Complainant is Hardee’s Food Systems, Inc. of St. Louis, Missouri, United States of America.
Respondent is HR Gems Inc. of Naples, Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name, (the “Disputed Domain Name”), is registered with DomainPeople, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on September 17, 2012. On September 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 18, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as registrant and providing the contact details for the Disputed Domain Name.
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 October 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 23, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 26, 2012.
The Center appointed Lynda M. Braun as the sole panelist in this matter on November 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
Complainant is one of the United States’ leading restaurants and food product companies, and it is well-known in the United States and internationally. Complainant owns numerous registrations in the United States for the HARDEE’S trademarks as well as numerous registrations for the HARDEE’S trademarks in various foreign countries. Many of these registrations have been in continuous use for five consecutive years subsequent to the date of registration and are still in use in commerce, and thus are incontestable under Title 15 of the Lanham Act, 15 U.S.C. section 1065.
Since at least as early as 1960, Complainant has prominently used the HARDEE’S trademarks in connection with restaurant services, food products and related services. Complainant has spent millions of dollars each year displaying, promoting, and advertising its trademarks. Complainant requested, on more than one occasion, that Respondent transfer the Disputed Domain Name to Complainant, but Respondent ignored those requests. Complainant, and Complainant’s parent company, CKE Restaurants, Inc., owns and has registered dozens of domain names.
The Disputed Domain Name was registered on June 1, 2012. 5. Parties’ Contentions A. Complainant
First, Complainant claims that the Disputed Domain Name is confusingly similar to a registration in which Complainant has rights, as follows:
- The fact that Respondent has a domain name that contains marks and registrations owned by the Complainant leads to the inevitable conclusion that Respondent’s domain name is confusingly similar to registrations in which the Complainant has rights.
- Further, the addition of the words “join” and “team” increase the risk of potential confusion.
Second, Complainant alleges that Respondent has no rights or legitimate interests in the Disputed Domain Name, as follows:
- There is no evidence of 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.
- Respondent is not making a legitimate noncommercial or fair use of the domain name. Rather, Respondent is blatantly using the domain name with intent for commercial gain and to misleadingly divert consumers.
- Respondent’s website features various hyperlinks that divert consumers to sites that are not associated with Complainant, as well as hyperlinks to numerous competitors of Complainant.
Third, Complainant claims that Respondent has registered and is using the Disputed Domain Name in bad faith, as follows:
- 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 trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.
- Respondent is familiar with Hardee’s and its well known trademarks. The registration of a well known trademark in a domain name, of which the Respondent must reasonably have been aware, constitutes opportunistic bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), Complainant must prove each of the following to justify the transfer of the Disputed Domain Name:
(i) That the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) That Respondent has registered and is using the Disputed Domain Name in bad faith.
These elements are discussed as follows: A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name, , which incorporates Complainant’s trademark in its entirety, is confusingly similar to that trademark.
Complainant has valid and well established rights in its HARDEES family of trademarks. The words “join” and “team” in the Disputed Domain Name are descriptive and indicate that the website involves being part of a Hardees team, whether of employees or customers. The addition of the words “join” and “team” in the Disputed Domain Name do not remove the similarity but rather increase the risk of confusion for consumers. Consumers would likely believe that any website to which the Disputed Domain Name would resolve offers Complainant’s well-known restaurant services.
It is well established that the addition of descriptive or generic words to a trademark does nothing to change an otherwise identical or confusingly similar domain name. Z, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191 (the panel found confusing similarity where “shop” and a hyphen were added to the trademark of the complainant in the disputed domain name). See also PRL USA Holdings, Inc. v. Unasi Management Inc.,WIPO Case No. D2005-1027 (descriptive or generic additions do not avoid confusing similarity of domain names and trademarks); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality,WIPO Case No. D2005-1028 (the addition of generic words to a mark to form a domain name is insufficient to dispel confusing similarity).
Accordingly, the first element of paragraph 4(a) of the Policy has been met by Complainant. B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In this case, Complainant has made out a prima facie case. Respondent has not submitted any arguments or evidence to rebut Complainant’s prima facie case. Respondent’s lack of reply notwithstanding, there is no evidence in the record that Respondent is in any way associated with Complainant, that Respondent is now or was ever known by the Disputed Domain Name, or that Respondent had any authority, license or permission to use Complainant’s trademark. Nor was Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Respondent was using the Disputed Domain Name for commercial gain.
