Buck's Pizza Franchising Corp., Inc. v.
Orbit Domains c/o Doug Seeds
Claim
Number: FA0503000447213
Complainant is Buck's Pizza Franchising Corp. Inc. (“Complainant”),
represented by Barry I. Friedman, of Metz Lewis LLC, 11
Stanwix Street, 18th Floor, Pittsburgh, PA 15222. Respondent is Orbit
Domains c/o Doug Seeds (“Respondent”), 16621 Marie
Lane, Huntington Beach, CA 92647.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <buckyspizza.com>, registered with Enom,
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.
James
A. Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
28, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 11, 2005.
On
March 29, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <buckyspizza.com> is registered with Enom,
Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is
bound by the Enom, Inc. registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
April 19, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 9, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@buckyspizza.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
May 16, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed James A. Crary
as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum has discharged its
responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the "Rules") "to employ reasonably
available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <buckyspizza.com>
domain name is confusingly similar to Complainant’s BUCK’S PIZZA mark.
2. Respondent does not have any rights or
legitimate interests in the <buckyspizza.com> domain name.
3. Respondent registered and used the <buckyspizza.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Buck’s Pizza Franchising Corporation, Inc., is the franchisor of carryout and
delivery pizza shops that offer pizza, strombolis and hoagies.
Complainant
holds a registration with the United States Patent and Trademark Office for the
BUCK’S PIZZA mark (Reg. No. 2,082,092 issued July 22, 1997).
Respondent
registered the <buckyspizza.com> domain name on August 22,
2004. Respondent is using the disputed
domain name to redirect Internet users to a website that hosts a search engine
to link viewers to a variety of websites.
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."
In view of
Respondent's failure to submit a Response, the Panel shall decide this administrative
proceeding on the basis of Complainant's undisputed representations pursuant to
paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it
considers appropriate pursuant to paragraph 14(b) of the Rules.
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.
Complainant
established in this proceeding that it has rights in the BUCK’S PIZZA mark
through registration with the United States Patent and Trademark Office and by
continuous use in commerce. See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
(“Under U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that panel decisions have held that registration
of a mark is prima facie evidence of
validity, which creates a rebuttable presumption that the mark is inherently
distinctive. The respondent has the
burden of refuting this assumption.).
The
domain name registered by Respondent, <buckyspizza.com>, is
confusingly similar to Complainant’s mark because the disputed domain name
incorporates the dominant features of Complainant’s mark and merely omits the
apostrophe and adds the letter “y” to the word “buck’s.” The omission of the apostrophe and the
addition of the letter “y” doe not sufficiently differentiate the domain name
from the mark with regard to Policy ¶ 4(a)(i) because Complainant’s mark
continues to be the dominant element of Respondent’s domain name. See Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29,
2000) (finding the domain name <chichis.com> to be identical to the
complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen
from the mark); see also Mrs.
World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr.
24, 2000) (finding that punctuation is not significant in determining the
similarity of a domain name and mark); see also Am. Airlines, Inc. v. Data Art Corp., FA 94908 (Nat. Arb. Forum July 11, 2000)
(finding <americanairline.com> "effectively identical and certainly
confusingly similar" to the complainant's AMERICAN AIRLINES registered
marks).
Additionally,
Respondent’s <buckyspizza.com> domain name is confusingly similar
to Complainant’s BUCK’S PIZZA mark because the domain name incorporates the
dominant feature of Complainant’s mark and deviates with the addition of the
generic top-level domain “.com.” The
addition of a generic top-level domain does not negate the confusing similarity
between Respondent’s domain name and Complainant’s mark pursuant to Policy ¶
4(a)(i). See Nev.
State Bank v. Modern Ltd. – Cayman Web Dev., FA
204063 (Nat. Arb. Forum Dec. 6, 2003) (“It
has been established that the addition of a generic top-level domain is
irrelevant when considering whether a domain name is identical or confusingly
similar under the Policy.”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27,
2002) (finding it is a “well
established principle that generic top-level domains are irrelevant when
conducting a Policy ¶ 4(a)(i) analysis”).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel accepts all reasonable allegations set forth in the
Complaint as true. See Am.
Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003)
(finding that the failure to challenge a complainant’s allegations allows a
panel to accept all of the complainant’s reasonable allegations and inferences
as true); see also Wells
Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
(finding that the failure to respond to a complaint allows a panel to make
reasonable inferences in favor of a complainant and accept the complainant’s
allegations as true).
