Complainant is Nu-Way Weiners, Inc. of Macon, Georgia, United States of America (“United States”), represented by Thomas Horstemeyer, LLP, United States.
Respondent is Whoisguard, Inc. of Panama City, Panama / Blake Hanan, Mealeo of Waterford, New York, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2017. On November 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 22, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 27, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on December 1, 2017.
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 Respondent of the Complaint, and the proceedings commenced on December 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2017. The Center received an email communication from Respondent on November 27, 2017. The Center received a further submission from Respondent on November 28, 2017.
The Center appointed Robert A. Badgley as the sole panelist in this matter on January 8, 2018. 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 sold hamburgers under the trademark MEGABURGER since 1972, and in 1980 received a registration with the United States Patent and Trademark Office for the mark MEGABURGER in connection with “hamburger sandwiches for consumption on or off the premises”.
The Domain Name was registered on April 1, 2016. The Domain Name, at the time this proceeding was commenced, resolved to a website offering hamburgers and other sandwiches or platters vended at a restaurant in Delmar, New York.
On May 11, 2017, Complainant’s counsel sent a cease-and-desist letter to Respondent, to which no response was received. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has satisfied all three elements required under the Policy for a transfer of the Domain Name. B. Respondent
Respondent, via an email to the Center on November 27, 2017 and a rudimentary “Response” (Respondent appeared to use the Model Response form provided by the Center, but did not complete all sections) on November 28, 2017, stated that it is a web-hosting company that received the Domain Name from the operator of the Delmar, New York restaurant (Mega Burger of Upstae [sic] New York, Inc. (“MBUNY”)) in order to host a website for MBUNY. According to Respondent, “[t]he moment we received notification of an issue we immediately took down the website, but we can’t do anything with the domain as it is locked.” Respondent states that it has no affiliation with MBUNY and that it “already tried to cancel the domain (or transfer it), but it’s currently locked”. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark MEGABURGER through registration and use. The Domain Names are identical to Complainant’s mark.
Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
Respondent claims to have no affiliation with MBUNY, and had acquired the Domain Name from MBUNY solely to host a website advertising the latter’s hamburgers and other menu items. There is nothing in the record to indicate that MBUNY has any right or legitimate interest in the Domain Name. On the contrary, it appears that MBUNY is clearly infringing on Complainant’s longstanding and registered MEGABURGER trademark through the sale of competing products. This is not a legitimate interest.
Complainant has established Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out‑of‑pocket costs directly related to the Domain Name; or
(ii) that 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) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online 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 or service on Respondent’s website or location.
The Panel concludes that the Domain Name was registered and has been used in bad faith within the meaning of Policy, paragraph 4(b)(iv), quoted above. According to Respondent, MBUNY registered the Domain Name and then transferred it to Respondent so the latter could host a website for MBUNY. The record contains no denial that MBUNY (and/or Respondent) was aware of the MEGABURGER mark, and no response to Complainant’s cease-and-desist letter was given.
The Panel finds it more likely than not that MBUNY (directly and/or through its web-hosting agent, Respondent) had Complainant’s MEGABURGER mark in mind when registering the Domain Name. The resolution of the Domain Name to a website offering hamburgers and other menu items for sale is clearly an attempt to trade off of the goodwill associated with Complainant’s longstanding registered mark, in violation of Policy, paragraph 4(b)(iv).
Complainant has established Policy, paragraph 4(a)(iii). 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 Domain Name be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Date: January 20, 2018
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