Complainant is IHOP Restaurants LLC of Glendale, California, United States of America, represented by Neal, Gerber & Eisenberg, United States.
Respondent is A Williamson of San Diego, California, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with NameSilo, LLC (“Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on November 19, 2014. On November 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from that in the Complaint, as well as providing other details of the registration. The Center sent an email communication to Complainant on November 21, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to amend the Complaint. Complainant filed an amended Complaint on November 24, 2014.
The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceeding commenced on November 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2014. No response was submitted. Accordingly, the Center notified the default on December 18, 2014.
The Center appointed Debra J. Stanek as the sole panelist in this matter on January 5, 2015. 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 an affiliate of International House of Pancakes, LLC, which, along with its affiliates have operated the Intenational House of Pancakes restaurant chain in North America and elsewhere for many years. Complainant claims United States trademark registrations for the mark IHOP since at least 2008, as a word mark and in a stylized form, for restaurant services. Complainant or its affiliated companies own and use the domain name for a web site that promotes International House of Pancakes restaurants.
The domain name was registered in July 2014. As of the date of this decision, the disputed domain name resolves to a password-protected page. Prior to the filing of the Complaint, however, it led to to a web site that offered online ordering and delivery services for IHOP restaurants in the New York area, including an IHOP logo and images of menu items. Apparently in response to Complainant’s objections to the web site and domain name, Respondent removed some material from the site, but has not transferred the domain name. 5. Parties’ Contentions A. Complainant 1. Identical or Confusingly Similar
Complainant owns several United States federal trademark registrations for the IHOP trademark, which has been used for many years in connection with restaurants and carryout services.
The Complaint includes printouts from the “www.” web site purporting to detail the history of the restaurant chain and the IHOP mark, including that the acronym “IHOP” began use as a trademark in at least 1973.
Complainant and its affiliates own many registered trademarks and service marks for the mark IHOP and variants. Since late 1998, Complainant or its affiliates have owned and used the domain name.
Over the years, Complainant has expended substantial resources to advertise and promote the IHOP marks throughout North America.
The domain name is virtually identical to and confusingly similar to the IHOP mark because it consists of IHOP’s registered IHOP mark plus a generic term, “delivery”. Moreover, the addition of the generic term, “delivery”, may increase confusion because Complainant offers catering services in connection with its restaurant services. 2. Rights or Legitimate Interests
Respondents1 have no legal relationship with Complainant through which they can claim any rights to the disputed domain name. Complainant has not consented to Respondents’ registration of the domain name.
Respondents are not referred to or commonly known as .
Respondents do not own any applications or registrations for the term “IHOP.”
Respondents are not making a legitimate noncommercial or fair use of the domain name. Instead, they have used the domain name for a web site titled “IHOP Delivery” that was filled with copyrighted images of IHOP’s food products and purported to provide online ordering and delivery services for IHOP food products.
Respondents have not used the IHOP mark in connection with the bona fide offering of goods or services. 3. Registered and Used in Bad Faith
Respondents registered and used the disputed domain name in bad faith with full knowledge of the IHOP Mark. Given the worldwide renown of the IHOP Mark, it is patently implausible that Respondents innocently registered the domain name without a design to exploit its similarity to the IHOP Mark.
Moreover, Respondents had constructive knowledge of IHOP’s long-standing rights in the IHOP mark by virtue of Complainant’s trademark registration.
Respondents’ bad faith is also evidenced by the use of images copied from Complainant’s web site, which also constitutes trademark and copyright infringement.
Finally, the failure to respond fully to Complainant’s repeated correspondence also evidences bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Procedural Matter
The Rules define a “Respondent” as “the holder of a domain-name registration against which a complaint is initiated.” See Rules, paragraph 1, s.v. “Respondent.” The Panel is of the view that a complaint is “initiated” when it is filed with the Center as described in the Rules, paragraph 3. Paragraph 3(a) of the Rules provides (emphasis added):
“Any person or entity may initiatean administrative proceeding by submitting a complaint in accordance with the Policy and these Rules to any Provider approved by ICANN.”
In contrast, paragraph 4(c) of the Rules, entitled “Notification” of Complaint refers instead to the “commencement” of the proceedings as being the date on which the the Center “completes its responsibilities under Paragraph 2(a) in connection with sending the complaint to the Respondent.”
