Papa John's International, Inc. v. Keith Hatton / USA24K.com
Claim Number: FA1511001647881
Complainant is Papa John's International, Inc. (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Keith Hatton / USA24K.com (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <papajohns.org>, <papa-johns.org>, <papajohnsbox.com>, <papajohnsbox.net>, <papajohnsbox.org>, and <papajohnspizza.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.
Mr. Maninder Singh as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 19, 2015; the Forum received payment on November 19, 2015.
On November 20, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <papajohns.org>, <papa-johns.org>, <papajohnsbox.com>, <papajohnsbox.net>, <papajohnsbox.org>, and <papajohnspizza.org> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 November 23, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 14, 2015 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@papajohns.org, postmaster@papa-johns.org, postmaster@papajohnsbox.com, postmaster@papajohnsbox.net, postmaster@papajohnsbox.org, postmaster@papajohnspizza.org. Also on November 23, 2015, 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.
A timely Response was received and determined to be complete on December 10, 2015.
On 21st December 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Mr. Maninder Singh as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
· Complainant, Papa John's International, Inc., claims to be the owner of hundreds of trademark registrations across the world, including in the United States, Canada and the United Kingdom.
· Complainant claims that its PAPA JOHN’S trademark is famous and well-known throughout the world and Complainant has spent a considerable amount of time and money protecting its intellectual property rights, including the PAPA JOHN’S trademark.
· Complainant claims to be the sole owner of the trademark relevant to this case, PAPA JOHN’S, at the U.S. Patent and Trademark Office (USPTO), the Canadian Intellectual Property Office (CIPO), the UK Intellectual Property Office (UKIPO), the Office for Harmonization in the Internal Market (OHIM), and dozens of other countries’ trademark registries. Tabulated statement showing registrations owned by the Complainant in Unites States, Canada, U.K. etc., has also been incorporated in the complaint (Exhibit A).
· Complainant claims to have been founded over 30 years ago by “Papa” John Schnatter in the back of his father’s tavern, Mick’s Lounge, in Jeffersonville, Indiana. Complainant claims to be the third largest take-out and pizza delivery restaurant chain in the world.
· Complainant claims to have a strong international presence with over 4,700 Papa John’s restaurants in 36 countries and territories. In 2014, Complainant claims to have reported total global system sales of $3.3 billion.
· Complainant claims to have gained significant brand recognition through its corporate sponsorships and community giving programs. Since 2010, Complainant claims to have been the official pizza restaurant of the National Football League (NFL) which has put the Complainant at the top of the national TV rankings and made them one of the most recognized brands among NFL fans.
· Complainant also claims to provide 4 sponsorship services to the University of Louisville, (KY) via the football stadium which bears their name, Papa John’s Cardinal Stadium.
· Complainant also claims that through one of their core values – PAPA – People Are Priority Always – it seeks to empower their employees and the communities by partnering with a number of organizations like the Salvation Army as their national charitable partner, and the WHAS Crusade for Children and the Junior Achievement program.
· Complainant claims that Papa John’s has been rated number one among all national pizza chains by the American Customer Satisfaction Index (ACSI) 14 times in the last 16 years and Papa John’s was ranked ninth among quick-service restaurants and thirteenth among hospitality Providers in the 2015 U.S. Hospitality & Travel RepTrak Report published by the Reputation Institute. Entrepreneur.com ranks Papa John’s within the top 30 franchises in their 2015 Franchise 500 Rankings
· Complainant Papa John’s claims to be the first national pizza company with online ordering at all of its U.S. delivery restaurants in 2001; the first to offer mobile ordering with SMS text in 2007 and in 2010 became the first national pizza company to launch a nationwide digital rewards program and for these reasons, Complainant was awarded the technology leader in the QSR pizza category in 2014. In December 2014 Papa John’s was recognized as the “First to 50” with more than 50 percent of its total U.S. sales (delivery and carryout) coming from digital and mobile channels (Exhibit C).
· Complainant claims to operate numerous websites, chief among them, is <papajohns.com>. According to Compete.com, in a 13-month period from May, 2014 – May, 2015 <papajohns.com> attracted an average of 3,556,891 unique visitors per month.
