Complainant is MOD Super Fast Pizza, LLC of Bellevue, Washington, United States of America (“United States”), represented by Stokes Lawrence, P.S., United States.
Respondent is MOD Restaurant, MOD Restaurant & Social of Fayetteville, Arkansas, United States, represented by Quattlebaum, Grooms & Tull PLLC, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2018. On April 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 25, 2018, 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. The Center sent an email communication to Complainant on April 26, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 26, 2018.
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 April 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2018. On May 17, Respondent requested the automatic four calendar day extension for Response. The Response was filed with the Center on May 19, 2018.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on June 7, 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, MOD Super Fast Pizza, LLC, operates a chain of restaurants under the name MOD Pizza in 28 states in the United States and in some locations recently opened in the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). Complainant’s restaurants primarily serve individual artisan-style pizzas along with complimentary food and beverage items such as salads, house-made lemonades and milk shakes. Complainant was founded in 2008.
Complainants own several trademark registrations in the United States that include the term MOD. These include, by way of relevance to this proceeding, (i) MOD PIZZA (Registration No. 3,577,268, which issued to registration on February 17, 2009) for “restaurant and catering services,” (ii) MOD (Registration No. 4,873,119, which was filed on January 26, 2015 and issued to registration on December 22, 2015) for, inter alia, “restaurant services,” and (iii) 2008 MOD SUPER FAST PIZZA & Design (Registration No. 4,669,862, which issued to registration on January 13, 2015) for, inter alia, “restaurant services.” Complainant also owns several trademark registrations that include MOD PIZZA outside of the United States. Lastly, Complainant owns and uses the domain name (registered in 2007) to provide information about its restaurants and related services.
Respondent, MOD Restaurant & Social, is an Arkansas Limited Liability Company based in Fayetteville, Arkansas. Respondent operates a restaurant in Bentonville, Arkansas using the name MOD | Modern Ozark Dining. Respondent’s restaurant offers new American fare and craft cocktails. Respondent has been operating its MOD restaurant since on or about July 2015.
Respondent registered the disputed domain name on October 3, 2015 and has used the disputed domain with a website that concerns and provides information about Respondent’s MOD | Modern Ozark Dining restaurant. Complainant sent a demand letter to Respondent on or about October 18, 2017 concerning Respondent’s use of MOD for its restaurant name and in the disputed domain name. It is not altogether clear whether Respondent ever responded to Complainant’s demand letter or simply rejected and ignored Complainant’s demands. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has extensively used the MOD mark since 2008 in connection with its chain of pizza restaurants and as a result of such use and extensive media coverage Complainant and its MOD and MOD formative marks are well known to consumers in relation to Complainant’s goods and services.
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s MOD mark as the disputed domain name fully incorporates the MOD mark in its entirety. Complainant further contents that the use of the generic Top-Level Domain (“gTLD”) extension “.restaurant” with the MOD mark exacerbates the confusion between the disputed domain name and Complainant’s MOD and MOD formative marks which are used in connection with restaurant services.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name, as Respondent (i) does not own any registered or common law marks containing the term “MOD”, (ii) has not made any legitimate use of the disputed domain name in connection with a bona fide offering of goods or services, (iii) is not commonly known by the disputed domain name, and (iv) has no relationship with Complainant and has not been authorized by Complainant to use the MOD mark. Complainant further argues that Respondent’s use of the disputed domain name is meant to take advantage of Complainant’s goodwill in the MOD mark and is thus not a fair use, as it creates an apparent and false association between Respondent and Complainant’s restaurants.
Lastly, Complainant argues that given the fact that Complainant’s restaurants and its MOD marks are well known and have a well-established and widespread reputation throughout the entire United States, Respondent must have had actual knowledge of Complainant’s rights in the MOD mark at the time Respondent registered the disputed domain name. Complainant asserts that Respondent’s registration and use of the disputed domain name is an act of opportunistic bad faith that is meant to take advantage of Complainant’s goodwill and reputation, particularly as it is being used with goods and services nearly identical to those of Complainant. Finally, Complainant maintains that Respondent’s bad faith is established by Respondent’s failure to conduct a quick trademark search on the terms MOD or MOD PIZZA, which would have revealed Complainant’s rights in MOD, and by Respondent’s failure to comply with the requests articulated in Complainant’s August 18, 2017 demand letter. B. Respondent
Respondent rejects Complainant’s contentions.
