TGI Friday’s of Minnesota, Inc. v. VistaPrint Technologies Ltd
Claim Number: FA1607001682786
Complainant is TGI Friday’s of Minnesota, Inc. (“Complainant”), represented by Megan R. Myers of Pirkey Barber PLLC, Texas, United States. Respondent is VistaPrint Technologies Ltd (“Respondent”), Bermuda.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tgifriedays.com>, registered with Tucows Domains 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 7, 2016; the Forum received payment on July 7, 2016.
On July 7, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the <tgifriedays.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 July 8, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 28, 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@tgifriedays.com. Also on July 8, 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 August 5, 2016, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant’s Contentions
1. Complainant and its licensees and franchisees have been offering restaurant and bar services, along with related goods and services, under the TGI FRIDAYS mark since at least 1965. Complainant has registered the TGI FRIDAYS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,544,761, registered June 3, 2014), which demonstrates Complainant’s rights in its mark. See Compl., at Attached Ex. C. The <tgifriedays.com> domain is confusingly similar to Complainant’s mark as it consists of “TGI FRIEDAYS,” an obvious typographical error of the TGI FRIDAYS mark, and it includes the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests in the domain. Respondent is not commonly known by the domain, and Respondent has not been licensed or permitted by Complainant to use the TGI FRIDAYS mark. Further, Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use through the domain. Rather, Respondent uses the domain in connection with the promotion of its own services, which are website building services offered under the VISTAPRINT mark. See Compl., at Attached Ex. D.
3. Respondent registered and is using the domain in bad faith. First, Respondent has engaged in a pattern of bad faith registration and use, which is made clear by the over thirty adverse UDRP decisions issued by the Forum against Respondent. Second, Respondent has intentionally attempted to 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. Finally, Respondent, through the domain, has engaged in the tactic of typosquatting.
B. Respondent’s Contentions
1. Respondent did not submit a Response in this proceeding.
1. Respondent’s <tgifriedays.com> domain name is confusingly similar to Complainant’s TGI FRIDAYS mark.
2. Respondent does not have any rights or legitimate interests in the <tgifriedays.com> domain name.
3. Respondent registered or used the <tgifriedays.com> 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 and its licensees and franchisees have been offering restaurant and bar services, along with related goods and services, under the TGI FRIDAYS mark since at least 1965. Complainant has registered the TGI FRIDAYS mark with the USPTO (e.g., Reg. No. 4,544,761, registered June 3, 2014), which Complainant argues demonstrates its rights in the mark. See Compl., at Attached Ex. C. The Panel finds that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i), with respect to the geographic disparity of the parties. 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.”). Accordingly, the Panel finds that Complainant has demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <tgifriedays.com> domain is confusingly similar to Complainant’s mark as it consists of “TGI FRIEDAYS,” an obvious typographical error of the TGI FRIDAYS mark, and it includes the gTLD “.com.” The Panel notes that Respondent’s domain also eliminates the spacing between the words of Complainant’s mark. Panels have determined that neither the addition of a letter (in this case, the letter “e”), nor the affixation of the “.com” gTLD, serves to adequately distinguish a respondent’s domain from a complainant’s mark. See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Panels have also determined that the elimination of the spaces between the words of a complainant’s mark does not sufficiently differentiate a respondent’s domain and a complainant’s mark. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Thus, the Panel finds that Respondent’s domain is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent is not commonly known by the disputed domain name, and that Respondent has not been licensed or permitted by Complainant to use the TGI FRIDAYS mark. The Panel notes that the WHOIS information merely lists “VistaPrint Technologies Ltd” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use through the domain. Rather, Complainant asserts that Respondent uses the domain in connection with the promotion of its own services, which are website building services offered under the VISTAPRINT mark. See Compl., at Attached Ex. D. Panels have held that a respondent lacks rights and legitimate interests where it uses a domain to divert Internet users looking for products and/or services relating to a complainant to a website unrelated to the complainant’s business. See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent is not using the domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant contends that Respondent has engaged in a pattern of bad faith registration and use, which is made clear by the over thirty adverse UDRP decisions issued by the Forum against Respondent. These decisions include, among others, Designs Around You, Inc. v. VistaPrint Technologies Ltd, FA 1409501 (Forum Nov. 4, 2011), and Century 21 Real Estate LLC v. VistaPrint Technologies Ltd, FA 1422157 (Forum Oct. 5, 2012). See Compl., at Page 4. Panels have held that a respondent’s prior adverse UDRP proceedings are sufficient evidence of a pattern of bad faith under Policy ¶ 4(b)(ii). See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)). For this reason, the Panel finds that Respondent has engaged in a pattern of bad faith registration and use, in violation of Policy ¶ 4(b)(ii).
Complainant argues that Respondent has intentionally attempted to 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. Panels have concluded that a respondent’s use of a domain to divert Internet users seeking a complainant’s website to that of the respondent, for commercial gain, is evidence of bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). As such, the Panel finds that Respondent registered and is using the domain in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant alleges that Respondent has engaged in the tactic of typosquatting. Specifically, Complainant asserts that Respondent’s domain merely adds the letter “e” to its TGI FRIDAYS mark. Panels have held that a respondent’s registration and use of a domain that is merely a misspelled version of a complainant’s mark is evidence of bad faith under Policy ¶ 4(a)(iii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). Accordingly, the Panel concludes that Respondent has engaged in the tactic of typosquatting, in violation of 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 <tgifriedays.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
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