CFA Properties, Inc. v. Mike Tomson
Claim Number: FA1710001756500
Complainant is CFA Properties, Inc. (“Complainant”), represented by Sarah P. LaFantano of Alston & Bird LLP, Georgia, USA. Respondent is Mike Tomson (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chick-fil-as.us>, registered with NameCheap, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 31, 2017; the Forum received payment on October 31, 2017.
On November 1, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <chick-fil-as.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 November 1, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 2017 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@chick-fil-as.us. Also on November 1, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On November 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
1. Respondent’s <chick-fil-as.us> domain name is confusingly similar to Complainant’s CHICK-FIL-A mark.
2. Respondent does not have any rights or legitimate interests in the <chick-fil-as.us> domain name.
3. Respondent registered and uses the <chick-fil-as.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses the CHICK-FIL-A mark in conjunction with its restaurant business. Complainant has registered the CHICK-FIL-A mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,209,211, registered Sept. 14, 1982). Complainant has also registered the CHICK-FIL-A mark with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA379,650, registered Feb. 8, 1991).
Respondent registered the <chick-fil-as.us> domain name on April 5, 2017, and uses it to phish for Internet users’ personal information in exchange for fake coupons for Complainant’s restaurants.
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(f), 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 (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 Panel finds that Complainant’s registrations with USPTO and CIPO are sufficient to establish rights in the CHICK-FIL-A mark. See State Farm Mutual Automobile Insurance Company v. Henry Francis, FA 1738716 (Forum July 28, 2017) (acknowledging complainant’s rights in a mark when it had registered the mark with the United States Patent and Trademark Office and the Canadian Intellectual Property Office).
Respondent’s <chick-fil-as.us> incorporates the CHICK-FIL-A mark in its entirety, adding the letter “s” and the “.us” ccTLD. The addition of the letter “s” to a mark does not distinguish the disputed domain name from the mark. See FCOA, LLC v. Domain Admin / Whois Privacy Corp., FA 1619791 (June 23, 2015) (holding the <foresmost.com> domain name confusingly similar to the FOREMOST mark, noting that the domain name “makes a trivial addition to the trademark in the form of addition of the letter, ‘s.’”). Likewise, the addition of a ccTLD to a fully incorporated mark is inconsequential to a Policy ¶ 4(a)(i) analysis. See Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Forum Dec. 11, 2006) (holding that “it is well established that the top-level domain, here “.us,” is insignificant with regard to UDRP analysis” when determining confusing similarity). Therefore, the Panel finds that Respondent’s <chick-fil-as.us> is confusingly similar to Complainant’s CHICK-FIL-A mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 (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 (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 argues that Respondent does not have rights or legitimate interests in <chick-fil-as.us> and does not own a trade or service mark identical to the disputed domain name. Absent evidence to the contrary, The Panel finds that Respondent does not have rights in the disputed domain name for the purposes of Policy ¶ 4(c)(i). See BILD Gmbh & Co. KG v. James Cousin, FA 1641283 (Forum Nov. 11, 2015) (“Respondent has failed to respond in this proceeding, and has not provided any evidence to indicate it owns a mark identical to the <bildpl.us> domain name. Such a lack of evidence is sufficient to allow this Panel to find Respondent has no rights to such a mark.”).
Complainant argues that Respondent is not commonly known by the disputed domain name, and states that it has not authorized or licensed Respondent to use the CHICK-FIL-A mark. The WHOIS information associated with this case identifies Respondent as “Mike Tomson.” The respondent is not commonly known by a disputed domain name where there is no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by that name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006). Likewise, absent affirmative evidence in the record, the respondent lacks authorization to use the complainant’s mark. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question). Thus, the Panel finds that Respondent is not commonly known by the <chick-fil-as.us> domain name.
Complainant asserts that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the disputed domain name. Respondent’s <chick-fil-as.us> domain name resolves to a survey website prominently displaying Complainant’s mark and logo. The diversion of Internet users to a respondent’s fraudulent survey website evinces a lack of rights and legitimate interests. See Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“Respondent has not used the Domain Name in connection with a bona fide offering of goods or services, nor has Respondent made legitimate noncommercial or fair use of the Disputed Domain Name. Respondent is intentionally attempting to divert Internet users to its malware scam/survey website via the Disputed Domain and is therefore not making legitimate noncommercial, or fair use of the Disputed Domain pursuant to Policy ¶4(a)(ii).”). Moreover, Complainant demonstrates that Respondent uses the <chick-fil-as.us> domain name to phish for Internet users’ personal information in exchange for fake coupons for Complainant’s restaurants. The use of a disputed domain name to phish for Internet users’ personal information is further evidence of a lack of rights or legitimate interest in the domain. See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Thus, the Panel finds that Respondent does not have rights or legitimate interests in the <chick-fil-as.us> domain name pursuant to Policy ¶¶ 4(c)(ii) and (iv).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent uses the <chick-fil-as.us> domain name to attract Internet users to a fraudulent survey website that phishes for users’ personal information, presumably for Respondent’s commercial gain. The Panel finds that this is clear evidence of bad faith under Policy ¶ 4(a)(iii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015); Citigroup Inc. v. Domain MANAGER / Domain Brokers, FA1505001621817 (Forum July 13, 2015) (finding that the respondent’s use of a survey, in which Internet users were encouraged to enter personal information to complete, indicated bad faith registration and use pursuant to Policy ¶ 4(a)(iii)).
Complainant contends that, in light of the fame, notoriety, and long-standing use of Complainant's CHICK-FIL-A mark, it is inconceivable that Respondent could have registered the disputed domain names without actual knowledge of Complainant's rights in the mark. The Panel agrees, noting also the content of Respondent’s resolving website, and finds that this is additional evidence of bad faith under Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (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).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chick-fil-as.us> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 28, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page