The Complainant is Sbarro Franchise Co., LLC of Columbus, Ohio, United States of America (“USA” or “United States”), represented by Gottlieb, Rackman & Reisman, PC, USA.
The Respondent named in the Complaint are Asim Chaudhry and/or Sbarro Car Service Co. of Punjab, Pakistan, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2018. On July 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 5, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name. The Center sent an email communication to the Complainant on August 7, 2018, 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 amendment to the Complaint on the same day.
The Center verified that the Complaint together with the amendment to 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 August 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2018. The Response was filed with the Center on August 28, 2018. On September 5, 2018, the Complainant submitted a supplemental filing in reply to the Response.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on September 10, 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 is the successor in title to a restaurant business first established in 1959 in New York in the USA. Since then, the Complainant’s business has grown to include some 623 restaurants around the world including at 329 locations in the USA, 25 locations in India and 24 locations in Pakistan. Some restaurants are owned by the Complainant; others are operated under franchise agreements.
In 2017, the Complainant’s chain of restaurants generated USD 340 million in sales around the world. According to the Complaint, the Complainant spends millions of dollars advertising and promoting its brand.
According to the declaration of the Complainant’s Chief Legal Officer, the Complainant has thousands of followers on Twitter and Instagram and has received over 300,000 “likes” on Facebook.
The Complainant owns 13 registered trademarks in the USA, the earliest of which is United States Registered Trademark No. 0,985,647 for SBARRO in respect of restaurant and catering services in International Class 42. This trademark was registered on June 4, 1974. United States Registered Trademark No. 1,991,581 was registered on August 6, 1996, for pasta, tomato sauce, clam sauce and vinegar in International Class 30. Registration of SBARRO for pizza in International Class 30 was achieved on June 21, 2016, with United States trademark number 4,982,244. The other trademarks registered in the USA are for marks featuring the word SBARRO with other figurative elements.
The Complainant also owns two registered trademarks in Pakistan for SBARRO:
(a) Registered Trademark No. 139863 in respect of coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionary, ices; honey, treacle; yeat, bakin-powder, salt, mustard, vinegar, sauces (except salad dressings); spices, ice; pasta, tomato sauce, clam sauce in International Class 30. This trademark has been registered from February 17, 1997; and
(b) Registered Trademark No. 193,919 in respect of restaurant services in International Class 42. This trademark has been registered from April 19, 2004.
The disputed domain name was first registered on May 8, 2018. It is not in dispute that it was initially registered in the name of Asim Chaudhry (the First Respondent).
The Complainant’s lawyers sent a cease and desist letter to the First Respondent on May 14, 2018. The First Respondent replied offering the disputed domain name for sale.
According to an email received by the Center from Mr Chaudhry and the Response provided by one Hassan Aamir on behalf the second-named respondent, Sbarro Car Service Co. (the “Second Respondent”), Mr Chaudhry sold the disputed domain name to Mr Aamir on May 23, 2018.
It is not in dispute between the parties that, to date, the disputed domain name has remained inactive. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. The Respondent
In the Amended Complaint, the Complainant has named as the respondent both the First Respondent and the Second Respondent.
Paragraph 1 of the Rules defines the respondent as “the holder of a domain name registration against which a complaint is initiated.” According to the Registrar, the disputed domain name is registered to: “Sbarro Car Service Co.”
It is not clear from the documents in the record in this proceeding whether Sbarro Car Service Co. is a separate legal entity. The Panel notes that the Response was submitted by Mr Aamir using the email address which the Registrar has confirmed is the email address for the Respondent in the WhoIs record for the disputed domain name. Mr Aamir has also described himself as the Respondent in the Response. The address for the Respondent recorded in the WhoIs details confirmed by the Registrar is different to the address of the First Respondent, Mr Chaudhry, when he registered the disputed domain name and given in his email to the Center disclaiming any involvement in the disputed domain name following its transfer to the Second Respondent.
In these circumstances, it appears that Mr Aamir is either Sbarro Car Service Co. himself or, at least, is authorised to represent it. Unless it becomes necessary to distinguish between them, the Panel will refer to them as the Second Respondent. Given the information provided by the Registrar, it does not appear that Mr Chaudhry can be regarded formally as the, or a, Respondent as, at the time the Complaint was filed, he was no longer (at least formally) the holder of the disputed domain name. B. Supplemental Filing
As the Complainant notes, apart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case.
The Response raises what appears to have been a wholly unexpected line of defence given the Complainant had been in communication with Mr Chaudhry about the disputed domain name on a wholly different basis to that which the Second Respondent has in fact advanced. Neither the Second Respondent nor Mr Chaudhry have objected to the proposed supplemental filing. The Second Respondent has not pointed to any prejudice it suffers from admission. In the present case, therefore, the Panel considers it appropriate to admit the Complainant’s supplemental filing. C. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks for SBARRO referred to in section 4 above.
Disregarding the generic Top Level Domain (“gTLD”) “.app”, the disputed domain name is identical to the Complainant’s trademark.
