Panera, LLC and Pumpernickel Associates, LLC v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Whois Foundation
Claim Number: FA1711001760812
Complainants are Panera, LLC and Pumpernickel Associates, LLC (“Complainant”), represented by Hope V. Shovein of Brooks Kushman P.C., Michigan, USA. Respondent is DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Whois Foundation (“Respondent”), represented by William A. Delgado of WILLENKEN WILSON LOH & DELGADO LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <paneraworkday.com>, registered with NameKing.com 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 30, 2017; the Forum received payment on November 30, 2017.
On Dec 01, 2017, NameKing.com Inc. confirmed by e-mail to the Forum that the <paneraworkday.com> domain name is registered with NameKing.com Inc. and that Respondent is the current registrant of the name. NameKing.com Inc. has verified that Respondent is bound by the NameKing.com 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 December 5, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 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@paneraworkday.com. Also on December 5, 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.
A timely Response was received and determined to be complete on December 26, 2017.
On December 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.
On January 2, 2018 Complainant filed Additional Submissions in a timely manner according to the Forum's Supplemental Rule 7.
Complainant requests that the domain name be transferred from Respondent to Panera, LLC.
A. Complainant
Complainant asserts trademark rights in PANERA and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent offered to transfer the domain name after receipt of the Complaint and the Response petitions the Panel to order transfer of the domain name, foregoing analysis of the Complaint under the terms of the Policy.
C. Additional Submissions – Complainant
Complainant filed Additional Submissions compliant with the Rules which have been taken into account and referred to hereunder by the Panel in so far as they are relevant to the Decision in these proceedings.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses and licenses the use of the trademark PANERA in connection with the operation and franchised operation of bakery-café locations in the United States and Canada;
2. the trademark PANERA is the subject of, inter alia, United States Patent and Trademark Office (“USPTO”) Reg. No. 2,806,259, registered January 20, 2004;
3. the disputed domain name was registered on March 31, 2016;
4. the domain name redirects Internet users to websites not connected in any way with Complainant’s business under the trademark;
5. the domain name has been for sale; and
6. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
(a) Procedural Issues
(i) Multiple Complainants
The Complaint lists two companies, Panera, LLC and Pumpernickel Associates, LLC, as the complainants. Paragraph 3(a) of the Rules states that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
It is said that the named complainants are wholly-owned subsidiaries of Panera Bread Company. Further, Pumpernickel Associates, LLC is the owner of the relevant trademarks and Complainant Panera, LLC is the exclusive licensee of those marks in the United States.
In Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum, Dec. 28, 2003), the panel treated the two complainants as a single entity where both held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum, Feb. 6, 2004), the panel found a sufficient link between the named complainants where there was a license between them regarding use of the relevant trademark.
Respondent has not challenged the claimed relationship between the named complainants and the Panel accepts that there is a sufficient nexus between the companies that they may be treated as a single entity for the purposes of Rule 3(a). References in this decision to Complainant are accordingly references to both named complainants unless otherwise stated.
(ii) Consent to Transfer
As stated already, after the Forum notified Respondent of the Complaint, Respondent wrote to the Forum (and Complainant) indicating its readiness to voluntarily transfer the disputed domain name. That offer was also communicated to Complainant by the Forum but there was no reaction from Complainant.
The central plank of the Response is the petition that it is appropriate for the Panel to order transfer of the disputed domain name directly in view of Respondent’s agreement to transfer and having regard to certain earlier UDRP decisions. By its Additional Submissions, Complainant resists that outcome and asks for application of the Policy.
Accordingly, this is not a case where there has been a bilateral request for transfer as there was in, for example, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum, Jan. 13, 2004) where the panel ordered direct transfer of the domain name. Nor is it a scenario where the Complainant has been silent on the matter.
