The Complainant is Papa John’s International, Inc. of Louisville, Kentucky, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Domain Hostmaster, Customer ID: 17520380518345, Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia.1 2. The Domain Name and Registrar
The disputed domain name is registered with Sea Wasp, LLC (the “Registrar”).2 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2018. On February 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 7, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 9, 2018.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on March 21, 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
The Complainant was founded over 30 years ago in Jeffersonville, Indiana, United States, counting today with over 5,000 PAPA JOHN’S restaurants in over 40 countries and territories.
The Complainant is the owner of several trademark registrations amongst which are the following:
- United States Trademark Registration No. 1383735 for PAPA JOHN’S, registered on February 18, 1986 and successively renewed, in class 42;
- Australia Trademark Registration No. 617790 for PAPA JOHN’S, with priority of December 6, 1993 and registered on April 18, 1995, successively renewed, in class 30;
- Australia Trademark Registration No. 617791 for PAPA JOHN’S, with priority of December 6, 1993 and registered on April 18, 1995, successively renewed, in class 42;
- International Trademark Registration No. 001126259 for PIZZA PAPA JOHN’S, registered on March 26, 2001 and successively renewed in classes 30, 39 and 42.
The disputed domain name is and was registered on April 11, 2000 (although the Complainant asserts that the Respondent acquired it in January 2012). The disputed domain name at times does not resolve to an active webpage and at other times is directed to third parties webpages, including the Complainant’s competitors’ webpages. 5. Parties’ Contentions A. Complainant
The Complainant asserts to have been founded by “Papa” John Schnatter in the back of his father’s tavern, Mick’s Lounge, in Jeffersonville, Indiana, United States. His pizzas became widely popular and today the Complainant is the third largest take-out pizza delivery restaurant chain in the world, with stocks publicly traded in the New York Stock Exchange (PZZA), with reported global sales of USD 3.3 billion.
The Complainant has also gained significant recognition since it became, in 2010, the official pizza sponsor of the National Football League (NFL) in the United States, in addition to partnerships with organizations such as the Salvation Army, as its national charitable partner and the WHAS Crusade for Children Junior Achievement Program.
The Complainant, furthermore, was the first United States pizza company with online ordering in all of its United States delivery restaurants, since 2001.
As to the disputed domain name the Complainant asserts that it is confusingly similar with its trademark, characterizing a typical case of “typosquatting”, understood as the intentional registration of a domain name that consists of a misspelling or typing error of a distinctive or famous mark, causing an Internet user who makes such a typing error to reach an unintended website.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent is not sponsored by or affiliated with the Complainant in any way;
(iii) the Complainant has not given the Respondent permission to use the Complainant’s trademark in any manner;
(iii) the Respondent has not been commonly known by the disputed domain name;
(iv) the disputed domain name is, at times, redirected to third party websites which compete directly with the Complainant, what does not characterize a bona fide offering of goods or services under the Policy;
(v) the redirection of Internet users, at other times, to websites unrelated to the Complainant’s business also does not represent a legitimate noncommercial or fair use of the disputed domain name, especially considering that the disputed domain name has also been advertised as for sale.
Moreover, the Complainant contends that the registration of the disputed domain name was done clearly in bad faith given that the Complainant has marketed and sold its goods and services using the PAPA JOHN’S trademark since 1981, and by selecting the disputed domain name, it clearly targeted the Complainant’s well-known trademark, largely exploited and advertised, so much so that the Respondent could not simply be unaware of it. Furthermore, the disputed domain name has been used at times to redirect Internet users to websites which are in direct competition with the Complainant and, at other times been listed for sale. Given the awareness of the Complainant’s trademark, any use of the disputed domain name, whether actual or theoretical, would have to be in bad faith according to the Complainant. Lastly, the employment of a privacy service so as to conceal the Respondent’s true identity is a further indication of bad faith registration and use of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark 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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain name. A. Identical or Confusingly Similar
The Complainant has established rights in the PAPA JOHN’S trademark, duly registered in various jurisdictions.
The Panel finds that the disputed domain name is confusingly similar with the Complainant’s mark, being the suppression of the letter “a” a possible typing error, insufficient to avoid the confusing similarity, not impacting the overall impression of the disputed domain name which is dominated by the Complainant’s strong trademark.
The first element of the Policy has therefore been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate a respondent’s rights or legitimate interests in a disputed domain name. These circumstances are:
(i) before any notice of the dispute, the 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; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden is still on the Complainant’s side to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that the Respondent is not sponsored by or affiliated with the Complainant in any way, nor has it been given permission to use the Complainant’s trademark in any manner.
Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name at the time of the filing of the Complaint, corroborate with the Panel’s finding of the absence of rights or legitimate interests.
According to the print-outs attached to the Complaint the disputed domain name has, at times, been redirected to third party websites which compete directly with the Complainant. The Panel finds that such use does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name since it was used to target the Complainants website, in an attempt to create confusion with the Complainant’s trademark and domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in the use of the disputed domain name, with an intention to attempt to attract, for commercial gain, Internet users to the 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 website or location or of a product or service on the website or location.
The Respondent’s knowledge of the Complainant appears to be evident from the choice of the disputed domain name which consists of an evident mistyping of PAPA JOHN’S and has used it in connection with third parties’ websites that exploit the same kind of business as the Complainant, creating a likelihood of association of Internet users between the disputed domain name and the Complainant’s services.
Also, as already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstances which could demonstrate its good faith in the registration or use of the disputed domain name.
Lastly, three other circumstances of this case further support the Panel’s finding of bad faith:
(i) the Complainant’s trademark is well-known;
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name; and
(iii) the Respondent’s choice to retain a privacy protection service in an attempt to hide its true identity.
For the reasons stated above, the Respondent’s conduct amounts, in this Panel’s view, to bad faith registration and use of the disputed domain name. 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.
Wilson Pinheiro Jabur
Sole Panelist
Date: March 29, 2018
1 Further to an email communication from the Center to the Registrar Sea Wasp, LLC, in which the Center noted that F Pty Ltd was recently acquired by Sea Wasp, LLC, Sea Wasp, LLC confirmed that the privacy service for domain names formerly registered with F Pty Ltd was updated (“has changed”) but that the underlying registrant in this case had not.
2 See footnote 1.
Full & Egal Universal Law Academy