WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AFC Enterprises, Inc. v. Max Marketing
Case No. D2000-0975
1. The Parties
The Complainant is AFC Enterprises, Inc. ("AFC"), a Minnesota corporation with its principal place of business in Atlanta, Georgia, U.S.A.
The Respondent is Max Marketing of Troy, Michigan, U.S.A.
2. The Domain Name and Register
The disputed Domain Name is "", registered with Network Solutions, Inc. ("NSI") of Herndon, Virginia, U.S.A.
3. Procedural History
AFC�s Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") in hard copy on August 8, 2000. The Center sent an Acknowledgement of Receipt of Complaint to the Complainant on August 15, 2000. On the same date, the Center requested of NSI the confirmations and information necessary for the implementation of Paragraphs 2(a) and 4 of the ICANN Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"). On August 17, 2000, NSI confirmed that the registration of the disputed domain name was in "active" status, that it was registered to Max Marketing, and that Max Marketing�s Administrative Contact was Max Garza and its Technical Contact, Jeffrey Tinsley of "GreatD". NSI further confirmed that Max Garza�s e-mail address was "Thegness@".
On August 22, 2000, the Center sent notification of AFC�s Complaint to Max Marketing, by post-courier, facsimile, and e-mail. On the same day, the Center received the following e-mail message from "Thegness@": "[Expletive] leave me alone." On September 12, 2000, the Center sent Max Marketing notice of failure to comply with the deadline for submitting a response and of the consequences of this default. On September 20, 2000, the Center received a pleading from "GreatD", entitled "Response" but explaining that GreatDomains was not the respondent and had no interest in or control over the disputed domain name because its "only connection with the domain name that is the subject of this proceeding is that it provided a free parking service on its server for the domain name."
On September 26, 2000, the Center appointed the undersigned as the sole Panelist to decide this case. The sole Panelist finds that the administrative panel was properly constituted and appointed in accordance with the ICANN Rules and WIPO�s Supplemental Rules.
4. Factual Background
AFC is in the business of franchising fast-food restaurants and, in connection with this business, owns a number of trademarks federally registered in the United States, including the mark "CHURCHS CHICKEN (and Design)." AFC and its predecessor-in-interest have used this mark since 1955. AFC also operates a worldwide website at the registered domain name "".
Max Marketing, which is not a franchisee or licensee of AFC, registered the disputed domain name, "", for a website using the server facilities of GreatDomains. As of July 7, 2000, the only content posted on this website was an offer to sell the domain name "" for $3,000.00. As of the date of AFC�s Complaint in this proceeding, Max Marketing was the registrant of 50 other domain names, including such names as "", "", and "".
5. Parties� Contentions
A. AFC requests that the disputed domain name be transferred to it on the grounds that Max Marketing has no rights or legitimate interest in that domain name; registered it in bad faith, with a purpose of preventing AFC from reflecting its registered mark in a corresponding domain name; has never used or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services or any legitimate non-commercial or fair use, and has never been commonly known by that domain name. AFC bases these contentions on three facts and reasonable inferences drawn therefrom: that Max Marketing has never been a franchisee or licensee of AFC; that Max Marketing has put up the disputed domain name for sale for $3,000.00; and that it is the Registrant of 50 additional domain names, including some that are recognizably based on the names of existing businesses. With respect to Max Marketing�s state of mind, AFC acknowledges that its allegations of bad faith are based "on information and belief."
B. The contentions of Max Marketing are unknown due to its failure to submit a response to AFC�s Complaint. While neither Mr. Garza�s rude e-mail message nor GreatDomains� pleading constitute a response within the meaning of Paragraph 5 of the Rules, they are evidence in the record and the Panelist will consider them as such.
6. Discussion and Findings
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Resolution Policy ("The Policy") places on a complainant the burden to prove each of the following elements:
(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no legitimate interest in respect to the domain name; and
(iii) that the domain name has been registered and used in bad faith.
The first of these elements presents no difficulty in this case: "" is plainly identical, or, at the very least, confusingly similar, to AFC�s registered mark "CHURCHS CHICKEN (and design)." The more difficult question in this case is whether the evidence in the record is sufficient to satisfy the second and third elements of AFC�s case. As this Panelist has noted elsewhere:
"the lack of any provisions for discovery under ICANN Policy imposes certain limitations on UDRP proceedings. In many cases, these limitations affect the ability of a complainant to discharge its burden of proof as to the last two elements because the relevant evidence as to the registrant�s rights or interests in a domain name and its state of mind in registering and using it is exclusively or primarily in the possession of the registrant.
Where a respondent diligently complies with its obligations under Paragraph 5 of ICANN Rules, the problem is largely obviated because the respondent supplies the evidence that is otherwise unavailable to the complainant. However, where, as in the present proceeding, a respondent wholly disregards its obligations and submits no response, the ability of the complainant to meet its burden of proof can be severely impaired and, on a literal reading of ICANN Policy and Rules concerning the allocation of the burden of proof, fatally so. The Panel, in such cases, has no authority to make a decision akin to a default judgment; under Rule 14(b), it may only draw such inferences from the respondent�s failure to respond "as it considers appropriate." However, under Rule 5(e), the panel must still "decide the dispute based upon the complaint." This suggests that in some cases, a panel may find the evidence submitted by the complainant, even as amplified by reasonable adverse inferences drawn against the respondent, to be insufficient to satisfy the complainant�s burden as to the second and/or third Paragraph 4(a) element."1
In this case, although AFC and its counsel undoubtedly did their best to marshal all available facts to support their case, the Panelist is inclined to believe that the hard facts they were able to present are in themselves insufficient, and fall somewhat short of warranting all the inferences that would have to be drawn in order to find elements two and three of Paragraph 4(a) satisfied. Furthermore, were this a case in which the Respondent submitted no response, the Panelist would be reluctant to simply invoke that default, without more, as the basis for the inferences necessary for a ruling in the Complainant�s favor, for doing so would be tantamount to the disposition by default judgment that Paragraph 5(e) does not permit.
However, in the present case, Max Marketing did respond, albeit not in accordance with Paragraph 5. Mr. Garza�s e-mail message shows that he received the Center�s notice of this proceeding and his failure to respond specifically to AFC�s allegations is not only a violation of Max Marketing�s affirmative obligations under Paragraph 52 but, as a matter of evidence, an adoptive admission of the truth of those allegations. In addition, the brazen contempt Mr. Garza�s message shows for the system under which his company registered the disputed domain name is strong evidence of his willingness and ability to act in bad faith. Accordingly, the Panelist concludes that the evidence in the record supports a finding for AFC on all three elements of Paragraph 4(a) of the Policy.
7. Decision
Based on the findings, conclusions, and reasoning set forth above, it is hereby ordered that the domain name "" be transferred to the Complainant, AFC Enterprises, Inc.
Natasha C. Lisman, J.D., F.C.I. Arb.
Sole Panelist
Dated: October 12, 2000
Footnotes:
1. Loblaws, Inc. v. Charlo Barbosa, eResolution Case No. AF-00163
2. Paragraph 5 of the Rules not only requires a respondent to submit a response, but mandates that "[t]he response ... shall ... respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name." (Emphasis supplied). This Panelist interprets Paragraph 5 to mean that, while the burden of persuasion always remains with the Complainant, the Respondent does have the burden of going forward with evidence refuting the Complainant�s allegations.
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