Complainant is Hardee’s Food Systems, Inc. of St. Louis, Missouri, United States of America, represented by Neal & McDevitt, United States of America.
Respondent is Bruce Boggio of Hennepin, Illinois, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on September 11, 2012. On September 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain name. Complainant filed an amendment to the Complaint on September 20, 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 Respondent of the Complaint, and the proceedings commenced on September 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 15, 2012.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on November 14, 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
Complainant has used the HARDEE’S mark in connection with restaurant services and food products since 1960.
Complaint owns numerous United States and foreign trademark registrations for the HARDEE’S marks. Some of these United States Trademark Registrations are:
HARDEE’S, Registration No. 741048
HARDEE’S, Registration No. 1729627
HARDEE’S, Registration No. 1774336
HARDEE’S, Registration No. 1817990
HARDEE’S, Registration No. 1825221
Complainant and its parent company, CKE Restaurants, Inc., own numerous domain names including:
and others.
The disputed domain name was registered on May 16, 2012, and expires May 17, 2014. 5. Parties’ Contentions A. Complainant
With respect to paragraph 4(a)(i) of the Policy, Complainant alleges that:
Complainant owns the HARDEE’S trademark and numerous registrations therefore.
The disputed domain name is identical to Complaint’s registered HARDEE’S trademark except for the apostrophe and the addition of the “.info” top-level domain (TLD), both of which are irrelevant in the analysis. Thus, the disputed domain name is identical or confusingly similar to the HARDEE’S trademark in which Complainant has rights.
With respect to paragraph 4(a)(ii) of the Policy, Complainant alleges that:
Respondent does not have any rights or legitimate interests with respect to its use of the disputed domain name. Respondent has no registered trademarks or trade names corresponding to the disputed domain name and there is no evidence that Respondent has been commonly known by the disputed domain name. In addition, there is no evidence of Respondent’s use of, or demonstrable preparations to use, the disputed domain name, or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Respondent is using the disputed domain name with intent for commercial gain and to misleadingly divert consumers to sites that are not associated with Complainant. At the website to which the disputed domain name directs there are hyperlinks to numerous competitors of Complainant. In addition, because the disputed domain name resolves to a parked page, this constitutes “passive holding” of the disputed domain name by Respondent. Thus, Respondent has no rights or legitimate interests in the disputed domain name.
With respect to paragraph 4(a)(iii) of the Policy, Complainant alleges that:
Complainant’s HARDEE’S marks are well-known world wide in connection with restaurant services and food products. By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademark.
The registration of Complainant’s well-known trademark, of which Respondent must have been aware, constitutes opportunistic bad faith. Also, there is no statement on the website to which the disputed domain name directs indicating that the website is not associated with Complainant. The website at “www.” provides Internet users with links to competitors of Complainant. In addition, this website potentially derives revenue from “click-through” advertising from confused Internet users who were looking for a HARDEE’S website. Thus, Respondent’s use is a clear attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s HARDEE’S marks. Respondent’s use of Complainant’s mark for the purpose of driving traffic to Respondent’s website is not a bona fide attempt to offer goods and services to others.
Further, Complainant requested that Respondent transfer the disputed domain name to Complainant but Respondent ignored the request as well as follow-up correspondence. B. Respondent
The Respondent did not respond to Complainant’s contentions. Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations in the Complaint, and may draw appropriate inferences. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; see also paragraph 5(e) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”). 6. Discussion and Findings
Complainant must prove that: (i) the disputed 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 disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. (Policy, paragraph 4(a).) A. Identical or Confusingly Similar
Given Complainant’s trademark registrations and long use of the HARDEE’S trademark in the United States and worldwide, the Panel finds that Complainant has trademark rights in the HARDEE’S mark.
The Panel also finds that the disputed domain name is nearly identical to or confusingly similar to Complainant’s HARDEE’S mark. The disputed domain name incorporates Complainant’s entire trademark and differs from Complainant’s registered HARDEE’S mark only by adding a non-distinctive apostrophe and the “.info” TLD. Busy Body, Inc. v. Fitness Outlet Inc.,WIPO Case No. D2000-0127 (“the addition of the generic top-level domain (gTLD) name ‘.com’ is … without legal significance since use of a gTLD is required of domain name registrants”).
The Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights. Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
In order for Respondent to demonstrate rights or legitimate interests in the disputed domain name, it must show
(i) before any notice to [Respondent] of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the domain name 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 disputed domain names, even if [Respondent] has acquired no trademark or service mark rights; or
(iii) [Respondent] is making a legitimate non-commercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name. There is no known relationship between Complainant and Respondent.
With respect to 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name, and has not used the disputed domain name, or a name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services.
It is a complainant’s burden to prove that a respondent lacks rights or legitimate interests in a disputed domain name. National Construction Rentals, Inc. v. T, Inc.,WIPO Case No. D2009-0147. Because it is difficult to prove a negative assertion, the threshold is low. A complainant need only make a prima facie showing on this element, at which point the burden shifts to respondent to present evidence that it has some rights or legitimate interests in the domain name at issue. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. The ultimate burden of proof, however, remains with complainant. Id. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141.
The Panel finds that the above facts establish a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name. Moreover, Respondent has not rebutted such a prima facie showing and therefore Complainant has succeed with respect to this Policy element. C. Registered and Used in Bad Faith
Complainant’s allegation of bad faith is not contested. Also, it is highly unlikely that Respondent was unaware of Complainant’s trademark rights when Respondent registered the disputed domain name at issue on May 16, 2012, since the HARDEE’S mark had been continuously in use for more than 50 years prior thereto and was also registered in the United States and elsewhere long before Respondent registered the disputed domain name.
Under the Policy, it is evidence of bad faith that, “by using the disputed domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with complainant’s mark as to source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” Paragraph 4(b)(iv) of the Policy.
In the present case, it is alleged that Respondent is using the disputed domain name to generate traffic to its parked page where revenue is derived from “click-through” advertising and where there are links to competitor’s goods and services. For example, the record evidence shows links to well-known United States fast food competitive brands, including POPEYES and MCDONALDS. The action is evidence of bad faith registration and use. It is well-settled that the adoption of well-known trademarks without permission or rights therein, particularly when used to advertise competitive goods/services is evidence of bad faith registration and use. See Six Continents Hotels, Inc. v. Telmex Management Services,WIPO Case No. D2001-0996 (“the deliberate adoption of Complainant’s well-known trademarks without any apparent right or interest therein, raises a prima facie presumption of bad faith registration, and Complainant’s demonstrated use of the domain names to link to other [similar] service sites…demonstrates bad faith use”).
Accordingly, the Panel finds that the disputed domain names were registered and are being used in bad faith. Therefore the Panel finds that Complainant has proven 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.
Lawrence K. Nodine
Sole Panelist
Date: November 28, 2012
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