Complainant is Cousins Submarines, Inc. of Wisconsin, United States of America, represented by Boyle Fredrickson, S.C., United States of America.
Respondent is Yuki Lam of Aberdeen, Hong Kong / Netfirms, K.L. Peterson of Massachusetts, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with FastDomain, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2012. On June 29, 2012, the Center transmitted by email to FastDomain, Inc. a request for registrar verification in connection with the disputed domain name. On July 1, 2012, FastDomain, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and 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 July 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 25, 2012.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on August 7, 2012. 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
The factual findings pertinent to the decision in this case are that:
1. Complainant is the head franchisor of a restaurant business in the United States which operates under the trade mark COUSINS SUBS.
2. Complainant owns, inter alia, United States Trade Mark Reg. No. 1,705,595 registered April 4, 1991 for the trade mark COUSINS SUBS.
3. The disputed domain name was registered on March 28, 2012.
4. The domain name resolves to a website that appears to offer a franchise opportunity with Complainant.
5. There is no franchise, subfranchise or other commercial agreement between the parties and Complainant has not authorized Respondent to use its trade mark or to register any domain name incorporating its trade mark. 5. Parties’ Contentions A. Complainant
Complainant asserts trade mark rights in COUSINS SUBS and alleges that the disputed domain name is confusingly similar to the trade mark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact Respondent failed to submit a reply. According to paragraph 4(a) of the Policy, Complainant must prove that:
(i) the domain name is identical or confusingly similar to a trade mark 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.
Having considered the Complaint and the available evidence, the Panel finds the following: A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is well established by former decisions under this Policy that a trade mark registered with a national authority is evidence of trade mark rights. Since Complainant provides evidence of its United States Patent and Trademark Office trade mark registrations, the Panel is satisfied that it has trade mark rights (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
The Panel is also satisfied that the disputed domain name is confusingly similar to Complainant’s trade mark. The disputed domain name takes the trade mark and adds non-distinctive elements – namely, the gTLD “.com”, and the purely descriptive term “franchise”, neither being added matter which distinguishes the disputed domain name from the trade mark in any significant way so as to avoid confusion (see Rollerblade, Inc. v. McCrady,WIPO Case No. D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see also Westfield Corp. v. Hobbs,WIPO Case No. D2000-0227 (WIPO May 18, 2000) finding the domain name confusingly similar to the registered WESTFIELD trade mark).
The Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or legitimate interests (see Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624 (WIPO August 21, 2000); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum August 18, 2006); AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum September 25, 2006).
The publicly available WhoIs information identifies Respondent as “Yuki Lam / Netfirms, K.L. Peterson” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trade mark rights in COUSINS SUBS. There is no evidence that Complainant has authorized Respondent to use the trade mark and Complainant denies any such authorization.
There is no evidence that the disputed domain name has been used in connection with a bona fide offering of goods or services prior to notice of the dispute. Complainant provides evidence that the disputed domain name resolves to a website that falsely purports to offer franchise opportunities with Complainant. The Panel finds that such use does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to either of paragraphs 4(c)(i) or (iii) of the Policy.
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish rights or legitimate interests in the disputed domain name. In the absence of a Response, that onus is not rebutted and so the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name and so finds that Complainant has satisfied the second limb of the Policy. C. Registered and Being Used in Bad Faith
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
“(i) circumstances indicating that the respondent has registered or 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.”
The Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(iv) above. The Panel has already found the disputed domain name to be confusingly similar to Complainant’s trade mark. The Panel accepts as more likely than not to be true Complainant’s allegation that Respondent uses the resolving website as a vehicle to harvest personal information from unsuspecting franchise “applicants” and so the Panel finds that, directly or indirectly, Respondent’s intention is for commercial gain. In terms of paragraph 4(b)(iv) of the Policy, the Panel finds that it is more likely than not that Respondent is using the disputed domain name to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s trade mark.
Panel finds registration and use in bad faith and so finds that Complainant has established the third and final element of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, be transferred to the Complainant.
Debrett G. Lyons
Sole Panelist
Dated: August 21, 2012
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