· Complainant further claims that its PAPA JOHN’S brand is well-recognized by consumers, industry peers, and the broader global community, and Complainant has established considerable fame and goodwill in the PAPA JOHN’S brand and trademark. Based on the above, as well as Complainant’s extensive and continuous use of the PAPA JOHN’S trademark, and the fact that Complainant has made significant investments over the years to advertise, promote, and protect this trademark, and others, across various forms of media, including the internet, Complainant claims that it enjoys a substantial degree of public recognition in these trademarks and has seen the marks become uniquely associated with the Complainant.
Contentions regarding Respondent’s disputed domain names <papajohns.org>, <papa-johns.org>, <papajohnsbox.com>, <papajohnsbox.net>, <papajohnsbox.org>, and <papajohnspizza.org> being identical to Complainant's "PAPA JOHN’S" mark.
· Complainant contends that by virtue of its federal trademark and service mark registrations (Exhibit A), Complainant is the owner of Complainant’s trademarks. Complainant refers to decision in United Way of America v. Alex Zingaus, FA 1036202 (NAF Aug. 30, 2007) – holding that Complainant’s registration of a mark with a trademark authority is sufficient to confer rights in the mark pursuant to Policy ¶ 4(a)(i).
· Complainant contends that a complainant is not required to register its marks within the country of the respondent in order to protect its rights in those marks. In this regard, Complainant places reliance on decision in Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (NAF April 23, 2007) – holding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction;
· Complainant contends that Respondent’s <papajohns.org>, <papa-johns.org>, and <papajohnspizza.org> contain Complainant’s PAPA JOHN’S and PAPA JOHN’S PIZZA trademarks in their entirety, thus resulting in domain names that are identical to the Complainant’s PAPA JOHN’S and PAPA JOHN’S PIZZA trademarks. Thus, the Disputed Domain Names should be considered identical and confusingly similar to the Complainant’s PAPA JOHN’S and PAPA JOHN’S PIZZA trademarks. In this regard, it relies upon the decision in The American Red Cross v. Leonard Habersham, FA 0103926 (National Arbitration Forum Mar. 6, 2002) and also Uniroyal Engineered Products, Inc. v. Nauga Network Services, D2000-0503 (WIPO July 18, 2000) – holding the disputed domain <nauga.net> confusingly similar to complainant’s NAUGA trademark.
· Complainant contends that Respondent’s omission of the apostrophe and addition of a hyphen do nothing to distinguish the disputed domain name <papa-johns.org> from Complainant’s trademarks. The deletion of the apostrophe and use of a hyphen do not diminish the confusing similarity between the disputed domain name and Complainant’s trademarks and should be disregarded for purposes of making this determination. In this regard, it relies upon the decisions in:-
(i) Mrs. World Pageants, Inc. v. Crown Promotions, FA 0094321 (National Arbitration Forum Apr. 24, 2000) – holding that punctuation is not significant in determining the similarity of a domain name and mark.
(ii) 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".
(iii) Health Devices Corp. v. Aspen S T C, FA 0158254 (National Arbitration Forum July 1, 2003) – holding that the addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i)
· Complainant further contends that in creating the disputed domain names <papajohnsbox.com>, <papajohnsbox.net>, <papajohnsbox.org> and <papajohnspizza.org>, Respondent has added the generic, descriptive terms “pizza” and “box” to Complainant’s PAPA JOHN’S trademark, thereby making the disputed domain names confusingly similar to Complainant’s trademark. The fact that such terms are closely linked and associated with Complainant’s brand and trademark only serves to underscore and increase the confusing similarity between the disputed domain names and the Complainant’s trademark. In this regard, the Complainant relies upon the decisions in:-
(i) Exxon Mobil Corporation v. mga enterprises limited, FA 1273445 (National Arbitration Forum Aug. 26, 2009) – holding that that the addition of the terms “travel” and “club,” which have an obvious relationship to Complainant’s [Exxon’s] business, to Complainant’s mark in the disputed domain name <exxontravelclub.com> create a confusing similarity between the disputed domain name and the registered mark.
(ii) Allianz of Am. Corp. v. Bond, FA 0680624 (National Arbitration Forum June 2, 2006) – holding that the addition of the generic term “finance,” which described the complainant’s financial services business…did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark.
