WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hardee’s Food Systems Inc. v. Denise Jones
Case No. D2006-1571
1. The Parties
The Complainant is Hardee’s Food Systems Inc., St. Louis, Missouri, United States of America, represented by Neal & McDevitt, United States of America.
The Respondent is Denise Jones, Philadelphia, Pennsylvania, United States of America.
2. The Domain Names and Registrar
The disputed domain names and are registered with the registrar Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by e-mail on December 7, 2006, and in hardcopy on December 13, 2006. On December�13, 2006, the Center transmitted by e-mail to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On December�13,�2006, Go Daddy Software transmitted by e-mail to the Center its verification response confirming that the Respondent listed in the Complaint was not the registrant and providing the contact details for the proper registrant, as well as the correct administrative and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 27, 2006. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 29, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January�18,�2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 22, 2007.
After clearing potential conflicts of interest, the Center appointed Jonathan Hudis as the sole panelist in this matter on February 2, 2007. The Panel finds that it was properly constituted. The Panel has submitted its Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant claims ownership of several marks registered with the U.S. Patent and Trademark Office (“USPTO”) comprising and/or including the term HARDEE’S. Complainant attached a list of registered and pending “HARDEE’S …” marks with the USPTO. While the Panel would have preferred copies of the registration certificates (or, at least, copies of TESS and TARR printouts from the USPTO’s online database) attached to Complaint, the Panel has satisfied itself that the named Complainant, Hardee’s Food Systems, Inc. is indeed the owner of the registrations recited in the exhibit to the Complaint.
Complainant claims ownership of the various “HARDEE’S …” marks for restaurant services, food products and other related services. Complainant asserts that it prominently has used some of the “HARDEE’S …” marks and names in connection with these services since at least as early as 1960. Complainant further asserts that it has spent millions of dollars in advertising these marks and related services, and as a result asserts that its marks are well known for such services.
According to the Whois information attached to the Complaint, and verified by the Center, the subject domain names were both registered with the domain name registrar GoD, Inc. on May 16, 2006, under the Registrar’s private registration service. Under this service, the actual Registrant of the domain names is not disclosed in the registrar’s Whois records. Rather, the recited domain name Registrant is listed as “Domains by Proxy, Inc.” of Scottsdale, Arizona, U.S.A.
When attempting to access web pages corresponding to the subject domain names, a Go Daddy “Parked Free” page appears. These “Parked Free” pages contain advertising for the sale of domain names, domain name transfers, web hosting, domain name aftermarket services, as well as a weekly live Internet stream/chat with the domain name registrar’s CEO and founder.
5. Parties’ Contentions
A. Complainant
Complainant asserts that the subject domain names are identical or confusingly similar to trademarks or service marks in which Complainant has rights; that the Respondent has no rights or legitimate interests in the domain names; and that the domain names were registered and are being used in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Complainant has the burden of establishing each of the three following elements under paragraph 4(a) of the Policy:
(i) The domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) The domain names have been registered and are being used in bad faith.
Failure to prove any one of these factors is fatal to the Complaint.
Respondent had the opportunity to respond and present evidence that she has rights or legitimate interests in respect of the contested domain names. Respondent chose not to do so. Complainant is not entitled to relief simply by reason of Respondent’s default, however, but the Panel can and does draw evidentiary enforces from Respondent’s failure to respond. Patelco Credit Union v. ActiveI, Inc., WIPO Case No. D2005-1295 (February 27, 2006).
For example, paragraph 14 of the Rules provides that:
“(a) In the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules, the Panel shall proceed to a decision on the Complaint.
(b) If a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such enforces therefrom as it considers appropriate.”
The Panel must now decide whether Complainant has come forward with sufficient evidence to satisfy the requirements of paragraphs 4(a)(i), (ii) and (iii) of the Policy.
A. Identical or Confusingly Similar
Complainant has demonstrated its rights in the “HARDEE’S …” marks to the Panel’s satisfaction by its submission with the Complaint of information pertaining to its federal U.S. trademark/service mark registrations, as well as assertions of its common law usage of these marks, which contentions are uncontested by Respondent. The disputed domain names, and , are confusingly similar to the “HARDEE’S …” marks in which Complainant has rights. Respondent’s domain names contain the term HARDEES (in which Complainant has proven rights), with the word “jobs” added. However, the term “jobs” does nothing to differentiate the contested domain names from Complainant’s registered “HARDEE’S …” marks. Rather, a domain name Registrant may not avoid a finding of confusing similarity by appropriating another’s entire mark and adding descriptive or non-distinctive matters to it. Telltra Corp. v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423 (June 21,�2000); E.I. Du Pont De Nemours and Co. v. Richi Industry S.R.L., WIPO Case No. D2001-1206 (November�20,�2001); and Utensilerie Associate S.P.A. v. C & M, WIPO Case No. D2003-0159 (April 10, 2000).
