The Complainant is Hardee’s Food Systems, Inc., St. Louis, Missouri, United States of America, represented by Neal & McDevitt, United States of America, (the “United States”).
The Respondent is Whois Privacy Protection Service, Inc. / ICS INC., Grand Cayman, Cayman Islands and Bellevue, Washington, United States, respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2012. On August 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 28, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 29, 2012.
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” 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 the Respondent of the Complaint, and the proceedings commenced on September 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 30, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 1, 2012.
The Center appointed Leon Trakman as the sole panelist in this matter on October 5, 2010. 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 Complainant is the owner of the HARDEE’S trademarks in the United States and internationally. It provides evidence of United States registrations for its registered trademarks including variations of it used in relation to its restaurant services, food products and other related services. The Complainant adduces evidence of twelve such variations of its trademark. The Complainant also provides evidence that a number of these trademarks have been in continuous use for five consecutive years subsequent to the date of registration, are still in use in commerce, and are protected under § 15 of the Lanham Act, 15 U.S.C. § 1065.
The Complainant also adduces evidence that its, or it parent company, CKE Restaurants, Inc., owns and has registered numerous domain names, providing registration details of twenty five such domain name registrations in which its trademark HARDEE’S is used.
There is no evidence available as to who the Respondent is in these administrative proceeding other than the address, that Respondent registered the disputed domain name and that the website at the disputed domain name, directs users to websites on the Internet and hyperlinks. 5. Parties’ Contentions A. Complainant
The Complainant alleges that it owns the various HARDEE’S trademark which is has registered; and that its trademarks are distinctive and well known in the restaurant and food industries throughout the world for a number of years. The Complainant maintains further that, at least as early as 1960, it has prominently used some of its trademarks in connection with restaurant services, food products and related services and that it has spent millions of dollars each year displaying, promoting, and advertising its trademarks. As a result of these efforts, the Complainant asserts that it is one of the United States’ leading restaurants and food product companies, and it is well-known internationally by its registered trademarks and domain names.
The Complainant alleges that the Respondent has deliberately infringed and diluted the Complainant’s invaluable rights in its trademarks through the unlawful registration of the disputed domain name, that the disputed domain name is identical to or confusingly similar to the Complainant’s trademark, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Respondent’s disputed domain name is confusingly similar to the Complainant’s marks, in accordance with Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1). In particular, the disputed domain name uses the Complainant’s trademark HARDEE’S in full. The addition of the word “employment” to the disputed domain name is likely to cause confusion among users who are likely reasonably to assume that “employment” refers to employment with Hardee’s Food system, Inc.. Nor does the addition of “.com” in the disputed domain name undermine that confusion. The generic Top-level domain (“gTLD’s”) such, as “.com” do not detract from the fact that the remainder of the disputed domain name is confusingly similarly to the registered trademark of a complainant. See Microsoft Corp. v. Amit Mehrotra, WIPO Case No. D2000-0053.
The Panel notes that “[g]enerally, a user of a mark ‘may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non- distinctive matter to it.’” (J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998) cited in Pfizer Inc. v. United Pharmacy Ltd.,WIPO Case No. D2001-0446. See too Telstra Corporation v. Barry Cheng Kwok Chu,WIPO Case No. D2000-0423, E. I. du Pont de Nemours and Company v. Richi Industry S. r. l),WIPO Case No. D2001-1206, and Utensilerie Associate S. p. A. v. C & M,WIPO Case No. D2003-0159.
For the reasons above, the Panel holds that Respondent’s domain name is identical or confusingly similar to the HARDEE’S trademarks, in accordance with paragraph 3(b)(ix)(1) of the Rules and Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Respondent has no right or legitimate interest with respect to its use of the disputed domain name. The Respondent is not listed as an owner of any United States trademark containing any variation of the HARDEE’S trademark. Nor is there any evidence that the Respondent owns any or has applied for any United States trademark registrations. There is no evidence that the Respondent (as an individual, business, or other organization) is commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights.
There is also no evidence of the Respondent’s actual or intended use of the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has not and is not making a legitimate noncommercial or fair use of the disputed domain name.
Nor, too, is there any evidence that the Respondent had registered or used the disputed domain name as a contractor, agent, employee, officer, director, shareholder or affiliate of the Complainant, or authorized in any other manner, whether directly or indirectly to act for and on behalf of the Complainant.
Accordingly, and for all the reasons above, the Panel considers that the Respondent has no rights or legitimate interest in the disputed domain name in accordance with Policy, paragraph 4(a)(ii) and Rules, paragraph 3(b)(ix)(2). C. Registered and Used in Bad Faith
The Respondent has registered and used the disputed domain name in bad faith, contrary to Policy, paragraphs 4(a)(iii) and 4(b) and Rules, paragraph 3(b)(ix)(3). The Panel finds that the Respondent has acted in bad faith: “[B]y using the domain name, you [Respondent] 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 Respondent has registered and used the disputed domain name in bad faith for the purpose of diverting consumers to its website by using a confusingly similar domain name to the Complainant’s mark in respect of which the Respondent has no rights or legitimate interest. The Respondent’s website features various hyperlinks that divert consumers to websites that are not associated with the Complainant, as well as hyperlinks to numerous competitors of the Complainant.
Given that the Complainant’s trademarks are well-known worldwide in connection with restaurant services, food products and related services and continues to maintain ongoing business operations in the United States and globally, and given the nature of the websites and hyperlinks as the website at the disputed domain name, it is unreasonable to maintain that the Respondent is not aware of the Complainant’s trademark.
It is entirely reasonable to hold that the Respondent obtained the disputed domain name precisely because of its similarity to the Complainant’s trademark in order to attract Internet users to the Respondent’s website. The registration and use of the disputed domain name for such purposes, and without authorization of any kind from the Complainant, constitutes bad faith by the Respondent. See Shaw Industries Group, Inc. Columbia Insurance Company.. v. Administrator, Domain,WIPO Case No. D2007-0583, citing Express Scripts, Inc. v. Windgather Investments Ltd./Mr. Cartwright,WIPO Case No. D2007-0267.
In using the disputed domain name in this manner, the Respondent has clearly acted intentionally in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website.
The Respondent’s bad faith use is further evidenced by the fact that its websites provide Internet users with links to the “employment” of competitors of the Complainant. By clicking on one of those “employment” links, information about and/or coupons for that competitor is provided to the Internet user. The result is that the Respondent’s website potentially derives income from Web users who assume that they have accessed the Complainant’s employment website. Such action by the Respondent constitutes bad faith use of the disputed domain name to attract, for commercial gain, exploiting the likelihood of confusion among Internet users with the Complainant’s trademarks. See DaimlerChrysler Corporation And DaimlerChrysler Services North America LLC. v. LaPorte Holdings, Inc., WIPO Case No. D2005-0070, citing Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031; International Business Publishers, Inc. v. the Center for business Intelligence, LLC,WIPO Case No. D2001-0181; Lifetime Products, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0719; Hardee’s Food Systems, Inc. v. Denise Jones,WIPO Case No. D2006-1571; Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. Polygenix Group Co.,WIPO Case No. D2000-0163.
In failing to make any effort to distinguish the Respondent’s website from that the Complainant, such as by confirming that the website was not associated or affiliated with the HARDEE’S trademarks or its business, the Respondent further accentuates that bad faith use.
Accordingly, the Panel holds that the Respondent has registered and is using the disputed domain name in bad faith. 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.
Leon Trakman
Sole Panelist
Date: October 18, 2012
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