(iii) Kohler Co. v. Curley, FA 0890812 (National Arbitration Forum Mar. 5, 2007) - finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business”.
Contentions regarding Respondent having no rights or legitimate interests in the disputed domain name
· Complainant contends that the granting of registrations by the USPTO, CIPO, UKIPO and the OHIM to Complainant for the PAPA JOHN'S trademark is prima facie evidence of the validity of the term “PAPA JOHN'S” as a trademark, of Complainant’s ownership of this trademark and of Complainant’s exclusive right to use the PAPA JOHN'S trademark in commerce on or in connection with the goods and/or services specified in the registration certificates.
· Complainant contends that Respondent is not sponsored by or affiliated with Complainant in any way. Complainant also contends that it has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names.
· Complainant further contends that Respondent is not commonly known by the Disputed Domain Names, which evinces a lack of rights or legitimate interests. Whois data identifies the Registrant as “KEITH HATTON / USA24K.COM,” which does not resemble the Disputed Domain Names in any manner (Exhibit F). Complainant contends that it has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s mark.
· Complainant also contends that, where no evidence, including the Whois record for the disputed domain names, suggests that Respondent is commonly known by the disputed domain names, then Respondent cannot be regarded as having acquired rights to or legitimate interests in the disputed domain names. In this regard Complainant relies upon the following decisions:-
(i) Instron Corp. v. Kaner, FA 0768859 (National Arbitration Forum Sept. 21, 2006) – finding that the respondent was not commonly known by the disputed domain names because the Whois information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute.
(ii) Coppertown Drive-Thru Sys., LLC v. Snowden, FA 0715089 (National Arbitration Forum July 17, 2006) – finding that respondent was not commonly known by the <coppertown.com> domain name, and so failed to show that it had rights to or legitimate interests in that domain name under Policy 4(c)(ii), where there was no evidence in the record, including the relevant Whois information, suggesting that respondent was commonly known by the disputed domain name.
· Complainant contends that the disputed domain names’ websites redirect internet users to the Respondent’s own website, <keithhatton.org> featuring Respondent’s candidacy for Columbus, Ohio City Council. As such, the Respondent is not using the disputed domain names to provide a bona fide offering of goods or services as allowed under Policy 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy 4(c)(iii), but is using the fame of the Complainant’s trademark to lure internet users to his own website. Complainant, in this regard, relies upon the decision in Finkl & Sons Co. v. James Finkl, FA 1623405 (National Arbitration Forum July 22, 2015) – holding that use of a domain name incorporating Complainant’s trademark to redirect Internet user to Respondent’s website “cannot be only incidental or accident, but rather indicates a general intent to profit from the goodwill and the confusion created by the identical nature of the Disputed domain with Complainant’s mark,” and “such conduct clearly does not encourage the recognition of a legitimate interest.”
· Complainant also contends that the Respondent has offered to sell the disputed domain name <papajohns.org> to the Complainant for an amount that far exceeds the Respondent’s out-of-pocket expenses in registering the domain (Exhibit G and Exhibit I), which serves as further evidence of Respondent’s lack of rights and legitimate interests. In this regard, Complainant relies upon the following decisions:-
(i) Reese v. Morgan, FA 0917029 (National Arbitration Forum Apr. 5, 2007) – holding that offer to sell a domain name in excess of the out-of-pocket expenses incurred in maintaining the domain name was evidence that the respondent had no true rights or legitimate interests.
(ii) Hewlett-Packard Co. v. High Performance Networks, Inc., FA 0095083 (National Arbitration Forum July 31, 2000) - finding no rights or legitimate interests where Respondent registered the domain name with the intention of selling its rights.
· Complainant further contends that Respondent registered the disputed domain name <papajohns.org> on February 15, 2003, disputed domain names <papa-johns.org>, <papajohnsbox.com>, <papajohnsbox.net> and <papajohnsbox.org> on September 14, 2015, and disputed domain name <papajohnspizza.org> on September 15, 2015, which is significantly after Complainant filed for registration of its PAPA JOHN’S trademark with the USPTO, Complainant’s first use in commerce of its trademark on September 1, 1981 and also significantly after the Complainant’s registration of its <papajohns.com> domain name on July 29, 1995.
