The Complainant is Sbarro Franchise Co., LLC of Columbus, Ohio, United States of America ("United States"), represented by Gottlieb, Rackman & Reisman, PC, United States.
The Respondent is Domain Admin Domain Admin, whoisprotection biz / Burc Caglayan of Istanbul, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with FBS Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on September 9, 2016. On September 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 2016, 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 and noting that the language of the Registration Agreement is Turkish. The Center sent an email communication to the Complainant on September 14, 2016 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 amended Complaint on September 14, 2016.
Pursuant to the Complaint submitted in English and the Registrar's confirmation that Turkish is the language of the registration agreement, on September 14, 2016, the Center requested that the Parties submit their comments on the language of the proceeding. On September 14, 2016, the Complainant submitted its request for English to be the language of the proceeding, by reference to the Complaint. The Respondent did not submit any comment on the language of the proceeding.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 16, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 17, 2016.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on October 20, 2016. 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, Sbarro Franchise Co., LLC which is a subsidiary of Sbarro LLC, is a widely known owner and operator of fast food pizzerias and Italian-style restaurants.
The Complainant is the owner of the registered trademark SBARRO in several classes in many countries, including in Turkey. According to the available record, the Complainant's trademark SBARRO was first registered on June 4, 1974 in the United States with the registration number 958,647.
The disputed domain name was registered on April 6, 2016.
The Complainant has registered numerous domain names under generic Top-Level Domains ("gTLD") containing the term "Sbarro". The registration dates of these domain names show that these were held long before the registration of the disputed domain name which was created on April 6, 2016 according to WhoIs records.
The Panel visited the disputed domain name on October 28, 2016, and observed that the disputed domain name was inactive, thus there was no content provided. The disputed domain name directed to a parked page with a Turkish text when the Panel visited it. The translation of the Turkish text was "The web site is under construction, please visit us again soon". 5. Parties' Contentions A. Complainant
In accordance with the Policy, the Complainant requests that the disputed domain name be transferred to the Complainant. The Complainant submits the grounds for these proceedings listed in paragraph 4(a) of the Policy. (i) Identical or Confusingly Similar
The Complainant asserts that the disputed domain name comprises the term "Sbarro" which is identical to its registered trademark SBARRO. The Complainant asserts that the addition of the generic Turkish words "reklam", which means "advertisement" in English and the addition of the gTLD ".com", do not have an impact on the overall impression of the dominant part of the disputed domain name and do not exclude the confusing similarity.
The Complainant also asserts that the descriptive term "reklam" in Turkish which means "advertisement" in English relates to Sbarro's business namely, promotion of the SBARRO trademark in the marketplace and underscores the disputed domain name confusing similarity. (ii) Rights or Legitimate Interests
The Complainant alleges that the Respondent is not and has never been one of the Complainant's representatives, or one of its licensees, nor is he otherwise authorized to use the Complainant's trademark. The Respondent does not have any rights or legitimate interests in the disputed domain name.
Therefore, the Complainant argues that the Respondent is in no way authorized to use the Complainant's SBARRO trademark in the disputed domain name and is not using the disputed domain name in connection with a bona fide offering of goods or services.
The Complainant further asserts that there is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services as the disputed domain name resolves to a parked page and that the Respondent is not or has never been commonly known by the disputed domain name.
In this regard, the Complainant submits that the Respondent could not establish legitimate interest in the trademark incorporated in the disputed domain name "where (i) the Respondent is not a licensee of the Complainant; (ii) the Complainant's rights in its related trademarks precede the Respondent's registration of the disputed domain name; and (iii) the Respondent is not commonly known by the disputed domain name in question" (citing Charles Jourdan Holding, AG v. AAIM,WIPO Case No. D2000-0403). (iii) Registration and Use in Bad Faith
The Complainant indicates that the disputed domain name has been registered in bad faith. The Complainant contends that the trademark SBARRO is a well-known and reputed mark throughout the world and Turkey. In addition to this, the Complainant states that "Sbarro" is an arbitrary word with no significance except as a trademark. The Complainant contends that Respondent devised and registered the disputed domain name with every intention of trading upon the renown of and goodwill reposed in the SBARRO trademark.
Further, the Complainant emphasizes the disputed domain name has been passively held. And the current status of "being an passive/inactive domain name" does not remove the infringement as determined by many previous UDRP decisions stating that passive holding of a well-known trademark may also constitute bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
The disputed domain name's Registration Agreement is in Turkish and pursuant to the Rules, paragraph 11, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. However, the Complainant submitted arguments along with the Complaint as to why the proceeding should be held in English.
