TGI Friday’s of Minnesota, Inc v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Domain Registries Foundation
Claim Number: FA1604001671159
Complainant is TGI Friday’s of Minnesota, Inc (“Complainant”), represented by Megan R. Myers of Pirkey Barber PLLC, Texas, USA. Respondent is DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Domain Registries 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 <tgifridaymenu.com>, registered with GoDaddy.com, LLC.
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.
Dr. Reinhard Schanda as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 19, 2016; the Forum received payment on April 19, 2016.
On April 20, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <tgifridaymenu.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 April 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 11, 2016 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@tgifridaymenu.com. Also on April 21, 2016, 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 May 9, 2016.
On May 17, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dr. Reinhard Schanda 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant, TGI Friday’s of Minnesota, Inc., through its licensee and franchisees, have been offering bar and restaurant services in over 900 restaurants for nearly 50 years. Complainant has rights in the T.G.I. FRIDAY’S, TGI FRIDAYS, and related marks (the “FRIDAY” marks) through registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 925,656, registered Dec. 14, 1971). Respondent’s <tgifridaymenu.com> domain is confusingly similar to the FRIDAY marks as the domain merely adds the generic top-level domain(“gTLD”) “.com,” the word “menu,” and removes the letter “s” and punctuation.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the domain name, nor has Respondent been licensed or otherwise permitted by Complainant to use its FRIDAY marks. Further, Respondent’s use of the domain, to operate a monetized parking page displaying links that redirect to different pages on Respondent’s domain that displays ads and links to third-party websites, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain in bad faith. Respondent’s bad faith is evident through presumably financially benefitting using the disputed domain to display various links associated with competing and non-competing products and services on third party websites. Respondent’s use of a domain name that is confusingly similar to a famous mark is also evidence of bad faith. Lastly, Respondent has engaged a privacy service.
B. Respondent
Respondent is a company that owns a portfolio of generic and descriptive domain names. Respondent, without admitting fault or liability to Complainant’s contentions, consents to transfer of the <tgifridaymenu.com> domain name.
The Panel finds that:
1. The domain name <tgifridaymenu.com> is confusingly similar to Complainant’s registered trademarks.
2. The Respondent has not established rights or legitimate interests in the domain name <tgifridaymenu.com>.
3. The Respondent has registered and is using the domain name <tgifridaymenu.com> in bad faith.
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.
Preliminary Issue: Consent to Transfer
Respondent consents to transfer the <tgifridaymenu.com> domain name to Complainant. However, the Panel decides that Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel. The Panel finds that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
Therefore, the Panel decides that it would like to analyze the case under the elements of the UDRP.
Complainant claims to have rights in the FRIDAY marks through registration of the marks with the USPTO. (e.g., Reg. No. 925,656, registered Dec. 14, 1971). See Compl., at Attached Ex. C. Panels have found, and this Panel also finds, that registration of a mark with the USPTO is sufficient to establish rights in the mark. See Dell Inc. v. Rino Manangkalangi, FA 1626784 (Forum Aug. 5, 2015) (holding that Complainant has rights in the ALIENWARE trademark and service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with the USPTO.).
Complainant also claims that Respondent’s domain <tgifridaymenu.com> is confusingly similar to the FRIDAY marks, one of which is T.G.I. FRIDAY’S. The domain differs from the T.G.I. FRIDAY’S mark through adding the gTLD “.com,” the word “menu,” and removing the letter “s” and punctuation. Panels routinely find that adding the gTLD “.com” is irrelevant to an analysis of confusing similarity. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Panels have also found that adding generic terms to a mark in a domain does not differentiate a domain from a mark. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). Similarly, the presence or absence of punctuation is not significant to a confusing similarity analysis. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark). Finally, Panels have found the removal of the letter “s” in a domain does not prevent a finding of confusing similarity. See ShipCarsNow, Inc. v Wet Web Design LLC, FA 1601260 (Forum Feb. 26, 2015) (establishing a confusing similarity between the <shipcarnow.com> domain name and the SHIPCARSNOW mark because the domain name simply removes the letter “s”). Taken together, this Panel finds that Respondent’s <tgifridaymenu.com> is confusingly similar to the T.G.I. FRIDAY’S mark pursuant to Policy ¶ 4(a)(i).
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made 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 prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of panel decisions, this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Technologies, Inc. v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corporation v. Khaled Ali Soussi, D2000-0252 WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (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 G.D. Searle v. Martin Mktg., FA 118277 (Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); 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 right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant asserts that Respondent is not commonly known by the domain name, nor has Respondent been licensed or otherwise permitted by Complainant to use its FRIDAY marks. WHOIS information associated with the <tgifridaymenu.com> domain indicates that the registrant is, “DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin,” of the organization, “Domain Registries Foundation.” When considering WHOIS information that doesn’t match a disputed domain name, panels have found a respondent to not be commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Accordingly, this Panel finds that Respondent is not commonly known by the disputed domain per Policy ¶ 4(c)(ii).
Complainant next asserts that Respondent’s use of the domain, to operate a monetized parking page displaying links that redirect to different pages on Respondent’s domain that displays ads and links to third-party websites, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain <tgifridaymenu.com> resolves to a website that that lists various related links with titles such as, “TGI Fridays Menu,” “Dominos Pizza Menu Specials,” “Discount Oil Change Coupons.” Complainant claims that clicking on these links will divert users to third-party websites not affiliated with Complainant’s business. Panels have found that using a domain to display links and advertisements to services or products, some of which compete with a complainant’s business, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Provide Commerce, Inc. v. e on Craze, FA1506001626318 (Forum August 11, 2015) (holding that the respondent was not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii) where the respondent was using the disputed domain name to host generic links to third-party websites, some of which directly competed with the complainant’s business). The Panel is of the view that Respondent’s use of the disputed domain does not constitute a permitted use under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant claims that Respondent’s bad faith is evident through presumably financially benefitting using the disputed domain to display commercial links. Again, Respondent’s domain resolves to a website displaying links with titles such as, “Seafood Menu,” “Bar and Grill Menu,” “Dominos Pizza Menu Specials.” Presumably, Respondent commercially benefits from internet users who are seeking Complainant’s goods and instead click on the third-party links on Respondent’s domain. Panels have found bad faith where a respondent uses a confusingly similar domain to display advertisements for competing or non-competing products and services. See Staples, Inc. and Staples the Office Superstors, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). The Panel finds that Respondent’s registration and use of the disputed domain is in bad faith.
Complainant argues that its marks are famous, and as Respondent registered a confusingly similar domain to the FRIDAY marks, Policy ¶ 4(a)(iii) bad faith is imputed. Panels have agreed that where a famous mark is used in a domain, that actual knowledge may be considered in a bad faith analysis. See Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii)."). Accordingly, the Panel agrees that the totality of the circumstances evinces bad faith under Policy ¶ 4(a)(iii).
Lastly, the Panel notes that Respondent has engaged a privacy service, and in doing so withholds identifying information. The consensus view amongst panels is that use of a privacy service, without more, cannot reach the threshold of bad faith registration and use. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO November 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services); see also Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO September 21, 2007) (finding privacy services may be justified by the need to avoid spam and identity theft). However, the totality of the circumstances which surround a respondent’s engagement of a privacy service may give rise to a finding of bad faith registration and use. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (finding a change of privacy service after notice of complaint indicative of bad faith); see also Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008) (stating that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration”). Since the Panel agrees that Respondent has utilized a privacy shield in a manner which materially adversely affects or obscures the facts of this proceeding, it also agrees that Respondent has registered and used the disputed domain name in bad faith under 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 <tgifridaymenu.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: May 24, 2016
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