Contentions regarding Respondent registered and used the domain names in bad faith
· Complainant contends that by registering domain names that incorporate Complainant’s trademark in its entirety and include generic and descriptive terms related to the Complainant, Respondent has created domain names that are confusingly similar to Complainant’s trademark, as well as its <papajohns.com> domain and, as such, Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business.
· Complainant contends that as per Respondent’s LinkedIn profile, Respondent spent several years working for the Complainant’s competitors, namely Pizza Hut, and in fact was employed by Pizza Hut when the disputed domain name <papajohns.org> was registered on February 15, 2003 (Exhibit M). In light of this and the facts set forth within this Complaint, it is not possible to conceive of a plausible situation in which the Respondent would have been unaware of the Complainant’s brands at the time the Disputed Domain Name <papajohns.org> was registered. In this regard, Complainant has made reference to decision in Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). Complainant further contends that where the disputed domain names incorporate Complainant’s trademark in its entirety and include generic and descriptive terms related to the Complainant it defies common sense to believe that Respondent coincidentally selected the precise domain without any knowledge of Complainant and its trademarks. Reliance in this regard has been placed on Asian World of Martial Arts Inc. v. Texas International Property Associates, D2007-1415 (WIPO Dec. 10, 2007)
· Complainant contends that in addition to the numerous trademarks filed in connection with Complainant’s business prior to Respondent’s registration of the Disputed Domain Names, Complainant is the third largest take-out and pizza delivery restaurant chain in the world and maintains a strong international presence with over 4,700 Papa John’s restaurants in 36 countries and territories. Papa John’s has been rated number one among all national pizza chains by the American Customer Satisfaction Index (ACSI) 14 times in the last 16 years. In addition, in the 2015 U.S. Hospitality & Travel RepTrak Report published by the Reputation Institute. Entrepreneur.com ranks Papa John’s within the top 30 franchises in their 2015 Franchise 500 Rankings, which demonstrates Complainant’s fame and as such, at the time of registration of the disputed domain names, the Respondent knew, or at least should have known, of the existence of the Complainant's trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se. In this regard, Complainant relies upon the following decisions:-
(i) Caesar World, Inc. v. Forum LLC, D2005-0517 (WIPO Aug. 1, 2005) – holding that given the Complainant’s worldwide reputation and presence on the Internet, indicates that Respondent was or should have been aware of the marks prior to registering the disputed Domain Name.
(ii) Victoria's Secret v. Hardin, FA 096694 (NAF Mar. 31, 2001) – holding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith.
· Complainant further contends that while constructive notice may sometimes alone be regarded as insufficient to support a finding of bad faith, numerous past panels have held that a respondent should be considered as possessing actual notice and knowledge of a complainant’s marks, and thus having registered the domain in bad faith, where the complainant’s mark is well-known and the circumstances support such a finding, as is the case here, particularly in consideration of Respondent’s former employ in the pizza industry. In this regard Complainant relies on the following decisions:-
(i) GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (NAF Mar. 13, 2012) – holding that a finding of bad faith hinges squarely on the probability that it was more likely than not that respondent knew of, and targeted, complainant’s trade mark.
(ii) Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (NAF Feb. 6, 2014) – holding that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.
(iii) Clearwater Systems, Inc. v. Glenn Johnson / Clear Water Systems of Remington Inc., D2014-0878 (WIPO Aug. 5, 2014) – holding that Knowledge and targeting [of a trademark] may be proven inferentially.
· Complainant also contends that Respondent should be considered to have known of the existence of the Complainant's trademarks due to the timing and circumstances surrounding Respondent’s registration of the disputed domain names <papa-johns.org>, <papajohnsbox.com>, <papajohnsbox.net> <papajohnsbox.org>, and <papajohnspizza.org>, which provides further evidence of bad faith registration. In addition to Complainant’s well-known trademarks and broad renown, Respondent’s registration of certain of the disputed domain names occurred shortly after receiving Complainant’s cease and desist letter for the disputed domain name <papajohns.org>. Indeed, Respondent admitted that he registered the disputed domain name <papajohnspizza.org> in response to receiving Complainant’s letter (Exhibit I).
