DECISION

 

America's Drive-In Brand Properties, LLC v. menu man

Claim Number: FA2309002061668

 

PARTIES

Complainant is America's Drive-In Brand Properties, LLC ("Complainant"), represented by Jeanette Eriksson of FairWinds Partners LLC, District of Columbia, USA. Respondent is menu man ("Respondent"), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sonicmenuprices.info> ("Domain Name"), registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 13, 2023; Forum received payment on September 13, 2023.

 

On September 15, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <sonicmenuprices.info> 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 September 18, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 10, 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@sonicmenuprices.info. Also on September 18, 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.

 

A timely Response was received and determined to be complete on September 21, 2023.

 

On September 21, 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.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a United States company, founded in the 1950s, that operates various franchised chains of drive-in restaurants, including a chain of restaurants specializing in burgers and hot dogs known as SONIC. Complainant asserts rights in the SONIC mark based upon registration with the United States Patent and Trademark Office ("USPTO") (e.g. Reg. No. 4,214,439, registered September 25, 2012). The <sonicmenuprices.info> domain name is identical or confusingly similar to the SONIC mark because the Domain Name incorporates the SONIC mark in its entirety and adds the descriptive terms "menu prices", as well as the generic top-level domain ("gTLD") ".info".

 

Respondent does not have rights or legitimate interests in the <sonicmenuprices.info> domain name. Respondent is not licensed or authorized to use the SONIC mark and is not commonly known by the Domain Name. Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather the Domain Name resolves to a website ("Respondent's Website") which is commonly known as a spam blog, being a blog used by the Respondent to promote affiliated websites, increase search engine rankings or to sell links/ads. Respondent is copying Complainant's well-known trade mark as well as images from Complainant's website with the purpose of diverting traffic away from Complainant's official website to Respondent's Website where Respondent will receive advertising revenue. Respondent, through the "Contact Us" and "Leave a Comment" forms, is also harvesting users' personal information. In summary Respondent is misusing the Complainant's SONIC mark for its own financial gain; this is not an innocent, informational blog; rather Respondent is impersonating Complainant for its commercial gain. This conduct has been held to be sufficient to order transfer of a domain name in the recent case of DD IP Holder LLC v. Sanel Ajdinovic, FA 2049887 (Forum July 16, 2023) involving the domain name <dunkindonutsprices.com>.

 

Respondent registered and uses the <sonicmenuprices.info> domain name in bad faith. Respondent has attempted to attract Internet users for commercial gain by creating a likelihood of confusion as to the source of Respondent's Website. Respondent is diverting Internet users to the Respondent's Website in a manner that disrupts the Complainant's business. Additionally, Respondent had actual knowledge of Complainant's rights in the SONIC mark at the time of registration given the use of the Domain Name for the Respondent's Website.

 

B. Respondent

Respondent sent a series of e-mails to Forum between September 18 and September 22, 2023 which the Panel has treated collectively as a Response. In summary the Response states that:

 

Respondent has created a website with the primary objective of providing accurate and up to date information about Sonic menu items to the public. Respondent has not engaged in any commercial activities, advertising or revenue generation relating to the SONIC mark. Respondent's Website clearly states it is unofficial and not affiliated with Complainant, contains reliable information and provides a benefit to customers of Complainant by providing them with a convenient platform to access menu details. Respondent does not collect personal information or engage in any deceptive practices.

 

Given the information in the paragraph above, Respondent's use of the Domain Name is fair use as it is non-commercial and only uses the portion of the Complainant's IP necessary to identify the work, namely the Domain Name must include the SONIC mark to identify that the Respondent's Website offers information on the menu and prices at the Sonic chain of restaurants.  Respondent may place Google ads on the Respondent's Website but that is to generate revenue to cover the costs of paying writers and hosting a website. Respondent is also willing to make appropriate amendments to satisfy Complainant if there is any concern that it does not satisfy any appropriate policies, including removal of the SONIC logo. Respondent states that the Respondent's Website provides a valuable service to users and is committed to operating it in a professional and ethical manner.

 

FINDINGS

Complainant, having failed to establish that Respondent lacks rights or legitimate interests in the domain name <sonicmenuprices.info>, has not established all required elements of its claim, and thus its complaint in respect of <sonicmenuprices.info> must be denied.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

Identical and/or Confusingly Similar

Complainant has rights in the SONIC mark under Policy ¶ 4(a)(i) through the registration of the mark with the USPTO (Reg. No. 4,214,439, registered September 25, 2012). Registration with the USPTO can sufficiently establish rights in a mark under Policy ¶ 4(a)(i).  See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a national trademark authority).