Respondent asserts that its MOD restaurant has been operating in Bentonville, Arkansas since July 2015 and that the disputed domain name was registered to promote Respondent’s restaurant to consumers in Arkansas. In that regard, Respondent maintains that its restaurant does not serve the same foods sold by Complainant, namely pizzas and salads, is not a competing restaurant or chain and is located in a geographic location where Complainant has no presence. Respondent further asserts that MOD is merely an acronym that is used by Complainant for “made on demand,” whereas Respondent uses MOD as an acronym for “Modern Ozark Dining.” Consequently, based on the differences between the Parties, Respondent argues that the disputed domain name and Complainant’s marks are not identical or confusingly similar.
Respondent contends that it holds common law rights in the disputed domain name and has a legitimate interest in using the disputed domain name in Arkansas in connection with its restaurant. Respondent maintains that it is commonly known by the disputed domain name based on its connection to Respondent’s restaurant, which has been operating in Bentonville, Arkansas since July 2015. Respondent also argues that because it has been using the disputed domain name and the name MOD for its restaurant for almost two years before Complainant contacted Respondent, Complainant should be barred from seeking a transfer of the disputed domain name, particularly as Respondent has invested significant time and money in building its restaurant under the MOD brand in Arkansas.
Respondent also rejects Complainant’s contention of bad faith registration and use. Respondent maintains that it registered the disputed domain name for the sole purpose of marketing its restaurant to consumers in Arkansas. Respondent asserts that because Complainant has no business in Arkansas and does not market its goods and services to consumers in Arkansas, Complainant’s claimed MOD marks are not known in the geographic region where Respondent operates. As such, Respondent argues that it would have had no reason to believe that the registration of the disputed domain name for use solely related to its restaurant in Arkansas would be in violation of Complainant’s rights. Lastly, Respondent contends that because the Parties’ respective restaurants are of different genres there is no way that Respondent has attempted to trade off of any alleged goodwill Complainant might have in its MOD marks. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Complainant has provided evidence that it owns trademark registrations for the MOD and MOD PIZZA marks in connection with its restaurant services.
With Complainant’s rights in the MOD mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the gTLD “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, for purposes of the first element the disputed domain name is confusingly similar to Complainant’s MOD mark as it consists of the MOD mark in its entirety at the head of the disputed domain name. The addition of the gTLD extension “.restaurant” does not distinguish the disputed domain name from Complainant’s MOD mark, as the dominant component of the disputed domain name is MOD. WIPO Overview 3.0, sections 1.7 and 1.8. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s MOD mark and in showing that the disputed domain name is identical or confusingly similar to that trademark. B. Rights or Legitimate Interests
Given that Complainant has not established the third element of bad registration and use, as discussed below, the Panel does not need to address the issue of whether Respondent has rights or a legitimate interest in the disputed domain name. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, a complainant must establish the conjunctive requirement that the respondent registered and used the disputed domain name in bad faith. The assessment of whether a disputed domain name was registered in bad faith is typically assessed at the time when the respondent registered or acquired the disputed domain name.
At the time that Respondent registered the disputed domain name on October 3, 2015, Complainant did not own a registration in the United States for the MOD mark standing alone for restaurant services. All of Complainant’s registrations were for, or included, MOD PIZZA, which was the name Complainant was using for its chain of pizza restaurants. Complainant’s registration for the MOD mark standing alone issued in December 2015, although it had been filed in January 2015.