· Complainant further contends that Respondent’s use of the disputed domain names constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use under Policy 4(b)(iii) because Respondent’s domain names are confusingly similar to Complainant’s trademarks and has caused actual confusion among Complainant’s customers. Complainant contends that its customer mistakenly believed Respondent’s <papajohns.org> domain name to belong to Complainant, with such confusion subsequently causing her to send an email to Respondent’s email in hopes of reaching Complainant. Respondent not only had that email active but also was monitoring it and responded to Complainant’s customer with a profane remark, potentially causing harm to Complainant’s goodwill and reputation (Exhibit J). Additionally, Respondent is using the disputed domain names to redirect internet users to Respondent’s personal website at <keithhatton.org> (Exhibit G). Further, Respondent continued using the disputed domain name <papajohns.org> after receiving Complainant’s cease and desist letter (Exhibit I). In this regard, Complainant relies upon decision in Finkl & Sons Co. v. James Finkl, FA 1623405 (NAF July 22, 2015) – holding that Respondent knowingly chose to use the exact and limited FINKL STEEL mark in the Disputed domain name…The Panel finds it difficult to accept the fact that the unauthorized use by an individual of a third party’s trademark with the intent to attract persons to visit his website can be use in good faith of a domain name.
· Complainant contends that the disputed domain names can only be taken as intending to cause confusion among internet users as to the source of the disputed domain names, and thus, the disputed domain names must be considered as having been registered and used in bad faith pursuant to Policy 4(b)(iv), with no good faith use possible. Complainant relies upon decisions in:-
(i) Vevo LLC v. Ming Tuff, FA 1440981 (NAF May 29, 2012) - holding that the only feasible explanation for Respondent’s registration of the disputed domain name is that Respondent intends to cause confusion, mistake and deception by means of the disputed domain name. Accordingly, any use of the disputed domain name for an actual website could only be in bad faith.
(ii) Indymac Bank v. Ebeyer, FA 0175292 (NAF Sept. 19, 2003) - holding that there is no conceivable way respondent could use the disputed domain names such that they would not infringe on complainant’s INDYMAC mark, and therefore it is illogical to await respondent’s use of the domain names to find bad faith use.
· Complainant also contends that in addition to the disputed domain names, the Respondent currently holds registrations for several other domain names that misappropriate the trademarks of a well-known brand and business. This fact demonstrates that the Respondent is engaging in a pattern of cybersquatting/typosquatting, which is evidence of bad faith registration and use of the disputed domain names. Following are some examples of cybersquatting/typosquatting by Respondent:
(i) <alibabagroup.org> (Alibaba Group Holding Limited – ALIBABA)
(ii) <alibabasite.net> (Alibaba Group Holding Limited – ALIBABA)
(iii) <alibabasite.org> (Alibaba Group Holding Limited – ALIBABA)
In this regard, Complainant relies upon following decisions:-
(i) Armstrong Holdings, Inc. v. JAZ Assoc., FA 0095234 (NAF Aug. 17, 2000) - holding that the Respondent violated Policy 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks.
(ii) Time Warner Inc. v. Zone MP3, FA 1008035 (NAF July 25, 2007) – holding that typosquatting combined with registration of as few as four domain names that are identical or confusingly similar to "protected marks" is sufficient to establish a pattern leading to bad faith.
(iii) Big Dog Holdings, Inc. v. Frank Day, FA 0093554 (NAF March 9, 2000) - holding that Respondent’s registration of “at least fifty domain names, some of which were the registered trademarks of other entities” was evidence of bad faith.
· Complainant further contends that Respondent is currently offering to sell the disputed domain name <papajohns.org> at auction for a starting bid of $2,500.00 USD (Exhibit G) and directly to the Complainant in response to a cease and desist letter for $5,000.00 (Exhibit I), which constitutes bad faith under Section 4(b)(i) because Respondent has demonstrated an intent to sell, rent, or otherwise transfer the disputed domain name for valuable consideration in excess of his out-of-pocket expenses. Complainant, in this regard, relies upon following decisions:-
(i) Broadcom v. Domain Management / Syed Hussain FA 1419370 (NAF Jan. 17, 2012) - holding that Respondent’s offer to sell <broadcomnetlogic.com> to the general public and to complainant constitutes bad faith under Section 4(b)(i)).
