The Cheesecake Factory Incorporated And TCF CO. LLC v. Huade Wang
Claim Number: FA2210002015589
Complainant is The Cheesecake Factory Incorporated And TCF CO. LLC (“Complainant”), United States of America (“United States”), represented by Farah P. Bhatti of Buchalter Nemer, United States. Respondent is Huade Wang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <thecheesecakefactoryrewards.com> and <cheesecakefactoryreward.com> (the “disputed domain names”), registered with Dynadot, LLC (the “Registrar”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to Forum electronically on October 11, 2022; Forum received payment on October 11, 2022.
On October 11, 2022, the Registrar confirmed by e-mail to Forum that the disputed domain names are registered with Dynadot, LLC and that Respondent is the current registrant of the names. The Registrar has verified that Respondent is bound by the Dynadot, 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 October 12, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 2022 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@thecheesecakefactoryrewards.com, postmaster@cheesecakefactoryreward.com. Also on October 12, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On November 7, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Lynda M. Braun as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 disputed domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a California-based restaurant chain that enjoys strong worldwide rights in and recognition of the trademark THE CHEESECAKE FACTORY. THE CHEESECAKE FACTORY trademark has been associated with Complainant and its restaurant services for over 50 years. Complainant claims rights in the THE CHEESECAKE FACTORY mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,549,370, registered on July 25, 1989).
Complainant also owns several other trademark registrations for goods and services relating to restaurants, food items and other services that incorporate THE CHEESECAKE FACTORY trademark, including: United States Trademark Registration No. 1,191,891, registered on March 9, 1982, in international class 42 for restaurant services, United States Trademark Registration No. 1,549,370, registered on July 25, 1989, in international class 30 for cheesecakes, as well as China Trademark Registration No. 1128704, registered on November 2, 2015, in international classes 30 and 42 for cheesecakes and restaurant services, respectively, and the mark, “CHEESECAKE REWARDS” in class 35, currently pending with the USPTO, Serial No. 90,651,610, filed on April 6, 2021 and 90,779,759, filed on June 17, 2021, respectively (hereinafter collectively referred to as “THE CHEESECAKE FACTORY Mark”).
Complainant has developed substantial goodwill in its official domain names <thecheesecakefactory.com>, <the cheesecakefactory.org>, <the cheesecakefactory.net>, <thecheesecakefactory.us>, <cheesecake rewards.com>, <cheesecakefactoryrewards.com>, <thecheesecakerewards.com>, and <cheesecakefactory.com>.
Complainant claims that the disputed domain names <thecheesecakefactoryrewards.com> and <cheesecakefactoryreward.com> are confusingly similar to THE CHEESECAKE FACTORY Mark because they incorporate either the entirety of Complainant’s registered mark or a significant portion thereof, followed by the terms “reward” and “rewards”, and the “.com” generic top-level domain (“gTLD”).
In addition, Complainant also contends that Respondent lacks rights or legitimate interests in the disputed domain names since, among other things, the disputed domain names resolve to Respondent’s landing pages that contains pay-per-click (PPC) hyperlinks and attempts to pass off as Complainant by offering competing goods.
Moreover, Complainant claims that Respondent registered and is using the disputed domain names in bad faith because Respondent registered the disputed domain names to disrupt Complainant’s business and divert customers for commercial gain, and Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in THE CHEESECAKE FACTORY Mark. The disputed domain names were registered on June 17, 2021, more than 50 years after Complainant established the use of it trademark rights. Respondent’s disputed domain names resolve to landing pages that contain PPC hyperlinks that compete with Complainant’s business. The links include “employee benefits”, “employee rewards”, and “redeem reward points”, among others, and such use demonstrates registration and use in bad faith,
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant has rights in the CHEESECAKE FACTORY Mark based on its trademark registrations with the USPTO, as well as in China, where the Respondent purportedly resides. Registration with the USPTO or other trademark offices is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). In addition, the Panel finds that the disputed domain names are confusingly similar to Complainant’s THE CHEESECAKE FACTORY Mark, as they incorporate THE CHEESECAKE FACTORY Mark in its entirety, merely adding the term “reward” or “rewards” after the trademark and followed by the gTLD “.com”. The Panel also finds that Respondent lacks rights or legitimate interests in the disputed domain names, and that Respondent registered and is using the disputed domain names 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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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”).