While Complainant claims that it owned strong common law rights in MOD standing alone at the time Respondent registered the disputed domain name, the evidence before the Panel is lacking in that regard. To be sure, conclusory allegations of unregistered or common law rights that are unsubstantiated with specific evidence are entitled to little or no weight. See WIPO Overview 3.0 at section 1.3. Here, Complainant has provided very little evidence showing its claim of extensive use of MOD alone for restaurant services prior to October 2015, or that Complainant and its chain of MOD PIZZA restaurants were widely known throughout the United States by October 2015. Most of Complainant’s evidence consists of thumbnail images of press clippings (showing a headline and two or three lines of text) dated after October 2015, and some April 2018 website pages from Complainant’s website at “www.”. As to the limited thumbnail press clippings that pre-date October 2015, these generally refer to Complainant and its pizza restaurant chain as MOD PIZZA. Thus while the Panel accepts that Complainant had rights in MOD PIZZA in October 2015, the Panel is not convinced based on the evidence submitted that Complainant had exclusive rights in MOD alone for restaurant services or was well known throughout the United States, as Complainant claims, when Respondent registered the disputed domain name in October 2015.
Notably, apart from a lack of evidence establishing Complainant’s common law rights in MOD alone as of October 2015, there is some evidence in the record before the Panel that the selection of MOD by Complainant related to the descriptive phrase “made on demand,” particularly as Complainant’s business model is to provide individual artisan-style pizzas (e.g., personalized pizzas made to order for customers). Some of the thumbnail images provided by Complainant as well as articles provided by Respondent that predate Respondent’s registration of the disputed domain name specifically link the use of MOD by Complainant to the phrase “made on demand.” Consequently, such descriptive references further undermine whether Complainant may have had exclusive rights in MOD alone for restaurant services in October 2015, or that Complainant was well known at that time.
While Respondent appears to have used MOD as an acronym for “Modern Ozark Dining,” and such use arguably could be pretextual, there is no evidence before the Panel that suggests that Respondent adopted the name MOD for its restaurant or registered the disputed domain for the purpose of exploiting Complainant’s claimed rights in MOD or MOD PIZZA. What the evidence submitted shows is that Respondent’s MOD restaurant (i) has operated in a single location in Arkansas since July 2015, (ii) is targeted to consumers in that general geographic area, (iii) does not serve pizza, and (iv) offers a completely different genre of food and dining experience from that offered by Complainant. Moreover, the evidence of record also shows that Respondent has only used the disputed domain name for a website to promote its restaurant in Arkansas and has not included anything on the website that arguably relates to, or conjures up, Complainant or its MOD PIZZA restaurant chain. Simply put, this does not appear to be a situation where the evidence shows that a party registered a domain name to expressly or opportunistically exploit another’s established trademark.
Consequently, although it might have been improvident of Respondent to have adopted the name and mark MOD for a restaurant in Arkansas in July 2015, with or without having conducted a full trademark search, the evidence before the Panel does not support a claim of bad faith registration on the part of Respondent in October 2015. Indeed, none of the evidence submitted by Complainant shows any attempt by Respondent to capitalize in bad faith on rights that Complainant might have arguably enjoyed in MOD standing alone in October 2015, particularly as Complainant was using the name MOD PIZZA at that time for a chain of artisan-style pizza restaurants. Notably, even Complainant itself did not make a claim of bad faith registration of the disputed domain name when it sent Respondent a demand letter in August 2017. That letter made claims for trademark infringement and unfair competition based on the adoption and use of MOD by Respondent for its restaurant and in the disputed domain name. Complainant, however, made no claim or assertion that Respondent had essentially engaged in cybersquatting, thereby suggesting that Complainant may itself have not believed at that time that the evidence supported a claim of bad faith registration.
To be sure, to the extent that Complainant may have a claim against Respondent for trademark infringement or unfair competition, such a claim belongs in another forum and is beyond the scope of a UDRP proceeding which is limited to considering whether a disputed domain name has been registered and used in bad faith pursuant to a non-exhaustive list of circumstances set forth in paragraph 4(b) of the Policy. Here, it has not been established by Complainant that Respondent registered the disputed domain name in bad faith and thus Complainant’s Complaint fails. 7. Decision
For the foregoing reasons, the Complaint is denied.
Georges Nahitchevansky
Sole Panelist
Date: June 22, 2018
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