(ii) State Farm v. MIC c/o Syed Hussain FA 1322235 (NAF Jun. 2, 2010) - holding that respondent’s offer to sell the domain name <statefarm2save.com> constitutes bad faith).
(iii) Diners Club Int’l Ltd. v. Domain Admin******It’s all in the name******, FA 0156839 (NAF June 23, 2003) – holding that evidence of registration and use in bad faith may be inferred when the domain name notes that it is “available for lease or sale,” and “the sole value of the <www.dinerslub.com> domain name is dictated by its relation to Complainant’s registered DINERS CLUB mark.
B. Respondent
The Respondent in its Response to the Complaint has made the following submissions : -
· Respondent contends that he purchased <papajohns.org> on February 15, 2003, on the open market. He has and he will continue to use it to further his Constitutionally guaranteed, First Amendment rights.
· Respondent contends that on July 16, 2004, Complainant’s attorney contacted him in regard to <papajohns.org>. (Exhibit A) The document was a cease and desist order; as well as a demand to turn <papajohns.org> over to Complainant immediately.
· Respondent also contends that no action was taken by the Complainant after the July 6th, 2004 correspondence and as such Complainant knowingly allowed Respondent to renew <papajohns.org> 11 times. This surely shows a lack of expedience on Complainant’s part for not taking action sooner.
· Respondent also contends that he has never offered to sell <papajohns.org> to the Complainant.
· Respondent further contends that the domain names <papajohnsbox.com>, <papajohnsbox.net> and <papajohnsbox.org> were purchased with the intent of creating a site where people can share their thoughts on Complainant’s Papa John's products and service.
· Respondent also contends that Complainant has no legal right to these domain names.
· Respondent also contends that he not only worked for Pizza Hut, but also for the Complainant’s Papa Johns, which the Complainant has blatantly failed to point out. Respondent contends that he owned <papajohns.org> while employed with Complainant as well.
· Respondent also contends that he set all his domains up with an info@domainname.com email address when he purchases them and he has not even looked at the info@papajohns.org email account in over a decade.
· Respondent further contends that he has deleted this email address and has no information how someone got into that email account.
· Respondent also contends that he plans on keeping <papajohns.org>, <papajohnsbox.com>, <papajohnsbox.net>, and <papajohnsbox.org>, and using them as he sees fit. However, out of respect to Papa John’s and a love of their product he will gladly terminate his registration of <papa-johns.org> and <papajohnspizza.org>, as soon as this process permits him to do so.
· Respondent has consented to the transfer of the disputed domain names <papa-johns.org> and <papajohnspizza.org> to Complainant. While taking note of the consent for transfer of the two disputed domain names viz. <papa-johns.org> and <papajohnspizza.org> to the Complainant given by the Respondent, the Panel has decided to proceed with the case for rendering its findings.
· The Panel finds that Complainant has rights in its mark PAPA JOHN’S through use and various registrations in United States, Canada, U.K. etc. and with the USPTO (Reg. No. 1,383,735, registered on February 18, 1986).
· Respondent’s reply, to the contentions of the complainant, lacks merit.
· The Panel finds that the use of the disputed domain names <papajohns.org>, <papa-johns.org>, <papajohnsbox.com>, <papajohnsbox.net>, <papajohnsbox.org>, and <papajohnspizza.org> by the Respondent is in bad faith and the Respondent has no rights or legitimate interests in relation to the domain name.
· The Panel also finds that the domain names <papajohns.org>, <papa-johns.org>, <papajohnsbox.com>, <papajohnsbox.net>, <papajohnsbox.org>, and <papajohnspizza.org> deserve to be transferred to the Complainant and the Respondent is not entitled to use these domain names. The Complaint deserves to be allowed forthwith and the Panel decides accordingly. However, in terms of the ICANN Policy and the requirements thereunder, the formal observations / findings of the Panel are as under.
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.
