American Dairy Queen Corporation v. Muhammad Faisal
Claim Number: FA1605001673209
Complainant is American Dairy Queen Corporation (“Complainant”), represented by Sheldon Klein of GRAY, PLANT, MOOTY, MOOTY & BENNETT, P.A., United States of America. Respondent is Muhammad Faisal (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dairyqueen.site>, registered with NameCheap, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 3, 2016; the Forum received payment on May 3, 2016.
On May 4, 2016, NameCheap, Inc. confirmed by e-mail to the Forum that the <dairyqueen.site> 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 May 9, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 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@dairyqueen.site. Also on May 9, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 1, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
Complainant is an internationally renowned manufacturer and seller of food products, including dairy desserts, under the trademark mark DAIRY QUEEN. Complainant owns the DAIRY QUEEN mark by virtue of its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 728,894, registered March 20, 1962). Respondent’s <dairyqueen.site> domain is identical to Complainant’s mark because it wholly incorporates the mark, merely removing the space between the words “dairy” and “queen” and adding the generic top-level domain (“gTLD”) “.site.”
Respondent does not have rights or a legitimate interest in the <dairyqueen.site> domain name. Respondent is not commonly known by the disputed domain name. Nor has Complainant authorized or licensed Respondent to make use of the DAIRY QUEEN mark. Respondent’s use of the <dairyqueen.site> domain to phish for Internet users’ personal information through a scheme of offering counterfeit coupons constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial use.
Respondent has registered and is using the <dairyqueen.site> domain name in bad faith. Respondent uses the domain to intentionally attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Further, Respondent has used the disputed domain name in furtherance of a phishing scheme aimed at collecting Internet users’ personal information. Finally, Respondent registered the <dairyqueen.site> domain name with constructive and/or actual knowledge of Complainant’s rights in the DAIRY QUEEN mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, American Dairy Queen Corporation, is an internationally renowned manufacturer and seller of food products, including dairy desserts, under the trademark mark DAIRY QUEEN. Complainant owns the DAIRY QUEEN mark through registration with the USPTO (e.g., Reg. No. 728,894, registered March 20, 1962). Respondent’s <dairyqueen.site> domain is identical to Complainant’s mark.
Respondent, Muhammad Faisal, registered the <dairyqueen.site> domain name on February 11, 2016. Respondent does not have rights or a legitimate interest in the <dairyqueen.site> domain name. Respondent is not commonly known by the disputed domain name. Complainant has not authorized Respondent to use the DAIRY QUEEN mark. Respondent’s use of the <dairyqueen.site> domain to phish for Internet users’ personal information is not a bona fide offering of goods or services nor a legitimate noncommercial use.
Respondent has registered and is using the <dairyqueen.site> domain name 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.
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.”).
Complainant owns the DAIRY QUEEN mark under Policy ¶ 4(a)(i) through registration with the USPTO. See Homer TLC, Inc. v. Artem Ponomarev, FA 1623825 (Forum July 20, 2015) (finding Policy ¶ 4(a)(i) rights without regard to whether Complainant’s rights arise from registration of the mark in a jurisdiction other than that in which Respondent resides or operates).
Respondent’s <dairyqueen.site> domain name is identical to Complainant’s DAIRY QUEEN mark. The removal of the space between the words “dairy” and “queen” and the addition of the gTLD “.site” does not distinguish the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i).
Respondent is not commonly known as the <dairyqueen.site> domain name under Policy ¶ 4(c)(ii). Complainant has not authorized Respondent to use the DAIRY QUEEN mark. The WHOIS information identifies “Muhammad Faisal” as the registrant of record for the disputed domain name. See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Respondent’s use of the <dairyqueen.site> domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the domain name in furtherance of a phishing scheme, offering counterfeit coupons to Internet users who provide their personal information. Phishing is defined as a practice that is intended to get customers to reveal personal information. See e.g., Capital One Fin. Corp. v. Howel, FA 289304 (Forum Aug. 11, 2004). Respondent’s resolving website prominently features the DAIRY QUEEN mark and invites Internet users to enter the e-mail addresses of their friends to obtain free coupons. Therefore, Respondent is not using the <dairyqueen.site> domain to make a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”)
Respondent registered and uses the <dairyqueen.site> domain name in bad faith under Policy ¶ 4(a)(iii). Panels have found bad faith where the domain name was used to run a phishing scheme. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”).
Respondent registered the <dairyqueen.site> domain name with actual knowledge of Complainant's rights in the mark, and therefore engaged in bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the DAIRY QUEEN mark when registering the disputed domain name).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dairyqueen.site> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 11, 2016
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