The Panel finds that, being a US based entity, the Complainant is not in a position to conduct this proceeding in Turkish without a great deal of additional expense and delay in translating the Complaint and the Annexes as the Complainant carries on its business in English, and has no executive offices in Turkey. If the Complainant was to submit all documents in Turkish, the proceeding would be unduly delayed and the Complainant would have substantial translation expenses.
Despite the Center's notification of the Complaint both in Turkish and English, the Panel notes that no objection was made by the Respondent to the Complaint being in English. As well as the Panel understands that the Respondent did not object/reply to the Complainant's cease-and-desist letter. The Respondent had ample opportunity to raise objections or make known his preference, but he did not. See: SWX Swiss Exchange v. SWX Financial LTD,WIPO Case No. D2008‑0400.
Therefore, in consideration of the above circumstances and in accordance with paragraph 11 of the Rules, the Panel hereby decides that English shall be the language of the administrative proceeding in the present case. 6.2. Substantive Issues
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) The disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant has the burden of proving that all these requirements are fulfilled. A. Identical or Confusingly Similar
The Policy requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of the trademark SBARRO as evidenced in the annexes to the Complaint and Turkish Patent Institute records. Further, while not dispositive under the first element, the Panel notes that the Complainant has registered a number of domain names incorporating its trademark SBARRO.
In relation to the disputed domain name, it is clear that the disputed domain name fully incorporates the Complainant's trademark and the only difference between the disputed domain name and the Complainant's trademark is the addition of the descriptive term "reklam" and the ".com" extension. The Panel finds the addition of a descriptive word does not provide sufficient distinctiveness and the addition of the ".com" extension is irrelevant when determining whether the disputed domain name is confusingly similar to the Complainant's trademark. PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services,WIPO Case No. D2001-0174; Ahmanson Land Company v. Vince Curtis,WIPO Case No. D2000-0859.
Moreover, the Panel is of the opinion that Internet users will fall into false impression that the disputed domain name is an official domain name of the Complainant.
The Panel recognizes the Complainant's rights and concludes that the disputed domain name is confusingly similar to the Complainant's SBARRO trademark. Therefore, the Panel concludes that the requirements of paragraph 4(a)(i) of the Policy is established. B. Rights or Legitimate Interests
In accordance with paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is established in numerous UDRP decisions that it is difficult for a complainant to prove a negative and for that reason the complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests in a domain name, Belupo d.d. v. WACHEM d.o.o ,WIPO Case No. D2004-0110. Once the complainant makes a prima facie case, the burden of demonstrating rights or legitimate interests in the disputed domain name shifts to the respondent. The Policy at paragraph 4(c) provides various ways in which the respondent may demonstrate rights or legitimate interests in a domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a) (ii) of the Policy.
In the light of the evidence submitted by the Complainant, and the Panel's researches, e.g., trademark registration certificates, domain name registrations, etc., it is clear to the Panel that the Complainant has earlier and lawful rights in the SBARRO trademarks. Therefore, the Panel finds on the current record that the Complainant has proved rights in the SBARRO trademarks and also established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name for the purposes of the Policy. The Complainant has not granted the Respondent any right or license to use the SBARRO trademarks. Therefore, in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by the Respondent. Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055.
In light of the fact that the word "Sbarro" appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel finds that there is no evidence to suggest that the Respondent has any rights in any trademarks or service marks which are identical, similar or related to the disputed domain name. The Panel accepts that the Respondent is not commonly known by the disputed domain name and the Respondent has acquired no trademark or service mark rights. C. Registered and Used in Bad Faith
Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(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 trademark 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 trademark or service mark from reflecting the mark in a corresponding domain name, provided that the 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, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online 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 respondent's website or location.
By consideration of the foregoing, the Panel is of the opinion that due to the earlier rights of the Complainant in the trademark SBARRO, as well as its extensive and intensive use, the Respondent, who appears to be located in Turkey where the Complainant is well known, was aware of the Complainant and its SBARRO trademark at the time of the registration of the disputed domain name, e.g., Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087. Referring to Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226, the Panel believes that the awareness of the Complainant's trademark at the time of the registration of the disputed domain name has to be considered as an inference of bad faith registration.
Moreover, the Panel notes that:
(i) the Respondent did not submit any response and is in default;
(ii) the Complainant's trademark has a strong reputation and is well known worldwide, including in Turkey; and
(iii) the disputed domain name leads to an inactive website.
In light of the submitted evidence, the Panel is convinced that the Respondent is passively holding the disputed domain name and is engaging in no activity. "Passive holding" has been accepted as a sufficient bad faith indicator in a number of previous UDRP cases. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Therefore, in light of the above-mentioned circumstances, in the present case, the Panel finds that the disputed domain name has been registered and is being used in bad faith and that the Complainant has established the third element under paragraph 4(a)(iii) 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.
Gökhan Gökçe
Sole Panelist
Date: November 3, 2016
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