The Cheesecake Factory and TCF CO. LLC v. Dave Armstrong / D.A.V.E., LLC
Claim Number: FA2306002047656
Complainant is The Cheesecake Factory and TCF CO. LLC (“Complainant”), represented by Sidney M. Greathouse, California, USA. Respondent is Dave Armstrong / D.A.V.E., LLC (“Respondent”), Idaho, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cheesecakefactoryboise.com> and <thecheesecakefactoryboise.com> (“Domain Names”), registered with eNom, LLC.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on June 6, 2023; Forum received payment on June 6, 2023.
On June 6, 2023, eNom, LLC confirmed by e-mail to Forum that the <cheesecakefactoryboise.com> and <thecheesecakefactoryboise.com> domain names are registered with eNom, LLC and that Respondent is the current registrant of the names. eNom, LLC has verified that Respondent is bound by the eNom, 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 June 7, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 2023 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@cheesecakefactoryboise.com, postmaster@thecheesecakefactoryboise.com. Also on June 7, 2023, 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 June 29, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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 Domain Names be transferred from Respondent to Complainant.
A. Complainant
Complainant operates a chain of restaurants and provides a range of food products. Complainant has rights in the THE CHEESECAKE FACTORY mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,549,370 registered July 25, 1989). Respondent’s <cheesecakefactoryboise.com> and <thecheesecakefactoryboise.com> domain names are confusingly similar to Complainant’s THE CHEESECAKE FACTORY mark as (in one case) they merely delete the word “the” and (in both cases) adds the geographic term “boise” and the “.com” generic top-level-domain ("gTLD") to the Complainant’s mar.
Respondent lacks rights or legitimate interests in the <cheesecakefactoryboise.com> and <thecheesecakefactoryboise.com> domain names. Respondent is not commonly known by the Domain Names, nor has Respondent been authorized by Complainant to use the THE CHEESECAKE FACTORY mark. Respondent has not used the Domain Names in connection with a bona fide offering of goods or services as Domain Names resolve to a parked page on which Respondent advertises the Domain Names for sale.
Respondent registered and uses the <cheesecakefactoryboise.com> and <thecheesecakefactoryboise.com> domain names in bad faith. Respondent’s websites disrupt Complainant’s business as Respondent registered the Domain Names to offer them for sale. Respondent had actual knowledge of Complainant’s rights to the THE CHEESECAKE FACTORY mark prior to registering the Domain Names as evidenced by Respondent’s use of the Domain Names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the THE CHEESECAKE FACTORY mark. The Domain Names are confusingly similar to Complainant’s THE CHEESECAKE FACTORY mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and uses the 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 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”).
Complainant asserts rights in the THE CHEESECAKE FACTORY mark through its registration of the mark with the USPTO (e.g., Reg. No. 1,549,370 registered July 25, 1989). Registration of a mark with the USPTO is generally sufficient to establish rights in the mark per 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 demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel finds that the <cheesecakefactoryboise.com> and <thecheesecakefactoryboise.com> domain names are confusingly similar to Complainant’s THE CHEESECAKE FACTORY mark because each incorporates either Complainant’s mark in its entirety or the dominant “CHEESECAKE FACTORY” portion of the mark, adding only the geographic term “boise” and the gTLD “.com”. The addition of a geographical term and a gTLD to either a wholly incorporated mark or the dominant portion of a mark is generally insufficient to create a distinction between a complainant’s mark and a disputed domain name under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”); see also Huron Consulting Group Inc. v. David White, FA 1701395 (Forum Dec. 6, 2016) (finding that Respondent’s <huroninc.net> domain name is confusingly similar to the HURON CONSULTING GROUP and HURON HEALTHCARE marks under Policy ¶ 4(a)(i) because in creating the domain name, the respondent contains the dominant portion of the marks and appends the term “inc” and a gTLD).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names 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) and 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.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the THE CHEESECAKE FACTORY mark. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Dave Armstrong / D.A.V.E., LLC” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
The Domain Names presently resolve to webpages which advertise that the Domain Names are for sale for a sum in excess of any likely out-of-pocket costs incurred by Respondent. Furthermore, in response to a letter of demand from Complainant, Respondent has refused to transfer the Domain Names, but offered to sell them for a sum similar to what they are publicly advertised for. Absent any other explanation, this indicates that the Domain Names were registered for the purpose of selling it to the Complainant or a third party, for a sum in excess of any out-of-pocket costs that could have been incurred by Respondent. Absent any explanation by Respondent for its conduct, such conduct is not by itself a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA1312001533324 (Forum Jan. 17, 2014) (“Respondent has offered the <aoljobsweek.com> domain name for sale to the general public, which demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time Respondent registered the Domain Names, November 27, 2022, Respondent had actual knowledge of Complainant’s THE CHEESECAKE FACTORY mark which had been in use for over 50 years. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register two domain names that incorporate at least the dominant portion of the THE CHEESECAKE FACTORY mark and a geographical term and redirect them to websites offering those domain names for sale other than to take advantage of Complainant’s reputation in the THE CHEESECAKE FACTORY Mark. In the absence of rights or legitimate interests of its own, this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
Respondent has, without alternative explanation (or other active use), acquired two domain names that are confusingly similar to the THE CHEESECAKE FACTORY mark and offered them for sale to the public. An offer to sell a disputed domain name may be evidence of bad faith per Policy ¶ 4(b)(i). See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”). In the present case, given the nature of the Domain Names, the manner in which they have been used, and the lack of alternative explanation provided by Respondent, the Panel finds that the Respondent registered and used the Domain Names in bad faith pursuant to Policy ¶ 4(b)(i).
The Panel finds Complainant has 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 <cheesecakefactoryboise.com> and <thecheesecakefactoryboise.com> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: June 30, 2023
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