Therefore, the original Complaint correctly named PrivacyG2 as the Respondent - it was the holder of the disputed domain name registration at the time the Complaint was filed with the Center—and no amendment ought to have been necessary. Nonetheless, under these circumstances, the Center invites a complainant to amend the complaint to address the “changed” information. Upon filing of an amended complaint, the Center notifies the newly-identified holder of the domain name of the filing of the Complaint, giving the holder an opportunity to respond. In the Panel’s experience, in most cases, the post-filing change seldom provides any additional facts or relevant arguments.
That said, Complainant has named both PrivacyG and A Williamson as Respondents. Despite the Panel’s view that the original Complaint naming PrivacyG as Respondent was technically proper and that A Williamson is not technically a “Respondent” within the meaning of the Policy, for purposes of this decision, the Panel treats only “A Williamson,” who appears to be responsible for, and the beneficial holder of, the disputed domain name as Respondent. B. Substantive Matters
In order to prevail, a complainant has the burden of showing, as to a disputed domain name, that:
(i) It is identical or confusingly similar to a mark in which the complainant has rights.
(ii) The respondent has no rights or legitimate interests in respect to it.
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see paragraph 4(c) of the Policy, as well as circumstances that may evidence a respondent’s bad faith registration and use, see paragraph 4(b) if the Policy.
Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. See WIPO Overview 2.0, paragraph 4.6. Rather, Complainant continues to have the burden of establishing the required elements. The Panel may, however, draw such inferences from Respondent’s default as it considers appropriate. See Rules, paragraph 14(b). (1) Identical or Confusingly Similar
Complainant appears to rely on its rights in its marks as registered—rather than relying on common law trademark rights by means of a showing, supported by appropriate evidence, such as that contemplated under WIPO Overview 2.0, paragraph 1.7. The Complaint identified three United States federal trademark registrations and attached a list of numerous others.
The Panel’s general practice under these circumstances is to issue a Panel Order requesting that Complainant state whether it intended to rely on any registrations and giving it an opportunity to comply with the Rules. See Rules, paragraph 3(b)(xv). Here, however, Complainant’s marks were sufficiently well-known that the Panel, again consistent with the consensus view as reflected in WIPO Overview 2.0, paragraph 4.5, undertook limited factual research into the public record to review the three cited registrations in the United States Patent and Trademark Office database. After reviewing the registrations and assignment history, the Panel confirmed Complainant’s assertion of ownership of the three cited registrations for restaurant services and frozen and prepared meals.3
Accordingly, the Panel finds that Complainant has established its rights in the IHOP mark by virtue of its United States federal trademark registrations.
Respondent’s domain name is not identical to Complainant’s mark. As a general matter, a domain name is likely to be confusingly similar to a mark if it incorporates the mark or a variation of the mark. Here, the domain name consists of the IHOP mark followed by the generic term “delivery”. The addition of that term does not, in the Panel’s view effectively differentiate or distinguish the domain name from Complainant’s mark, which remains the dominant portion of the domain name (the presence or absence of spaces and the addition of the genericTop-Level Domain “.com” is generally not relevant for purposes of this comparison).
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights. (2) Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that a respondent lacks rights or legitimate interests. See WIPO Overview 2.0, paragraph 2.1 (after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the domain name shifts to the respondent).
Paragraph 4(c) of the Policy sets out the following examples:
(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 trademark 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 trademark or service mark at issue.
As to this element of the Policy, Complainant asserts:
- Respondent has no legal relationship with Complainant through which it can claim any rights to the domain name.
- Complainant has not consented to Respondent’s registration of the domain name.
- Respondent is not referred to or commonly known as .
- Respondent does not own any applications or registrations for the term “IHOP.”
- Respondent’s use of the domain name to offer an online ordering and delivery service for IHOP products is not noncommercial use and is not a legitimate fair use without intent for commercial gain.
- Respondent’s use of a stylized IHOP RESTAURANTS logo on the web site associated with the domain name, along copyrighted images of menu items copied from the “www.” website prevents the use from being in connection with a bona fide offering.