 

The Panel finds that the Domain Name is confusingly similar to the SONIC mark as it incorporates the entire SONIC mark while adding the ".info" gTLD and the additional terms "menu prices". Domain names which incorporate an entire mark are usually considered confusingly similar, while adding a generic term and a gTLD is generally insufficient to create a distinction between a complainant's mark and a disputed domain name under Policy ¶ 4(a)(i).  See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i)).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. 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 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) 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 not made out such a prima facie case.

 

The Domain Name was registered on May 30, 2022.  The Respondent's Website consists of a series of pages listing the items on the Complainant's menu along with their prices. The Respondent's Website also contains other, fairly mundane, information about the Sonic chain, such as that they are famous for their use of roller skates. The Respondent's Website is advertising supported in that it contains numerous Google advertisements. There is a limited use of the Complainant's Sonic logo and images of Complainant's products on the Respondent's Website.

 

At the bottom of the first page of the Respondent's Website there are two disclaimers indicating that the Respondent's Website is unofficial and not affiliated with the Complainant. (The Panel notes that one version of the disclaimer technically disclaims any association with Tim Hortons, which suggests that the Respondent's Website is based on a similar website that lists prices for the Canadian donut and fast food chain Tim Hortons, but any reader of the disclaimer would understand its intended effect).  The Respondent's Website also contains a clearly marked link to the Complainant's website at www.sonicdrivein.com.

 

While, as noted above, there is some use of the Complainant's logo and images of Complainant's products on the Respondent's Website, the Respondent's Website is fairly plain and does not copy the look or feel of the Complainant's website. Nor, in the Panel's evaluative judgment, would a visitor be likely to think it was the official website of the Complainant. In addition to the very different look and feel, the Respondent's Website does not provide information about the location of the Complainant's restaurants or significant advertising collateral; which is something that a visitor would expect when visiting an official website; It does have a "contact us" section where visitors can leave comments; but the submission made by the Complainant that Respondent is engaging in phishing or data harvesting is entirely speculative. There is no evidence of this occurring and even if Respondent was recording information from people who leave comments, as the Respondent is not impersonating the Complainant on the Respondent's Website visitors who leave comments would be doing so aware that they were commenting on an unofficial website.  

 

In summary, having viewed the material before it, the Panel considers that Respondent is operating an advertising-supported website that provides information about Complainant, its menu and prices. It does not accept the Respondent's submission that such use is non-commercial, rather Respondent is providing a service, arguably in competition with Complainant, to individuals who want to find information about Complainant, for which it receives advertising revenue.

 

The Panel does not accept the Complainant's submissions that Respondent is engaging in phishing or passing off; as noted earlier in this decision, the nature of the Respondent's Website does not imply that the Respondent's Website is an official website of Complainant.  The Panel accepts that there may be visitors to the Respondent's Website who arrive under the misapprehension, caused by the presence of the "sonic" element in the Domain Name, that the Domain Name will lead to a website operated by Complainant; however, this is not determinative; the doctrine of nominative fair use accepts a limited degree of consumer confusion in circumstance where the mark is being used in a truthful manner to describe a domain name registrant's business. Other visitors may be indifferent to the entity operating the Respondent's Website, as long as it provides accurate information about the Complainant's menu and prices.

 

The Complainant makes the submission that Respondent's Website is a "Spam blog", being an essentially valueless website, often part of a pool of similar websites, where the content is inauthentic text or stolen material from other websites. The Panel finds that Respondent's Website contains features of a spam blog as it essentially takes publicly available information about Complainant and Complainant's menu and prices and puts it in a different format for consumers to access, but again this is not determinative; the Policy is aimed at combatting abusive domain name registrations and does not require the Panel to make value judgements about the inherent social value of the business model underpinning the Respondent's Website.    

 

The question is whether Respondent's conduct, as summarized above, means that it lacks rights or legitimate interests in the Domain Name. To put it another way; is the Respondent's business model, as reflected in the Respondent's Website a bona fide offering of services or a fair use of the Domain Name? The Panel notes that a panel in DD IP Holder LLC v. Sanel Ajdinovic, FA 2049887 (Forum July 16, 2023) involving the domain name <dunkindonutsprices.com> and an apparently similar fact situation found that such conduct did not provide the then respondent with rights or legitimate interests, however in that case the then respondent did not file a response and as such that Panel was entitled to accept all reasonable allegations set forth in the complaint. Furthermore, the Panel does not have access to the website at <dunkindonutsprices.com> and cannot confirm that it corresponds to the Respondent's Website; indeed in that case the Panel found that the then respondent was actively phishing, which this Panel has not found. The Panel has not been able to identify any other cases involving a model similar to Respondent's.