The Panel finds that the disputed domain names are confusingly similar to THE CHEESECAKE FACTORY Mark as set forth below.
Complainant has rights to the THE CHEESECAKE FACTORY Mark through its registrations with the USPTO (e.g., Reg. No. 1,549,370, registered on July 25, 1989). Registration of a mark with a trademark agency such as the USPTO is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purpose of Policy ¶ 4(a)(i).”).
Here, Complainant has provided the Panel with copies of its USPTO registrations for THE CHEESECAKE FACTORY. Therefore, the Panel finds that Complainant has rights in THE CHEESECAKE FACTORY Mark per Policy ¶ 4(a)(i).
The Panel also concludes that the disputed domain names are confusingly similar to Complainant’s THE CHEESECAKE FACTORY Mark. They contain Complainant’s entire mark except for the addition of the term “reward” and “rewards”, respectively, that follow THE CHEESEMARK FACTORY Mark. Such an addition of a term or terms does not prevent the disputed domain names from being deemed confusingly similar to THE CHEESECAKE FACTORY Mark as long as THE CHEESECAKE FACTORY Mark itself is recognizable.
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum April 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”).
In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain names as it did not submit a response to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard pressed to furnish availing arguments had it chosen to respond.
In support, the Panel finds that Respondent is not commonly known by the disputed domain names or any name similar to it, nor has Complainant authorized or licensed Respondent to use THE CHEESECAKE FACTORY Mark in the disputed domain names. In addition, Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use.
In particular, the Panel concludes that Respondent does not use the disputed domain names for a bona fide offering of goods and services or legitimate noncommercial or fair use because the resolving website presents users with a list of related searches, essentially equivalent to PPC hyperlinks that purportedly list third party entities that offer services competing with those of Complainant. Using disputed domain names to resolve to a website with PPC competing links does not constitute a bona fide offering of goods and services or legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii). See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”).
Finally, the Panelist concludes that Respondent does not use the disputed domain names for a legitimate noncommercial fair use nor to offer a bona fide offering of goods or services because Respondent uses the disputed domain names to trade off of the goodwill and reputation associated with Complainant’s mark. Using a disputed domain to trade off of the goodwill and reputation associated with a registered mark has been found by previous panels to evidence illegitimate purpose. Complainant points to the similarity of the disputed domain names to its registered mark as well as the similarity of the disputed domain names to its own legitimate website as evidence of this.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
This Panel finds that, based on the record, Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy as described below.
First, the use of disputed domain names to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion or a false association with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Second, the fame of THE CHEESECAKE FACTORY Mark, which was used and registered by Complainant far in advance of Respondent’s registration of the disputed domain names, renders it wholly implausible that Respondent created the disputed domain names independently. Moreover, where a disputed domain name is so obviously connected with a well-known name, product or service, its use by someone with no connection to the name, product or service indicates bad faith. Therefore, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in THE CHEESECAKE FACTORY Mark, and this constitutes bad faith under Policy ¶ 4(a)(iii). It therefore strains credulity to believe that Respondent had not known of the Complainant or it’s the CHEESECAKE FACTORY Mark when registering the disputed domain names. Thus, as here, prior knowledge of a complainant’s trademark before registering a domain name is sufficient to find bad faith under Policy ¶4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it).
Finally, the disputed domain names resolve to a website with PPC competing hyperlinks and as such, indicates that Respondent (i) knew about Complainant and its business activities; (ii) registered the disputed domain names for the purpose of attracting potential customers of Respondent, creating the impression that the website is affiliated with Respondent by impersonating Complainant and thereby interfering with Complainant’s business; and (iii) is acting in bad faith.
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that <thecheesecakefactoryrewards.com> and <cheesecakefactoryreward.com> disputed domain names be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: November 20, 2022
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