On September 3, 2014, DNC Holdings, Inc. confirmed by email to the National Arbitration Forum that the <tacojohn.com> domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, 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 September 4, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 24, 2014 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@tacojohn.com. Also on September 4, 2014, 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 September 30, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin 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 operates and franchises restaurants in the United States, using the trademark TACO JOHN’S in connection with this business. Complainant holds U.S. trademark registrations for TACO JOHN’S dating back to 1978, and first registered the domain name <tacojohns.com> in 1996.
Complainant contends that the disputed domain name <tacojohn.com> is confusingly similar to its mark. Complainant contends further that Respondent has no rights or legitimate interests in respect of the disputed domain name. In support thereof, Complainant alleges that Respondent is not known by the domain name, has no trademark rights in the name, and has used the domain name solely for a website containing links to websites of other companies, including two competitors of Complainant. Finally, Complainant contends that the domain name was registered and is being used in bad faith. Complainant asserts that Respondent is attempting to profit from its use of the domain name by creating a likelihood of confusion with Complainant’s mark, and that Respondent registered the domain name primarily for the purpose of selling it at a profit to Complainant or a competitor.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used 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.”).
The disputed domain name is identical to Complainant’s registered mark, but for the omission of the space, the apostrophe, and the letter S; and the addition of the “.com” top-level domain. These changes are insufficient to distinguish the domain name from Complainant’s mark. See, e.g., Fry's Electronics Inc. v. Haclav Vavel, Chen Fang Fang, D2009-0677 (WIPO Aug. 5, 2009) (finding <fryelectronics.com> confusingly similar to FRY’S ELECTRONICS); Ruth's Chris Steak House, Inc. v. Texas Internet, D2005-0292 (WIPO May 17, 2005) (finding <ruthchris.com> confusingly similar to RUTH’S CHRIS); V Secret Catalog, Inc. v. Internet Investment Firm Trust “In Trust,” FA 94344 (Nat. Arb. Forum May 9, 2000) (finding <victoriasecret.com> confusingly similar to VICTORIA’S SECRET). The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name corresponds to a minor variation of Complainant’s mark, and apparently its sole use has been for a website that displays pay-per-click advertising, including links to competitors of Complainant. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b) of the Policy, bad faith may be shown by evidence that:
(1) the domain name was acquired “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name”;
(2) the domain name was registered “in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent] ha[s] engaged in a pattern of such conduct”;
(3) Respondent registered the disputed domain name “primarily for the purpose of disrupting the business of a competitor”; or
(4) “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
There is insufficient evidence to support an inference that Respondent has attempted to profit by reselling the domain name, or that it acquired the domain name for this purpose. However, Respondent’s registration of a domain name that is nearly identical to Complainant’s mark, together with the use of that domain name to link to commercial websites that include two of Complainant’s competitors, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. See, e.g., Priceline.com, Inc. v. Above.com Legal, FA 1547289 (Nat. Arb. Forum Apr. 11, 2014); Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006). In addition, at least two previous Panels have found that this Respondent has engaged in a pattern of bad faith registrations under paragraph 4(b)(ii) of the Policy. See Coach, Inc. v. DVLPMMT Marketing, Inc., D2014-0784 (WIPO June 28, 2014); Manufacturers’ Agents Nat’l Ass’n v. Domain Administrator / DVLPMNT MARKETING, INC., FA 1553434 (Nat. Arb. Forum May 19, 2014).
Accordingly, the Panel finds that the disputed domain name was registered and has been used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tacojohn.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: October 1, 2014
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