Taco Bell Corp. v. Above.com Domain Privacy
Claim Number: FA1411001589043
Complainant is Taco Bell Corp. (“Complainant”), represented by Leanne Stendell of Yum! Brands, Inc., Texas, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mytacobell.com>, registered with Above.com Pty Ltd.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 7, 2014; the National Arbitration Forum received payment on November 7, 2014.
On November 11, 2014, Above.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <mytacobell.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 12, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 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@mytacobell.com. Also on November 12, 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 December 10, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 owns the TACO BELL mark through numerous trademark registrations throughout the world, including with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 820,073, registered Dec. 6, 1966). Complainant uses the TACO BELL mark to signify its food products, restaurant services, and related offerings. The <mytacobell.com> domain name is confusingly similar to the TACO BELL mark as the addition of non-distinctive terms, such as “my” and the generic top-level domain (“gTLD”) “.com,” does not alter the likelihood of confusion.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not currently known and has never been known by the disputed domain name or any variation thereof. Further, Complainant has not authorized Respondent’s use of the mark. Respondent has never used the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent uses the disputed domain name for the purpose of installing malicious content on users’ computers.
Respondent registered and is using the disputed domain name in bad faith. Respondent’s use of the disputed domain name to infect visitors’ computers with malware evinces bad faith use and registration. In addition, given the fame of Complainant, Respondent must have registered the disputed domain name with knowledge of Complainant, and therefore in bad faith. Respondent’s <mytacobell.com> domain name constitutes a typosquatted version of Complainant’s <mytacobell.yum.com> domain name, which is further indication of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Taco Bell Corp., owns the TACO BELL mark through numerous trademark registrations throughout the world, including with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 820,073, registered Dec. 6, 1966). Complainant uses the TACO BELL mark to signify its food products, restaurant services, and related offerings.
Respondent, Above.com Domain Privacy, registered the <mytacobell.com> domain name on July 16, 2012. Respondent uses the disputed domain name for the purpose of installing malicious content on users’ computers.
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 owns the TACO BELL mark under Policy ¶ 4(a)(i) through numerous trademark registrations throughout the world.. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office”).
The <mytacobell.com> domain name is confusingly similar to the TACO BELL mark under Policy ¶ 4(a)(i) as the addition of non-distinctive terms, such as “my” and the gTLD “.com,” does not alter the likelihood of confusion. The disputed domain name also differs from the mark by the omission of the space between the two-word mark. A domain name incorporating a mark is confusingly similar to that mark, despite the addition of a generic term, the omission of spacing, and the addition of a gTLD. See Warner Bros. Entm’t Inc.; New Line Prods., Inc. & DC Comics v. Procount Bus. Servs., FA 360942 (Nat. Arb. Forum Dec. 22, 2004) (finding that the addition of one or more generic terms and a gTLD as well as the omission of spaces fails to create a meaningful distinction between the disputed domain name and the mark within it because “[s]uch additions do not disguise the fact that the dominant features of the domain names are [c]omplainant’s marks, and each domain name is therefore confusingly similar to the marks pursuant to 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).
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized Respondent’s use of the TACO BELL mark. The WHOIS information lists “Above.com Domain Privacy” as registrant. Respondent is not commonly known by the <mytacobell.com> domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (the respondent was not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii) where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent has not used the <mytacobell.com> domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name for the purpose of installing malicious content on users’ computers. Complainant says that attempts to visit the disputed domain name are blocked by all major web browsers, alerting users to reported attacks through the resolving website. Respondent has not used the <mytacobell.com> domain name for 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). See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of 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)”).
Respondent’s use of the disputed domain name to infect visitors’ computers with malware constitutes bad faith use and registration under Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Nat. Arb. Forum December 17, 2010) (finding that a domain name attracting Internet users to a resolving website that attempts to download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii)”).
Given the fame of the TACO BELL mark, Respondent had actual knowledge of Complainant’s mark at the time of registration, and therefore registered the <mytacobell.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”).
However, Respondent’s <mytacobell.com> domain name does not constitute a typosquatted version of Complainant’s TACO BELL mark. Respondent’s domain name adds the term “my” to Complainant’s mark. Typosquatting is limited to instances where the disputed domain name incorporates a common misspelling of a mark so as to capitalize on users’ typing errors, and that the addition or removal of full words does not fall within the confines of typosquatting.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mytacobell.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 23, 2014
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