On the evidence, Respondent is a domain name reseller and for that reason intended to capitalize on the registration and sale of the domain name. Earlier panels have noted that “consent-to-transfer” is one way in which a respondent may attempt to avoid an adverse and publicly available finding against it.[i] The Panel decides for the reasons given in this decision that it is appropriate to apply the Policy.
(b) Primary Issues
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. [ii] Pumpernickel Associates, LLC is the owner of a USPTO registration for PANERA and so the Panel is satisfied that Complainant has trademark rights.
For the purposes of comparison of the domain name and the trademark, it is agreed by panelists that gTLDs can generally be disregarded, as “.com” can in this case. So, too, lack of punctuation can generally be disregarded unless the unpunctuated term is wholly ambiguous. [iii]
The domain name takes the whole of the trademark and adds the term “workday”. Complainant’s submissions regarding the value to be given to that added term are not altogether clear. The Complaint characterizes “workday” as a generic term but goes on to provide evidence that WORKDAY is the registered trademark of a third party, Workday, Inc., which provides salary and human resource information to Complainant’s employees (amongst others).
The Panel notes that the treatment of disputed domain names comprising compilations of trademarks (whether all owned by a single complainant or not) has been a source of difficulty under this aspect of paragraph 4(a)(i).[iv] Here Complainant does not claim rights to the WORKDAY mark but asserts that it uses the WORKDAY trademark in its business, through the third-party provider. As the Panel reads the Complaint, the implication is that the combination of the third party mark with Complainant’s trademark compounds the likelihood of confusion.[v]
This is not a case warranting deeper consideration of that argument since the Panel is satisfied that “workday” is a dictionary term which can be treated as generic and of lessor distinctive value when joined with Complainant’s trademark. Accordingly, the Panel finds the domain name confusingly similar to the trademark and so finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[vi]
The publicly available WHOIS information does not provide any prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark. The domain name has been advertised for sale. Further, Complainant provides evidence that the disputed domain name redirects Internet users to <private.bettersearchtools.com> or <privacysearch.link> or other sites prompting users to download search tools. None of those websites are related to Complainant’s business under the trademark. Accordingly, there is no evidence of use of the domain name in relation to a bona fide offering of goods or services, nor of a legitimate noncommercial or fair use of the name.[vii]
The Panel finds that Complainant has made a prima facie case. Accordingly, the onus shifts to Respondent to establish a legitimate interest in the domain name.
Respondent states that it has not contested or responded substantively to the Complaint. As indicated, the Response is primarily directed towards the petition that the Panel should order direct transfer by reason of the consent of Respondent. Nonetheless, the Panel notes as potentially relevant to the paragraph 4(a)(ii) analysis, the statement in the Response that “Respondent owns a portfolio of generic and descriptive domain names which it acquired through lawful and fair methods.”
There is no elaboration of that claim or evidence to support it. Even if Panel were to accept that Respondent is a generic domain name reseller, that fact might inform the question of the legitimacy of Respondent’s business model but it would not determine the different question of whether Respondent had a legitimate interest in the disputed domain name.[viii] Any legitimate interest in the domain name would hinge largely on the fact that it was, uncontroversially, a generic expression.[ix] Without departing from the Panel’s findings in connection with confusing similarity under paragraph 4(a)(i), it is noted here not only that “workday” is a term with a dictionary meaning, but also that “panera” is the Spanish word for a bread basket or bread bowl.[x] Nonetheless, it cannot be said that the combination of those terms produces a generic domain name.
The Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.
The Panel finds that Respondent’s conduct falls under paragraph 4(b)(iv) above.[xi] The use of the domain name is for commercial gain by way of pay-per-click referral revenue or otherwise. The Panel has already found the domain name to be confusingly similar to the trademark and there is a likelihood of confusion in terms of paragraph 4(b)(iv). That likelihood of confusion goes to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on that site.[xii]
The Panel finds registration and use of the domain name in bad faith and so finds that Complainant has satisfied the third and final element of the Policy.
