WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Doctor's Associates Inc. v. Peter Nguyen
Case No. D2007-1024
1. The Parties
The Complainant is Doctor's Associates Inc., of Fort Lauderdale Florida, United States of America, represented by Valerie Pochron, United States of America.
The Respondent is Peter Nguyen, of San Francisco, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2007. On July 17, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On July 17, 2007, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 23, 2007. 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 July 25, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 14, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 15, 2007.
The Center appointed Andrew Mansfield as the sole panelist in this matter on August 22, 2007. The Panel finds that it was properly constituted. The Panel has submitted the 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
In the United States of America, the Complainant has registered on the Principal Registry of the United States Patent and Trademark Office the following marks: (1) SUBWAY, in International Class 43, bearing registration number 1,175,60, registered on October 20, 1981; (2) SUBWAY, in International Classes 29, 30, 32, 43, bearing registration number 3,013,320, registered on September 1, 2004; and, (3) SUBWAY, in International Classes 30 and 32, bearing registration number 1,307,341, registered on September 27, 1984. Complainant applied for FRESHBUZZ in International Class 43 on the Principal Registry of the United States Patent and Trademark Office on June 29, 2007, bearing application number 77218876. Complainant further applied for SUBWAY FRESHBUZZ in International Class 43 on the Principal Registry of the USPTO on July 11, 2007, on an intent to use basis, bearing serial number 77226566.
5. Parties’ Contentions
A. Complainant
Complainant alleges that it markets restaurant services under the SUBWAY trademark on a worldwide basis and licenses third parties to operate as franchisees through a series of franchise agreements. Complainant is the settlor of a Connecticut Trust that collects and administers the advertising funds on behalf of SUBWAY franchisees. Complainant has, through its subsidiaries and agents, registered the domain name and operates an advertising website at that location.
Complainant indicates that it first offered restaurant services under the SUBWAY trademark in 1967. It now operates or licenses 27,850 restaurants in 86 countries around the world. The SUBWAY trademark is registered in 138 countries.
Complainant alleges that Respondent registered the disputed domain name “www.” on April 5, 2006, approximately one month after Complainant registered and began to publicly engage in an advertising campaign based on the terms “subway”, “fresh”, and “buzz”.
Complainant alleges that the disputed domain name is confusingly similar to its SUBWAY trademark, its SUBWAY FRESHBUZZ trademark, and its domain name .
Complainant further alleges that Respondent has no rights or legitimate interests in respect to this domain name. Respondent is not nor has ever been an affiliate or franchisee of Complainant. There is no evidence, according to Complainant, that Respondent has used or intends to use the domain name in connection with a bona fide offering of goods or services. Complainant alleges that Respondent is not known by the domain name nor is Respondent making a legitimate non-commercial or fair use of the domain name.
Complainant alleges that the domain name was registered and is being used in bad faith. Complainant alleges and submits evidence that the domain name was being used to forward Internet users who arrived at the domain name to a pornographic website. Complainant alleges that Respondent is preying upon consumers who mistakenly type in the domain name but who are seeking to go to . Complainant brings to the Panel’s attention the fact that Respondent registered and began using the domain name only one month after Complainant began using SUBWAY FRESHBUZZ in advertising and on the Internet. Complainant indicates that the registration of the domain name so shortly after its use of a new trademark indicates bad faith registration.
Complainant requests that the domain name be transferred to it.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Complainant has the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:
(i) the Domain Name is 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 Name; and
(iii) the Domain Name was registered and is being used by Respondent in bad faith.
Even when a respondent defaults, as is the case here, the Complainant must establish and carry the burden of proof on each of the three elements identified above with regard to each of the disputed domain names. See Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383.
The Panel proceeds to deal with each of these elements in turn.
A. Identical or Confusingly Similar
The possession of United States Federally registered trademark rights by complainant meets the threshold requirement of possessing trademark rights sufficient to satisfy paragraph 4(a)(i) of the Policy. Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano, WIPO Case No. D2003-0661.
At the time that Respondent registered the disputed domain name, Complainant possessed a Federally registered trademark in SUBWAY. Complainant also was the owner of a vast array of international trademark rights in SUBWAY. Complainant further has used the SUBWAY trademark to promote the restaurants in its franchise system in numerous countries in a large number of advertising campaigns spanning several decades.
The domain name is confusingly similar to Complainant’s trademark SUBWAY. Other Panels have found that the addition of a common word, such as “buzz,” to a well-known trademark such as SUBWAY, does not defeat a claim of confusing similarity. See, e.g., Doctor’s Associates Inc. (DAI) v. DECO Solutions Group Inc., WIPO Case No. D2006-0892 (finding that “either the addition of a generic phrase, such as “pos” [point of sale] to a another’s trademark nor the addition of the generic top-level domain suffix “.com” is sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity.” See also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); and, Sony Kabushiki Kaisha v. Inja, Kil,WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix “.com” detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY”).
The domain name is also confusingly similar to Complainant’s trademark SUBWAY FRESHBUZZ. The trademark SUBWAY FRESHBUZZ was, however, only a potential common law trademark on the date Respondent registered the disputed domain name . Because Complainant has otherwise satisfied Paragraph 4(a)(i) of the Policy, the Panel need not investigate whether SUBWAY FRESHBUZZ had matured into common law trademark with adequate “secondary meaning” to be actionable under the Policy.1
Complainant has satisfied Paragraph 4(a)(i) of the Policy based on the confusing similarity between its trademark SUBWAY and the disputed domain name .
B. Rights or Legitimate Interests
Complainant asserts that it is aware of no rights or legitimate interests that Respondent has in the disputed domain name. The disputed domain name is not the name of the Respondent. The Panel is satisfied that complainant has made out an initial prima facie case that the 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 a right or legitimate interest in the disputed domain name. By matter of default, Respondent has failed to do so, and Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides the following non-exclusive examples of registration and use in bad faith:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel finds that Respondent has in all likelihood sought to benefit from the confusion between the disputed domain name and complainant’s trademark. Respondent’s conduct is similar to the example provided in Paragraph 4(b)(iv) of the Policy. The Panel concludes that the evidence supports a finding that Respondent registered and used the domain name to benefit from initial interest confusion and potential mistyping of . The timing of the registration of the disputed domain name and its coupling of the term “buzz” to the SUBWAY trademark at the same time that Complainant began to use FRESHBUZZ indicates an intent to attract Internet users to Respondent’s website for commercial gain. The evidence indicates that Respondent was paid for sending unsuspecting Internet users seeking information on Complainant’s services to a pornographic website.2
Complainant has, for the foregoing reasons, satisfied 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 name be transferred to the Complainant.
Andrew Mansfield
Sole Panelist
Dated: August 30, 2007
1 This also relieves the Panel from investigating whether an exception exists in this fact pattern to the general principle that bad faith cannot be found where a domain name was registered prior to the acquisition of a common law trademark rights. See, e.g., General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Center Online, WIPO Case No. D2003-0845.
2 As of the date this decision was rendered, Respondent displayed an apparent “pay-per-click” website with information on Complainant’s products and a handful of other non-related topics. This use of the disputed domain name does not change the Panel’s analysis or decision.
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