· The Panel observes that the Complainant claims rights in the PAPA JOHN’S mark through its registration with the USPTO. The PAPA JOHN’S mark is registered at the USPTO (Reg. No. 1,383,735, registered on February 18, 1986) which sufficiently showcases Complainant’s rights in the trademark under Policy 4(a)(i). In this regard, the panel relies upon decision of this Forum in Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) - holding that a trademark registration with the USPTO is adequate to establish rights pursuant to Policy ¶ 4(a)(i).
· The Panel agrees with the Complainant’s contention that the Respondent’s <papajohns.org> and <papa-johns.org> domain names are identical to the PAPA JOHN’S mark because they contain the entire mark, less the space and apostrophe, combined with only changes such as hyphens and the generic top-level domain (gTLD) “.org.” Therefore, the Panel finds that Respondent’s <papajohns.org> and <papa-johns.org> domain names are identical to Complainant’s PAPA JOHN’S mark under Policy ¶ 4(a)(i). In this regard, the panel places reliance on following decisions:-
(i) 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";
(ii) Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) – holding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”.
· The Panel observes that the Complainant contends that Respondent’s <papajohnsbox.com>, <papajohnsbox.net>, <papajohnsbox.org>, and <papajohnspizza.org> domain names are confusingly similar to the PAPA JOHN’S mark because they contain the entire mark, less the space and apostrophe, combined with only changes such as the additional words “box,” or “pizza” and the gTLDs “.com,” “.org,” and “.net.” Complainant further contends that because it is leading seller of delivery pizza, which is delivered in boxes, both the terms “pizza” and “box” are descriptive of its business. As such, the Panel finds that Respondent’s <papajohnsbox.com>, <papajohnsbox.net>, <papajohnsbox.org>, and <papajohnspizza.org> domain names are confusingly similar to Complainant’s PAPA JOHN’S mark pursuant to Policy ¶ 4(a)(i). In this regard, the Panel find it useful to refer to following decisions:-
(i) U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) - holding that elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).;
(ii) Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) – holding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark.
· The attention of the Panel is drawn to the fact that the 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. In this regard, following decisions are relevant:-
(i) 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;
(ii) AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) – holding that 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 observes that the Complainant alleges that Respondent is not commonly known by the disputed domain names because there is no information on record to indicate such, and because Complainant has not authorized Respondent to use the PAPA JOHN’S mark. The Panel notes that the WHOIS information lists “Keith Hatton” as Registrant and that Respondent does not argue being known by the <papajohns.org>, <papa-johns.org>, <papajohnsbox.com>, <papajohnsbox.net>, <papajohnsbox.org>, and <papajohnspizza.org> domain names. As such, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). The Panel, in this regard, places its reliance on decision of this forum in Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) - concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name.
· The Panel notes that the Complainant claims that Respondent has failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses each resolving website to redirect to an unrelated webpage promoting Respondent’s candidacy for City Council of Columbus, Ohio (Exhibit G). The Panel finds this evidence sufficient to show that the domains are used in a manner unrelated to Complainant. The Panel also finds that Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c) (iii). In this regard, the Panel finds it useful to refer to decision in Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) – holding that Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).
· The Panel observes that Complainant has urged that Respondent lacks rights and legitimate interests in the <papajohns.org> domain name because it has been listed for sale for $2,500.00 and in all of the domain names at issue because Respondent offered to sell them to Complainant for $5,000.00 (Exhibit G), and of Respondent’s offer to sell all of the domains (Exhibit I). The Panel agrees that Respondent has offered the domains for sale and that the Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). The Panel places its reliance on following decisions:-
(i) Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) – holding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii);
(ii) Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) – holding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name.
· The Panel finds no merit in Respondent’s contention that it registered the <papajohnsbox.com>, <papajohnsbox.net>, and <papajohnsbox.org> domain names for the purpose of operating websites for people to share their thoughts about Complainant’s products and services. The Panel also notes that Respondent does not specify a purpose in registration of the <papajohns.org>, <papa-johns.org>, and <papajohnspizza.org> domain names. Respondent’s contention of having a Constitutionally protected right all of the domains at issue, as protected by the First Amendment is also rejected as, while the Policy does allow for domains to resolve to pages that may be critical, or otherwise descriptive, of a complainant, free speech protections typically apply to the content of the website, and not the domain name itself. The Panel relies upon decision in Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) – holding that the domain name <eastman-chemical.com> is not protected by free speech although the content of the website supported by this domain name is protected. Free speech cannot be used as a defence against the use of a confusingly similar mark as a domain name.