Without in any way detracting from that finding the Panel notes here for the sake of completeness Respondent’s submission that it maintains its own dispute-resolution policy whereby it invites putative complainants to contact it regarding domain names that complainants believe violate a trademark. Respondent describes “a liberal transfer policy” whereby it usually agrees to voluntarily transfer a disputed domain name, irrespective of the legitimacy of the complainant’s arguments in order to avoid the time and expense of administrative proceedings.
That submission was made in the context of Respondent’s petition for direct transfer of the domain name but in terms of the Policy it might only be considered somehow relevant to paragraph 4(a)(iii). So that there might be no confusion about the matter, this Panel is of the view that such a practice cannot replace the requirement that a domain name be registered and used in good faith and cannot correct an action done 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 <paneraworkday.com> domain name be TRANSFERRED from Respondent to Panera, LLC.
Debrett G. Lyons, Panelist
Dated: January 8, 2018
[i] See, for example, Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008).
[ii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[iii] See, for example, Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum Apr. 9, 2007) (“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).”).
[iv] See, for example, G.D. Searle v. Martin Mktg., FA 118277 (Forum Oct. 1, 2002) (“Complainant has the right to protect its trademark whether standing alone, or included in a string of industry-related marks. Respondent’s inclusion of other drug-related marks [in the <viagra-xenical-celebrex-propecia-meridia-zyban.com> domain name] only increases the likelihood that confusion will result from use of the domain name.”). However, where a complainant fails to establish it has standing to bring a claim regarding an included third party mark, panels may decline to transfer the disputed domain name. Contrast, Dell Inc. v. Ionel Adrian Nicolae, FA 1683104 (Forum Aug. 22, 2016) (“Nvidia Corp. has not been joined as a Complainant in this matter and there is no nexus available through which Complainant can claim to have rights to the transfer of the <alienware-nvidia.xyz> domain name.”)
[v] Of itself, a difficult proposition since paragraph 4(a)(i) requires, strictly speaking, that the compared terms to be confusingly similar, not that there be a likelihood of confusion.
[vi] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[vii] See, for example, Haru Holding Corporation v. AI Matusita, FA 1679867 (Forum Aug. 11, 2016) holding that “unrelated use [of a disputed domain name] by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use”; see also Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”).
[viii] See, for example, Austin Pain Association v. Domain Admin / THIS DOMAIN IS FOR SALE / HugeDomains.com, FA1312001536356 (Forum, March 14, 2014) where the panel stated: “Panel accepts that Respondent is a domain name reseller and the reasoning of many panels that the business of registering and selling domain names for their generic value is a legitimate business practice protected under the Policy. See, e.g., Fifty Plus Media Corp. v. Digital Income, Inc., FA 94924 (Nat. Arb. Forum July 17, 2000). However, the issue is not the legitimacy of Respondent’s business model but whether it has a legitimate interest in the disputed domain name. Put another way, the legitimacy of Respondent’s business does not, of itself, create rights or a legitimate interest in a domain name corresponding with the trademark of another. If that trademark is generic, it might say something of the bona fides of the domain name registrant for the purposes of paragraph 4(c)(iii) of the Policy, but the mere genericness does not create a legitimate interest in a domain name if it corresponds with the trademark of another.”
[ix] Not, as is commonly argued by respondents, an expression composed of generic terms since that would obviously encompass numerous, well-known, trademarks such as Ray-Ban or Lucky Strike.
[x] A fact underscored by Complainant’s several registered trademarks for PANERA BREAD.
[xi] Were it necessary to do so, a respectable argument in Complainant’s favour could have also been made under Policy ¶ 4(b)(i). In this instance the Panel found the Policy ¶ 4(b)(iv) case slightly stronger for reasons which do not require elaboration.
[xii] See, for example, Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting; see also MySpace, Inc. v. Myspace Bot, FA 672161 (Forum May 19, 2006) holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme.
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