TGI Friday’s of Minnesota, Inc v. Nguyen Dang khoa
Claim Number: FA1605001673607
Complainant is TGI Friday’s of Minnesota, Inc (“Complainant”), represented by Megan R. Myers of Pirkey Barber PLLC, Texas, United States. Respondent is Nguyen Dang khoa (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tgifridayscoupons.online>, 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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 5, 2016; the Forum received payment on May 5, 2016.
On May 6, 2016, NameCheap, Inc. confirmed by e-mail to the Forum that the <tgifridayscoupons.online> 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 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 26, 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@tgifridayscoupons.online. Also on May 6, 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 May 31, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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 uses the TGI FRIDAYS mark in connection with its business in offering restaurant and bar services. Complainant has registered the TGI FRIDAYS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,656,922, registered Dec. 16, 2014), which establishes rights in the mark. Respondent’s <tgifridayscoupons.online> domain name is confusingly similar to the TGI FRIDAYS mark as it incorporates the mark in its entirety, adds the descriptive term “coupons” and the generic top-level domain (“gTLD”) “.online.”
Respondent has no rights or legitimate interests in the <tgifridayscoupons.online> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant given Respondent permission to use the TGI FRIDAYS mark. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <tgifridayscoupons.online> domain name. Rather, the domain name resolves to an active website displaying advertisement pay-per-click hyperlinks for various items.
Respondent registered and is using the <tgifridayscoupons.online> domain name in bad faith. Respondent has attempted to attract internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Further, Respondent is using a privacy shield to withhold information.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the <tgifridayscoupons.online> domain name was registered on February 16, 2016.
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 uses the TGI FRIDAYS mark in connection with its business in offering restaurant and bar services. Complainant purports that it has registered the TGI FRIDAYS mark with the USPTO (e.g., Reg. No. 4,656,922, registered Dec. 16, 2014) and argues that its demonstration of trademark registrations is sufficient in establishing Policy ¶ 4(a)(i) rights in the TGI FRIDAYS mark. Panels have found that a complainant’s valid USPTO registration is sufficient in establishing rights in a mark per Policy ¶ 4(a)(i), irrespective of a respondent’s country of origin. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). Therefore, this Panel finds that Complainant has established Policy ¶ 4(a)(i) rights in the TGI FRIDAYS mark.
Next, Complainant argues that Respondent’s <tgifridayscoupons.online> domain name is confusingly similar to the TGI FRIDAYS mark as it incorporates the mark in its entirety, adds the descriptive term “coupons” and the gTLD “.online.” Panels have found such alterations to a mark are insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Eastman Chem. Co. v. Patel, FA 524752 (Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”); see also Google Inc. v. Felin Georges, FA 1657796 (Forum Feb. 24, 2016) (“The disputed domain name also adds the gTLD ‘.online,’ which does not distinguish a disputed domain name under Policy ¶ 4(a)(i).”). Therefore, the Panel agrees that Respondent’s <tgifridayscoupons.online> domain name is confusingly similar to the TGI FRIDAYS mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in the <tgifridayscoupons.online> domain name. To begin with, Complainant asserts that Respondent is not commonly known by the disputed domain name, nor has Complainant licensed or otherwise permitted Respondent to use the TGI FRIDAYS mark. The WHOIS information regarding the disputed domain name, lists “Nguyen Dang Khoa” as registrant of record. Respondent has failed to submit a response in this proceeding. Therefore, in light of the available evidence, this Panel agrees that there is no basis to find Respondent commonly known by the disputed domain name. See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information, as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Further, Complainant argues that Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <tgifridayscoupons.online> domain name. Rather, Complainant contends that Respondent uses the domain name to advertise discount and coupon codes for a variety of products and provides links to those products. Such links include: “Discount code for Old Spice Beard & Head Trimmer powered by Braun 2016” and “Coupon code ROOTX- the Root Intrusion Solution Kit”. Panels have found, where a respondent is using a confusingly similar domain name to redirect Internet users to a webpage with unrelated hyperlinks, that such a respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Priceline.com LLC v. levesque, bruno, FA1625137 (Forum July 29, 2015) (“The Panel finds that Respondent’s attempt to divert Internet users who are looking for products relating to Complainant’s famous mark to a website unrelated to the mark does not engage in a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).)”. Therefore, this Panel finds that Respondent’s <tgifridayscoupons.online> domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. The Panel notes that the domain name resolves to a website with advertisements of unrelated items. The Panel infers that Internet user confusion subsequently results from the aforementioned hyperlinks, and that Respondent is receiving click-through fees. The Panel finds that Respondent’s behavior constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). Respondent’s incorporation of the entirety of Complainant’s well-known mark into its domain name further supports a finding of bad faith registration and use.
Thus, Complainant has also satisfied 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 <tgifridayscoupons.online> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: June 14, 2016
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