DECISION

 

Don’s Texas Bar-B-Que, Inc. d/b/a Donn’s Texas BBQ v. Canay Ekmen / Citadel Marketing LTD

Claim Number: FA2003001887412

 

PARTIES

Complainant is Don’s Texas Bar-B-Que, Inc. d/b/a Donn’s Texas BBQ (“Complainant”), represented by Mark Land, United States.  Respondent is Canay Ekmen / Citadel Marketing LTD (“Respondent”), Malta.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <donnstexasbbq.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on March 9, 2020; the Forum received payment on March 9, 2020.

 

On March 10, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <donnstexasbbq.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 March 12, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 2020 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@donnstexasbbq.com.  Also on March 12, 2020, 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 April 6, 2020, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant, Don’s Texas Bar-B-Que, Inc. d/b/a Donn’s Texas BBQ., is a BBQ restaurant. Complainant claims common law rights in the DONN’S TEXAS BBQ mark through secondary meaning. Respondent’s <donnstexasbbq.com> domain name is identical and/or confusingly similar to Complainant’s DONN’S TEXAS BBQ mark as it contains the mark in its entirety and merely adds the “.com” generic top-level domain (“gTLD”).

2.    Respondent lacks rights or legitimate interests in the <donnstexasbbq.com> domain name. Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s DONN’S TEXAS BBQ mark. Additionally, Respondent fails to use the disputed domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to pass off as Complainant and divert Internet users to Respondent’s website for commercial gain.

3.    Respondent registered and uses the <donnstexasbbq.com> domain name in bad faith. Respondent has engaged in a pattern of bad faith registration and use. Respondent disrupts Complainant’s business by impersonating Complainant in order to divert and confuse Internet users for commercial gain.

 

 

B.   Respondent

1.    Respondent did not submit a response to this proceeding.

 

FINDINGS

1.    Respondent’s <donnstexasbbq.com> domain name is confusingly similar to Complainant’s DONN’S TEXAS BBQ mark.

2.    Respondent does not have any rights or legitimate interests in the <donnstexasbbq.com> domain name.

3.    Respondent registered or used the <donnstexasbbq.com> domain name in bad faith.

 

DISCUSSION

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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

 

Identical and/or Confusingly Similar

Complainant asserts rights in the DONN’S TEXAS BBQ mark under common law. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). Evidence such as long standing use and recognition under a mark is sufficient to establish a complainant’s common law rights under Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Here, Complainant argues that its common law rights in the DONN’S TEXAS BBQ mark date back over 30 years. Complainant has used the mark in conjunction with the operation of BBQ restaurants and catering since 1980. Complainant provides evidence of its common law rights through its <donns-bbq.com> webpage, business certificate and pictures of its restaurants displaying the mark. See Amend. Compl. Exs. A-B. The Panel finds that this evidence is sufficient in establishing Complainant’s common law rights in the mark under Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <donnstexasbbq.com> domain name is identical and/or confusingly similar to Complainant’s mark because the disputed domain name incorporates the DONN’S TEXAS BBQ mark in its entirety and merely adds the “.com” gTLD. The addition of a gTLD is not sufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel finds that the disputed domain name is identical to Complainant’s mark.”). Therefore, the Panel finds the disputed domain name is identical and/or confusingly similar to Complainant’s DONN’S TEXAS BBQ mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

 

Complainant argues that Respondent does not have rights or legitimate interests in the <donnstexasbbq.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the DONN’S TEXAS BBQ mark. Where a response is lacking, relevant WHOIS information can be used to determine if a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by that name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain name shows that the registrant’s name as “CANAY EKMEN” and nothing in the record indicates that Respondent is licensed or authorized to use Complainant’s DONN’S TEXAS BBQ mark or is known by the disputed domain name. See Amend. Compl. Ex. E. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).  

 

Additionally, Complainant claims Respondent fails to use the <donnstexasbbq.com>  domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain name to divert Internet users to their website for commercial gain. Where a respondent’s use of a disputed domain name is to pass off as a complainant for financial gain, the Panel finds the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Complainant supports its argument by comparing its website with Respondent’s, showing Respondent use of unauthorized photographs of Complainant’s business but lists a different address and non-working telephone numbers. Presumably, to pass off as Complainant in order to confuse Internet users for financial gain. See Amend. Compl.  Thus, the Panel agrees that Respondent’s use of the disputed domain name indicates it lacks rights and legitimate interests in the domain name per Policy ¶¶ 4(c)(i) and (iii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered and uses the <donnstexasbbq.com> domain name in bad faith. Specifically, Complainant argues that Respondent has engaged in a pattern of bad faith registration and use. Past UDRP actions where domain names were transferred may establish bad faith under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Respondent cites to The Metropolitan Companies, Inc. v. Canay Ekmen / citadel Marketing LTD, where Respondent was found to have participated in a similar scheme. The Panel agrees that this is a pattern of bad faith and finds this is evidence Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(ii).

 

Finally, Complainant argues that Respondent attempts to disrupt Complainant’s legitimate business purposes because Respondent’s website is intended to divert Internet users away from Complainant’s website to Respondent’s website for commercial gain. Use of a domain name to divert Internet users to a respondent’s website for commercial gain is evidence of bad faith registration and use per Policy ¶ 4(b)(iii) and/or (iv). See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (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); see also ZIH Corp. v. ou yang lin q, FA1761403 (Forum December 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products). As previously noted, Complainant claims that Respondent registered the disputed domain name to confuse Internet users for financial gain. The Panel agrees and finds that Respondent registered and uses the <donnstexasbbq.com> domain name in bad faith under Policy ¶ 4(b)(iii) and (iv).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <donnstexasbbq.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  April 17, 2020