DECISION

 

Golden Krust Patties, Inc. v. Domain Administrator / Fundacion Privacy Services LTD

Claim Number: FA1803001778134

 

PARTIES

Complainant is Golden Krust Patties, Inc. (“Complainant”), represented by Glenn S. Bacal of Bacal & Garrison Law Group, Arizona, USA.  Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <goldenkrust.com>, registered with Media Elite Holdings Limited.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on March 21, 2018; the Forum received payment on March 21, 2018.

 

On March 25, 2018, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <goldenkrust.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name.  Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 March 28, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 17, 2018 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@goldenkrust.com.  Also on March 28, 2018, 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 April 23, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant, Golden Krust Patties, Inc., is a Caribbean food chain started by Jamaican immigrants that has over one hundred restaurants throughout the United States. Golden Krust is recognized as the largest Caribbean franchise in North America, and continues to grow, with new locations opening almost monthly in the United States and with plans to expand internationally. Complainant has rights in the GOLDEN KRUST mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,966,992, registered Jul. 12, 2005). See Compl. Annex 4 Ex. 1. Although the disputed domain name was originally registered in 2002, Respondent did not obtain ownership of the domain name until on or around October 15, 2017. Respondent’s <goldenkrust.com> domain name is identical to Complainant’s GOLDEN KRUST mark as it incorporates the mark in its entirety and merely adds a “.com” generic top-level domain (“gTLD”).

2.    Respondent has no rights or legitimate interests in the <goldenkrust.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the GOLDEN KRUST mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the domain name resolves to a parked webpage containing unrelated and competing third-party websites. See Compl. Annex 6.

3.    Respondent registered and is using the <goldenkrust.com> domain name in bad faith. Respondent uses the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Further, Respondent clearly had actual and/or constructive knowledge of Complainant’s rights in the GOLDEN KRUST mark prior to registering the disputed domain name. Finally, Respondent is offering the domain name for sale to the general public.

 

B.   Respondent

1.    Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Respondent’s <goldenkrust.com> domain name is confusingly similar to Complainant’s GOLDEN KRUST mark.

2.    Respondent does not have any rights or legitimate interests in the <goldenkrust.com> domain name.

3.    Respondent registered or used the <goldenkrust.com> domain name in bad faith.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

Complainant claims rights in the GOLDEN KRUST mark based upon the registration of the mark with the USPTO (e.g. Reg. No. 2,966,992, registered Jul. 12, 2005). See Compl. Annex 4 Ex. 1. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum Jul. 28, 2017) (finding that registration with the USPTO was sufficient to establish the Complainant’s rights in the HOME DEPOT mark). Therefore, the Panel holds that Complainant’s registration of the GOLDEN KRUST mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).

 

Complainant contends that although the <goldenkrust.com> domain name was originally registered in 2002, Respondent did not obtain ownership of the domain name until on or around October 15, 2017. The Panel notes that the date a respondent obtains ownership of a domain name, not the date of the initial registration of the domain name, is the relevant date for a Policy  ¶ 4(a)(i) analysis. See MG Icon LLC v DNS MANAGER / HTTP GROUP, FA 1649222 (Forum Jan. 4, 2016) (holding that the relevant date for Policy ¶ 4(a)(i) analysis is the date on which respondent first obtained registration ownership of the disputed domain name, and not the date that it was first registered by any entity).

 

Next, Complainant argues the <goldenkrust.com> domain name is identical to the Complainant’s GOLDEN KRUST mark, because it incorporates the mark in its entirety and merely adds the “.com” gTLD to the mark. The addition of a gTLD is not sufficient to distinguish a domain name from an incorporated mark and is irrelevant in a Policy ¶ 4(a)(i) analysis. See Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“[O]f course it is well established in prior UDRP cases that the addition of a ‘.com’ suffix is irrelevant when determining if a disputed domain name is identical or confusingly similar to a trademark.”). The Panel therefore determines the <goldenkrust.com> domain name is identical to the GOLDEN KRUST mark per Policy  ¶ 4(a)(i).

 

Rights or Legitimate Interests

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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

 

Complainant argues that Respondent has no rights or legitimate interests in the <goldenkrust.com> domain name, as Respondent is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum Jul. 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record for the <goldenkrust.com> domain lists the registrant as “Domain Administrator / Fundacion Privacy Services LTD,” and no information on the record indicates that Respondent owns any trademark or service mark rights in the GOLDEN KRUST mark. See Compl. Annex 5. The Panel therefore finds that Respondent has not been commonly known by the <goldenkrust.com> domain name under Policy ¶ 4(c)(ii).

 

Complainant also argues Respondent’s lack of rights or legitimate interests in the <goldenkrust.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to host a parked webpage with various hyperlinks. Using a domain name to resolve to a webpage that offers both competing and unrelated hyperlinks is not a bona fide offering of goods or services or a legitimate noncommercial fair use. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant contends that the domain name resolves to a parked webpage containing hyperlinks to third-party websites that are unrelated to and compete with Complainant, and provides a screenshot of the resolving webpage to prove the assertion. See Compl. Annex 6. The Panel therefore determines that Respondent uses the domain name to display various hyperlinks, failing to confer rights or legitimate interests in the <goldenkrust.com> domain name.

 

Registration and Use in Bad Faith

Complainant argues Respondent is offering the <goldenkrust.com> domain name for sale to the general public. A respondent’s offering a disputed domain name for sale to the general public can be evidence of bad faith under Policy  ¶ 4(b)(i). See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”). Complainant provides screenshots of a feature on the webpage associated with the domain name, which shows that the general public is able to submit an offer to buy the domain, with the minimum offer set at $500.00 USD. See Compl. Annex 16. The Panel agrees and therefore finds that the offering for sale of a domain name to the general public is evidence of bad faith under Policy ¶ 4(b)(i).

 

Additionally, Complainant contends that Respondent’s bad faith is indicated by its use of the <goldenkrust.com> domain name to host pay-per-click hyperlinks to third-party websites in attempt to gain commercially. Complainant claims that this use creates a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Use of a domain name to resolve to a page of sponsored pay-per-click hyperlinks to unrelated and competing third-party websites can demonstrate a respondent’s bad faith per Policy ¶ 4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”; see also Bank of Am. Fork v. Shen, FA 699645 (Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites). As noted above, Complainant provides a screenshot of the webpage associated with the domain name to further establish this assertion. See Compl. Annex 6. The Panel therefore finds that Respondent has registered and used the domain name in bad faith per Policy ¶ 4(b)(iv) by using the domain name in connection with third-party hyperlinks.

 

Finally, Complainant contends that it is inconceivable that Respondent could have registered the <goldenkrust.com> domain name without actual and/or constructive knowledge of Complainant’s rights in the mark. The Panel here may find that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int’l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) (“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.”). The Panel agrees with Complainant, however that Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name and find that actual knowledge  is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2015) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for find 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.”). Complainant avers that Respondent’s actual knowledge should be presumed based on the longstanding fame and notoriety of the mark at the time Respondent acquired the domain name in 2017. As such, the Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the name in bad faith.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <goldenkrust.com> domain name be TRANSFERRED from Respondent to Complaint.

 

 

John J. Upchurch, Panelist

Dated:  May 4, 2018