Once Complainant
establishes a prima facie case pursuant to Policy ¶ 4(a)(ii), the burden
shifts to Respondent to show that it does have rights or legitimate
interests. The Panel construes
Respondent’s failure to respond as an admission that Respondent lacks rights
and legitimate interests in the <buckyspizza.com> domain
name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Oct. 1, 2002) (holding that where the complainant has asserted that the
respondent has no rights or legitimate interests with respect to the domain
name it is incumbent on the respondent to come forward with concrete evidence
rebutting this assertion because this information is “uniquely within the
knowledge and control of the respondent”); see also Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the
complainant asserts that the respondent has no rights or legitimate interests
with respect to the domain, the burden shifts to the respondent to provide
credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228
(WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere
assertion by the complainant that the respondent has no rights or legitimate
interests is sufficient to shift the burden of proof to the respondent to
demonstrate that such a right or legitimate interest does exist); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that, by not submitting a response, the
respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the <buckyspizza.com>
domain name. Respondent is not licensed
or authorized to register or use a domain name that incorporates Complainant’s
mark. Therefore, the Panel concludes
that Respondent does not have rights or legitimate interests in the domain name
pursuant to Policy ¶ 4(c)(ii). See
Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating
“nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly
known by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply); see also
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).
Additionally,
the <buckyspizza.com> domain name is confusingly similar to
Complainant’s BUCK’S PIZZA mark and is used to redirect Internet users to a
website advertising links for a wide variety of third-party services and
products. The Panel finds that
Respondent’s use of the domain name that is confusingly similar to
Complainant’s mark to divert Internet users to a website that links to
third-party websites and for which Complainant presumably receives
click-through fees is not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb.
Forum March 17, 2003) (finding that the respondent’s diversionary use of the
complainant’s mark to attract Internet users to its own website, which
contained a series of hyperlinks to unrelated websites, was neither a bona fide
offering of goods or services nor a legitimate noncommercial or fair use of the
disputed domain names); see also Black & Decker Corp. v. Clinical
Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the
respondent’s use of the disputed domain name to redirect Internet users to
commercial websites, unrelated to the complainant and presumably with the
purpose of earning a commission or pay-per-click referral fee did not evidence
rights or legitimate interests in the domain name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
intentionally registered a domain name that incorporates Complainant’s BUCK’S
PIZZA mark for Respondent’s commercial gain.
Respondent registered and used the <buckyspizza.com> domain
name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent
intentionally attempted to attract potential customers from Complainant to
Respondent’s website by taking advantage of Internet users who are searching
under Complainant’s BUCK’S PIZZA mark and diverting them to Respondent’s
commercial website. See Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in
question is obviously connected with the complainant’s well-known marks, thus
creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that the respondent intentionally attempted to attract
Internet users to his website for commercial gain by creating a likelihood of
confusion with the complainant’s mark and offering the same services as the
complainant via his website); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13,
2000) (finding bad faith where the respondent attracted users to a website
sponsored by the respondent and created confusion with the complainant’s mark
as to the source, sponsorship, or affiliation of that website).
Additionally,
Respondent offered to sell the <buckyspizza.com> domain name to
Complainant for $10,000, an amount in excess of Respondent’s out-of-pocket
expenses related to the purchase of the disputed domain name. The Panel finds that Respondent’s offer to
sell the disputed domain name registration to Complainant for an amount in
excess of Respondent’s out-of-pocket expenses is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(i). See Dollar Rent A
Car Sys. Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding
that the respondent demonstrated bad faith by registering the domain name with
the intent to transfer it to the complainant for $3,000, an amount in excess of
its out of pocket costs); see also Cream
Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that
bad faith existed where the respondent offered the domain name for sale to the
complainant for $125,000); see also Wal-Mart
Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain
name is evidence of bad faith).
Moreover,
Respondent registered the <buckyspizza.com> domain name with
actual or constructive knowledge of Complainant’s rights in the BUCK’S PIZZA
mark due to Complainant’s registration of the mark with the United States Patent
and Trademark Office. Registration of a
domain name that is confusingly similar to a mark, despite actual or
constructive knowledge of another’s rights in the mark, is evidence of bad
faith registration and use pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); see also
Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof.”).
The Panel
finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <buckyspizza.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A, Crary, Panelist
Dated:
June 2, 2005
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