The website to which the Disputed Domain Name resolves is a parking page that contains sponsored links to a variety of third party sites that promote restaurant-related services.1 Respondent undoubtedly collects referral fees for these links on the pay-per-click websites. Prior UDRP decisions have made it clear that such use does not constitute a legitimate use of a domain name or the legitimate offering of goods or services. PRL USA Holdings, Inc. v. LucasCobb,WIPO Case No. D2006-0162.
Although there is nothing per se illegitimate in using a domain parking service, linking a domain name to such a service with a trademark owner’s name in mind and in the hope and expectation that Internet users searching for information about the business activities of the trademark owner will be directed to the parking service page, is a different matter. Such activity does not provide a legitimate interest in that domain name under the Policy. See Express Scripts, Inc. v. Windgather Investments LTD / Mr. Cartwright,WIPO Case No. D2007-0267.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by Complainant. C. Registered and Used in Bad Faith
The Policy identifies the following circumstances that, if found, are evidence of registration and use of a domain name in bad faith
(i) circumstances indicating that a respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) 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) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, a 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 on respondent’s website or location.
Policy, paragraph 4(b).
This Panel finds that based on the record, Complainant has demonstrated the existence of Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, based on the circumstances here, Respondent registered and used the Disputed Domain Name in bad faith because Respondent was attempting to attract, for commercial gain, Internet users to Respondent’s
websites by creating a likelihood of confusion with Complainant’s trademarks. Respondent was also preventing Complainant from making a legitimate use of the Disputed Domain Name. Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use was done for the specific purpose of trading on the name and reputation of Complainant and its trademarks. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain” and “[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law.”).
Second, Respondent’s action of registering the Disputed Domain Name and using it to direct Internet traffic to its website evidences intent to disrupt Complainant’s business, deceive customers and trade off Complainant’s goodwill by creating an unauthorized association between Respondent and Complainant’s trademark. See Banco Bradesco S.A. v. Fernando Camacho Bohm,WIPO Case No. D2010-1552.
Third, the websites to which the Disputed Domain Name currently resolves contains sponsored ads to various websites that promote restaurant services, among other items. As such, Respondent is not only trading on consumer interest in Complainant in order to generate Internet traffic and to commercially benefit from the sponsored links that appear on the websites, but Respondent also derives commercial advantage in the form of referral fees. This constitutes bad faith. Fox News Network, LLC v. Warren Reid,WIPO Case No. D2002-1085; Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556; Lewis Black v. Burke Advertising, LLC,WIPO Case No. D2006-1128. Further, when the links on pay-per-click landing pages are based on the trademark value of the domain name, the trend in UDRP decisions is to recognize that such practices constitute abusive cybersquatting. See, e.g., Champagne Lanson v. Development Services/MailP, Inc.,WIPO Case No. D2006-0006 (pay-per-click landing page not legitimate where ads are keyed to the trademark value of the domain name); The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340 (same); Brink’s Network, Inc. v. Asproductions,WIPO Case No. D2007-0353 (same).
Fourth, Respondent knew or should have known of Complainant’s rights in its trademarks when registering the Disputed Domain Name and creating a website that appeared to be a legitimate website promoting restaurant services. Complainant’s trademarks are well-known, widely used and had been in use by Complainant for decades. Indeed, when a domain name contains a well known trademark, no other action, aside from registering the domain name, is required for a finding of bad faith. See Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763 (a finding of bad faith may be made where Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the domain name).
Finally, Respondent did not respond to a request to transfer the Disputed Domain Name to Complainant. Failure to respond to a complainant’s efforts to make contact provides "strong support for a determination of ‘bad faith’ registration and use." Encyclopaedia Britannica v. Zucarini,WIPO Case No. D2000-0330.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by Complainant. 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 Complainant.
Lynda M. Braun
Sole Panelist
Dated: November 8, 2012
1 It is common knowledge that the way in which many of these services operate is that the domain parking service operators obtain “click through revenue” when Internet users click on the “sponsored links” on the displayed pages. Many of these services will then provide the domain name registrant with part of that “click through” revenue.
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