Further, the addition of “.com” or “.net” to Complainant’s “HARDEE’S …” marks in the subject domain names does not change the fact of confusing similarity. The addition of, for example, the “.com” top level domain is irrelevant in distinguishing a Complainant’s mark from a contested domain name. Microsoft Corp. v. Amit Mehrotra, WIPO Case No. D2000-0053 (April 10, 2000).
The Panel therefore finds that Complainant has met its burden with respect to paragraph 4 (a)(i) of the Policy.
B. Rights or Legitimate Interests
Respondent has not come forward to rebut Complainant’s prima facie showing that Respondent has no rights or legitimate interests in the disputed domain names. In particular, Respondent has not come forward to provide any evidence of the following:
(i) Before any notice to Respondent of this dispute, her use of, or demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if she has acquired no trademark or service mark rights therein; or
(iii) She is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish Complainant’s trademarks and service marks at issue.
Paragraphs 4(c)(i) – (iii) of the Policy.
Therefore, in the absence of any evidence or argument submitted by Respondent and in light of the findings under the third element of the Policy, the Panel finds that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The most difficult part of the Panel’s decision concerns whether Complainant has met its burden with respect to paragraph 4(a)(iii) of the Policy, namely proof of Respondent’s registration and use of the contested domain names in bad faith. Each of the examples set forth in paragraphs 4(b)(i) – (iv) of the Policy describe purposeful conduct by the domain name Registrant/Respondent indicating circumstances of bad faith (e.g., offering to sell the domain name to Complainant for an excessive amount; an intent to prevent Complainant from reflecting its mark in a corresponding domain name; registering the domain name to disrupt Complainant’s business (as a competitor); or intentionally attempting to attract for commercial gain Internet users to Respondent’s site by creating a likelihood of confusion with Complainant and/or its mark(s)).
For example, while it is clear that commercial activity is being promoted on the “Parked Free” web pages set up by the GoD registrar, no proof has been submitted to the Panel indicating that this activity was engaged in or authorized by Complainant.
However, as the WIPO overview of WIPO Panel views on selected UDRP questions (the “WIPO Decision Overview,” available at )1 makes clear, “[t]he lack of active use of the domain name does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether Respondent is acting in bad faith. Examples or circumstances that can indicate bad faith include Complainant having a well-known trademark, no response to the Complaint, concealment of [the registrant’s] identity and the impossibility of conceiving a good faith use of the domain name. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.” WIPO Decision Overview at Section 3.2.
Here, the Panel takes judicial notice that the Hardee’s restaurant chain is well known within the United States of America. As shown by an attachment to the Complaint, as part of her registration of the disputed domain names, Respondent represented and warranted to the domain name registrar that “each registration You make is being done so in good faith and that You have no knowledge of it infringing upon or conflicting with the legal rights of a third party or a third party’s registration, trademark or trade name.” GoDaddy Domain Name Registration Agreement, Section 10, first paragraph.
Given the notoriety of the Hardee’s restaurant chain, the Panel cannot conceive that Respondent registered the subject domain names in compliance with her representations and warranties to the domain name Registrar.
Further, Respondent did not answer the Complaint, nor does the case file indicate any requests for an extension of time for Respondent to do so. Additionally, by virtue of her private registration of the contested domain names with the GoD registrar, Respondent concealed her identity, such that Complainant was forced to file an Amended Complaint after the domain name registrar revealed Respondent’s true identity to the Center. Finally, the Panel cannot conceive of how Respondent could have made or make in the future a good faith use of the contested domain names without violating Complainant’s trademark rights.
Therefore, the Panel finds that Complainant has met its burden with respect to paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names and be transferred to Complainant.
Jonathan Hudis
Sole Panelist
Dated: February 28, 2007
1 Although the WIPO Decision Overview is not precedential in nature, it does reflect a studied and considered a summary of consensus positions culled from the decisions of numerous Panelists during the first five years of administration of the Policy. When such a consensus has developed, it is incumbent upon Panels to follow the consensus (or the majority view) to promote consistency among Panel decisions. Fresh Intellectual Properties, Inc. v. 800N, Inc.,WIPO Case No. D2005-0061 (March 21, 2005) at n.3.
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