· Having regard to the above, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain names <papajohns.org>, <papa-johns.org>, <papajohnsbox.com>, <papajohnsbox.net>, <papajohnsbox.org>, and <papajohnspizza.org> pursuant to Policy 4(a)(ii).
· The Panel notes that the Complainant argues that Respondent uses the <papajohns.org> domain name in bad faith because it has been listed for sale for $2,500.00 and that Respondent uses all of the domains in bad faith because Respondent offered to sell them to Complainant for $5,000.00 (Exhibit G), as well as evidence of Respondent’s offer to sell all of the domain names (Exhibit I). The Panel finds this evidence sufficient to show that Respondent has attempted to sell the domains. The Panel finds itself in agreement with the Complainant’s contention that the Respondent uses them in bad faith under Policy ¶ 4(b)(i). In this regard, the Panel refers to the following decisions:-
(i) George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) – holding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name);
(ii) Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000) - finding bad faith where the respondent offered to sell the Domain Name to the complainant for $10,000 when the respondent was contacted by the complainant.
· Complainant alleges that Respondent has demonstrated a pattern of bad faith registrations. The Panel notes that there are six domain names at issue in this proceeding. The Panel finds that the Respondent has engaged in a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). The Panel refers to decisions in Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) – holding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii).
· Complainant contends that Respondent registered the disputed domain names with actual or constructive knowledge of Complainant’s rights in the PAPA JOHN’S mark. Complainant argues that Respondent has demonstrated actual knowledge through the specific choice to register domains containing the PAPA JOHN’S mark along with descriptive terms and constructive knowledge through Complainant’s trademark registrations. The Panel notes that Complainant contends that Respondent registered all of the domains at issue except for the <papajohns.org> domain name in September 2015, after having received Complainant’s cease and desist letter (Exhibit I). The Panel notes that in Respondent’s answer to this letter, Respondent admits to having registered the <papajohnspizza.org> domain after having received the letter. The Panel finds that Complainant has demonstrated actual, rather than constructive, knowledge on Respondent’s part of Complainant’s rights in the PAPA JOHN’S mark at the time the domains were registered. The Panel also finds that Respondent registered the domains in bad faith under Policy ¶ 4(a)(iii). The Panel places its reliance on the decision in Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) – finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights).
· Complainant alleges that Respondent’s bad faith is further demonstrated by its use of an e-mail address hosted at the <papajohns.org> domain name and through the redirection of each resolving webpage to an unrelated webpage promoting Respondent’s candidacy for City Council of Columbus, Ohio. Complainant has provided a copy of an e-mail exchange involving an e-mail hosted at the <papajohns.org> domain name (Exhibit J). Complainant has also provided evidence of the website’s redirection (Exhibit G). The Panel holds that Respondent registered and uses the disputed domain names in bad faith.
· The Panel observes that the Complainant has contended that the Respondent had worked for Pizza Hut who is a competitor of the Complainant. In response to this contention of the Complainant, the Respondent has contended that it was not appropriate for the Complainant to not to mention in the complaint that he had also worked with Papa John’s. The Panel finds such a contention on behalf of the Respondent to be entirely without any merit deserving rejection. In fact, such a factual position clearly demonstrates and establishes that there is no need to infer knowledge of the Respondent regarding the domain name of the complainant and the same is apparent on the record. The Respondent was fully conscious and aware of the existence and popularity of Papa John’s and there is no need to read any probability to the effect that it was more likely than not that the Respondent knew of, and targeted, Complainant’s trade mark. It is apparent that the registration of the impugned domain name by the Respondent was in complete bad faith.
· The Panel agrees with Complainant’s contentions that Respondent registered and used the disputed domain names in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <papajohns.org>, <papa-johns.org>, <papajohnsbox.com>, <papajohnsbox.net>, <papajohnsbox.org> and <papajohnspizza.org> domain names be TRANSFERRED from Respondent to Complainant.
(MANINDER SINGH)
Panelist
Dated: 29.12.2015
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