Complainant is Hardee’s Food Systems, Inc. of St. Louis, Missouri, United States of America (“United States”) and Carl Karcher Enterprises, Inc. of Carpinteria, California, United States, represented by Neal & McDevitt, United States.
Respondent is Jason Rager, Paydues Inc of Santa Fe, New Mexico, United States. 2. The Domain Names and Registrar
The disputed domain names and (the “Domain Names”) are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2011. On November 3, 2011, the Center transmitted by e-mail to GoD, Inc. a request for registrar verification in connection with the Domain Names. On November 3, 2011, GoD, Inc. transmitted by e-mail to the Center its verification response providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on November 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 29, 2011.
The Center appointed Robert A. Badgley as the sole panelist in this matter on December 5, 2011. 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
Complainant has operated for several decades two restaurant chains, Hardee’s and Carl’s Jr., with restaurant outlets throughout the United States. In a previous decision under the Policy, the panel took “judicial notice that the Hardee’s restaurant chain is well known within the United States of America.” See Hardee’s Food Systems Inc. v. Denise Jones,WIPO Case No. D2006-1571. Complainant operates many of these restaurants through franchise agreements.
Complainant holds numerous longstanding registered trademarks in the words “Hardee’s” and “Carl’s Jr”, as well as a considerable number of domain names dominated by those trademarks.
Respondent registered both of the Domain Names on July 7, 2011. The Domain Names resolve to websites featuring online applications to become franchisees of Hardee’s or Carl’s Jr. restaurants. Complainant alleges that it has no relationship with Respondent. According to Complainant, Respondent is using the websites Domain Names to promote and market a “franchise evaluation toolkit” entitled “Franchise Analyzer Professional.” 5. Parties’ Contentions A. Complainant
Complainant’s salient factual assertions are set forth above. Complainant asserts that it has satisfied the three elements of the Policy and seeks transfer of both of the Domain Names. B. Respondent
Respondent did not reply to any of Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the trademarks HARDEE’S and CARL’S JR. through registration and considerable use. The addition of the descriptive word “franchise” to these trademarks in the Domain Names does not diminish the confusing similarity between the trademarks and the Domain Names. The dominant element of each Domain Name is the trademark itself, not the word “franchise.” Moreover, the fact that Complainant operates its restaurants through franchises underscores the confusion engendered by the Domain Names.
A similar result obtained in a prior decision involving, incidentally, this same Respondent. See Two Men and a Truck Int’l / Inc. v. Jason Rager / Paydues Inc.,WIPO Case No. D2011-1312 (finding the domain name to be confusingly similar to trademark TWO MEN AND A TRUCK).
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in each of the Domain Names, among other circumstances, by showing any of the following elements:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as he does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited,WIPO Case No. D2001-0122. Nevertheless, the panel in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor,WIPO Case No. D2003-0174, correctly observed: “A respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.” As noted above, Respondent did not file a Response and hence did not effectively rebut any of Complainant’s assertions.
There is no evidence that Respondent has ever been authorized to use Complainant’s trademark in a domain name or otherwise. Likewise, there is no evidence that Respondent is commonly known by the Domain Names, or has made substantial preparations to use the Domain Names in connection with a bona fide offering of goods or services.
The Domain Names resolve to websites which feature Complainant’s trademarks, with the top of the home page stating “About Hardee’s Franchise” or “About Carl’s Jr. Franchise.” The trademarks HARDEE’S and CARL’S JR, in their stylized form, are also prominently displayed. The site also offers a “toolkit” called “Jason Rager’s Franchise Analyzer Professional.” Such unauthorized use of Complainant’s trademarks clearly does not give rise to a legitimate interest on the part of Respondent.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied. C. Registered and Used in Bad Faith
With respect to each of the Domain Names, paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use the Domain Name in “bad faith”.
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds that Respondent has registered and is using the Domain Names in bad faith under paragraph 4(b)(iv) of the Policy. It is obvious from the evidence that Respondent had Complainant’s trademarks in mind when registering the Domain Names. Complainant has alleged, and plausibly so, that Respondent is seeking to profit commercially from its use of the Domain Names by creating source confusion between Complainant and the offerings at Respondent’s websites hosted at the Domain Names. Respondent has not denied this plausible allegation.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied. 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.
Robert A. Badgley
Sole Panelist
Dated: December 7, 2011
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