Complainant provides little evidence or argument in support of these assertions. Although presenting a somewhat close question, the Panel nonetheless concludes that, on balance and taking into account Complainant’s burden of establishing a prima facie case, it has made aprima facie showing on this element of the Policy, which has not been rebutted.
It does not appear that Respondent is commonly known by the domain name; Respondent appears to be an individual named A Williamson. Respondent’s use of the domain name appears to be for commercial purposes and intended for commercial gain. Complainant, which established ownership of at least three IHOP marks, has not authorized Respondent’s use of the marks, any IHOP logo, or any images from Complainant’s “www.” web site. On this record, it does not appear that Respondent has used the domain name in connection with a bona fide offering. As noted above, the disputed domain name is confusingly similar to Complainant’s IHOP mark. Visitors to the site were presented with what appears to be an IHOP RESTAURANTS logo and images of IHOP products identical to those that appear on the “www.” web site.
Respondent might have been able to submit some evidence regarding the offered delivery services and its use of IHOP marks and images. The Panel notes that the bottom of the web page that the disputed domain name at one time resolved to did contain a statement purporting to claim some relationship with individual IHOP franchisees.
“IHOPDELIVERY.COM IS A THIRD PARTY RESTAURANT MARKETING SERVICE. IHOPDELIVERY.COM IS NOT AFFILIATED WITH DINEEQUITY. IHOPDELIVERY.COM WORKS WITH INDIVIDUAL IHOP FRANCHISES AND FRANCHISE OWNERS. MOST OF THE IMAGES/CONTENT FOUND ON THIS SITE BELONG EXCLUSIVELY TO DINEEQUITY, ITS PARTNERS OR FRANCHISEES. IHOPDELIVERY.COM DOES NOT CLAIM CREDIT FOR ANY IMAGES FOUND ON THIS SITE. THE MENU/ITEM DEPICTIONS AND DESCRIPTIONS FOUND ON THIS SITE MAY VARY. AVAILABILITY AND PRICES ARE SUBJECT TO CHANGE AT ANY NOTICE.”
Accordingly, Respondent might have been able to advance some argument that it was making a legitimate fair use or that its offering was bona fide. Nevertheless, by virtue of its default, Respondent has not advanced any argument. The Panel has no basis to reach other conclusions regarding Respondent’s rights or legitimate interests.
The Panel concludes that Complainant has established that Respondent lacks any rights or legitimate interests in the disputed domain name. (3) Registered and Used in Bad Faith
A complainant must establish that the domain name was registered and is being used in bad faith. The Policy sets out four non-exclusive circumstances, evidence of which may establish bad faith (see Policy, paragraph 4(b)(i)-(iv)):
(i) Registering the domain name primarily to sell it for more than documented out-of-pocket costs (see Policy, paragraph 4(b)(i)).
(ii) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct (see Policy, paragraph 4(b)(ii)).
(iii) Registering the domain name primarily to disrupt the business of a competitor (see Policy, paragraph 4(b)(iii)).
(iv) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site 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] web site or location or a product or service on [the respondent’s] web site or location (see Policy, paragraph 4(b)(iv)).
The content that appeared on the “www.” web site establishes that Respondent had actual knowledge of Complainant and Complainant’s name and mark. Under these circumstances, the Panel concludes that Respondent adopted the domain name with Complainant’s mark in mind, intending to attract visitors by creating a likelihood of confusion between Complainant and its affiliate and Respondent’s delivery services. In light of this, and the adverse inferences that arise from Respondent’s failure to respond to the Complaint and registration under another name (namely, a privacy service), the Panel finds that Complainant has established that 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 Complainant.
Debra J. Stanek
Sole Panelist
Date: January 19, 2015
1 Because the Amended Complaint refers to “Respondents” in the plural form, the Panel uses that form in summarizing its contentions.
2 The PrivacyG website, acknowledges that the Rules require that certain information about domain name registrations be publicly-available and remain current and accurate. The stated intent of the service is to permit its “our customers . . . details to remain private while still complying with domain registration rules.” See “"www.privacyg” (accessed January 19, 2015). Consistent with the consensus view, the Panel reviewed the PrivacyG web site to confirm these facts. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.5 (Panel may visit site linked to disputed domain name and may undertake limited factual research into the public record).
3 None of those registrations included “carryout services.”
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