 

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") at sections 2.4, 2.5 and 2.7, looks at the question of how fair use is assessed under the Policy. The first point as noted at section 2.5 is that a domain name should not falsely suggest affiliation with the trademark owner, and there is a range of examples provided. The Domain Name does not fall into one of the examples (identical to a trademark or trademark plus certain geographic terms (<trademark-usa.com>) or terms with an inherent Internet connotation (<buy-trademark.com>) that by itself suggest affiliation. Hence further examination of circumstances is required.

 

2.5.2 and 2.5.3 of the WIPO Overview 3.0 sets out circumstances that panels have considered in determining whether the use of a domain name is fair. At 2.5.2. the WIPO Overview 3.0 states:

 

"To facilitate this assessment, panels have found the following factors illustrative: (i) whether the domain name has been registered and is being used for legitimate purposes and not as a pretext for commercial gain or other such purposes inhering to the respondent's benefit, (ii) whether the respondent reasonably believes its use (whether referential, or for praise or criticism) to be truthful and well-founded, (iii) whether it is clear to Internet users visiting the respondent's website that it is not operated by the complainant, (iv) whether the respondent has refrained from engaging in a pattern of registering domain names corresponding to marks held by the complainant or third parties, (v) where appropriate, whether a prominent link (including with explanatory text) is provided to the relevant trademark owner's website, (vi) whether senders of email intended for the complainant but (because of user confusion) directed to the respondent are alerted that their message has been misdirected, (vii) whether there is an actual connection between the complainant's trademark in the disputed domain name and the corresponding website content, and not to a competitor, or an entire industry, group, or individual, and (viii) whether the domain name registration and use by the respondent is consistent with a pattern of bona fide activity (whether online or offline)."

 

In the present case, the Panel is reluctant to find that the Respondent, in operating an unofficial website that does not obviously impersonate Complainant providing details of Sonic's menu and prices from the domain name <sonicmenuprices.info>, is engaged in the sort of cybersquatting that this Policy is designed to prevent. Specifically:

A.       It is permissible for an entity to put up a website that lists a third party's menu and prices;

B.       The Domain Name accurately describes the content of the Respondent's Website;

C.       The Respondent's Website does not hold itself out as anything other than an advertising supported unofficial website providing information about Sonic's menu and prices, indeed the Respondent provides both a disclaimer and a link to the official website of Complainant on the Respondent's Website; and

D.       There are no other aspects of the Respondent's conduct that suggest that the Respondent's actions are not fair use; in particular it is not seeking to corner the market in domain names, it has filed a Response in this matter and it is not using fake contact details or engaging in other inappropriate conduct.

 

Ultimately, the determination of whether the Respondent's very specific business model provides it with rights or a legitimate interest to the Domain Name is dependent on whether or not the Respondent, in operating an unofficial website providing information on Complainant's menu, is infringing on Complainant's trademark rights in the SONIC mark.  This determination relies on complex legal issues around nominative fair use which are more suitable for the courts to decide as opposed to being decided under the Policy.  The Policy's primary purpose is to "combat abusive domain name registrations and not provide a prescriptive code for resolving more complex trademark disputes." See Swisher International, Inc. v. Hempire State Smoke Shop, FA 1952939 (July 27, 2021); see also Courtney Love v. Brooke Barnett, FA 944826 (Forum May 14, 2007) ("the purpose of the Policy is not to resolve disputes between parties who might each have legitimate rights in a domain name.  The purpose of the Policy is to protect trademark owners from cybersquatters, that is, from people who abuse the domain name system in a very specific way, which specific way is outlined in Paragraph 4(a) of the Policy."); see also IAFT International LLC v. MANAGING DIRECTOR / EUTOPIAN HOLDINGS, FA 1577032 (Forum Oct. 9, 2014) ("The objectives of the Policy are limited -- designed to obviate the need for time-consuming and costly litigation in relatively clear cases of cyber-squatting -- and not intended to thwart every sort of questionable business practice imaginable.").

 

This is not a clear case of cybersquatting. For all of the reasons above, the Complainant has not met its burden of proof in establishing that the Respondent does not have rights or a legitimate interest to the Domain Name. 

 

Registration and Use in Bad Faith

In light of the Panel's dispositive finding on the issue of rights or legitimate interests, the Panel declines to address the question of registration and use in bad faith.

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <sonicmenuprices.info> domain name REMAIN WITH Respondent.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: September 23, 2023