To the extent that the Second Respondent contends that this requirement under the Policy is not satisfied because it says it operates, or is planning to operate, in a wholly different field of activity to the Complainant – car washing services compared to restaurant services and associated foodstuffs, its argument is misplaced. This inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the gTLD component as a functional aspect of the domain name system: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. D. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Second Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] 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, even if [the Respondent] has acquired no 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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Second Respondent or Mr Chaudhry to use the disputed domain name. Nor are the Second Respondent or Mr Chaudhry affiliated with it. The disputed domain name is not derived from the personal name of either Mr Aamir or Mr Chaudhry. (The derivation of the disputed domain name from the Second Respondent’s business or company name is considered further below.)
When the Complainant’s lawyers contacted the Registrar to protest the registration of the disputed domain name, Mr Chaudhry responded.
He stated:
“When we booked the domain name, we believed that domains can be registered on first come first served basis, especially in this case your client did not book it for over one month from the date of issuance of this TLD as well as they did not show any interest in Early Access Period (EAP)… it means they did not need it. So we invested in it as we know its worth and we can sell it to companies who may be interested to have it.
“You might have not noticed till now that this domain name was on Market Place on D at a sale price of USD 100,000 and anyone could re-register it who would have interest in obtaining its rights. The below screen shot will if for your ref and review.”
Mr Chaudhry’s reply went on to state that he had already been contacted by one client who was prepared to pay the USD 100,000 price.
Bearing in mind that the disputed domain name was first registered and acquired by the Second Respondent many years after the Complainant (through its predecessors) adopted the trade mark and the matters set out above, the Panel finds that the Complainant has established the required prima facie case.
As will be apparent from section 4 above, the Second Respondent seeks to rebut that prima facie case by reference to both its location in Pakistan and the nature of the services it proposes to offer. The Second Respondent denies knowledge of the Complainant. The Second Respondent contends that it has paid a very substantial sum, USD 100,000, for the disputed domain name in good faith for use in connection with a bona fide business which will not conflict with the Complainant’s restaurant business at all.
First, the Panel notes that the Second Respondent is called, or calls itself, Sbarro Car Service Co. It is not clear from the Response when this name was adopted or even if it is formally registered with the relevant government or regulatory body as a business name or corporate entity. Even if the name has been registered with the appropriate regulator, so far as the record in this proceeding goes, it does not appear that the name had already been adopted or was in use before the transfer from Mr Chaudhry.
Secondly, the Second Respondent claims that the name of the proposed business was chosen because “Sbarro” is said to be a conjugation of the Italian verb “sbarrare” meaning to dam or contain. According to the Second Respondent, this is an entirely apt name for a car cleaning business which seeks to use water resources efficiently and economically. The Complainant disputes that “Sbarro” has any meaning in Italian or at all. In any event, the Second Respondent’s explanation does not strike the Panel as a particularly apt description of the proposed service particularly as, as the Complainant points out, the official languages of Pakistan where the Second Respondent proposes to operate, are Urdu and English.
Thirdly, the Second Respondent has provided what it says is its proposed website for use with the disputed domain name. At one point, the Response says this website was designed in the fourth week of May 2018. Earlier, the Response states it was designed in the fourth week of July 2018 (around the time the Complaint was filed). There is a receipt included in the Response indicating that the Second Respondent paid the Registrar USD 10 for the Registrar’s website builder service.
According to the Second Respondent, the website has not become operational because the Registrar does not provide a certification process enabling use of the “https” protocol. The Second Respondent says it has been unable to transfer the domain name according to the Registrar’s policies for an initial period of 60 days from registration. This does not explain why a different website hosting service could not be used.
The website does not include details about the Second Respondent’s address or contacts. It does include, however, a fairly rudimentary “contact” box. There is also no information about pricing. The Second Respondent has not provided details about the preparation of the website such as how many and when drafts were prepared.
Fourthly, apart from the rudimentary website pages (apparently prepared using the Registrar’s USD 10 service) the Second Respondent has not provided any independent documentary corroboration of its planned business. As the Complainant points out, there is no evidence that the Second Respondent has premises for a car wash business. The proposed website does state that the Second Respondent’s proposed services will be provided at the customer’s premises. Nonetheless, one would expect the Second Respondent would need some sort of base or physical location and contacts. Further, the Second Respondent has not provided any evidence that it is actually operating a car wash business or has any history in such a business. There is no evidence that the Second Respondent has acquired any premises from which to conduct such a business. Nor is there any evidence of developed business plans or other business preparations in connection with the launch of such a business.
As the Complainant also points out, there is no evidence that the sum of USD 100,000 was ever paid by the Second Respondent to Mr Chaudhry. Moreover, the amount is a very large amount to be paid for what is claimed to be a proposed car wash business, even an ecological and environmentally friendly business. One might speculate, if indeed the Second Respondent did pay the amount claimed for the disputed domain name, the value for such a sum lies in the significance of the name SBARRO as the Complainant’s trademark. Whether the sum was in fact paid or indeed there is such a business or proposed business are all matters of assertion in the realm of speculation.
In these circumstances, the Panel considers that the explanation and materials submitted by the Second Respondent to rebut the prima facie case that it has no rights or legitimate interests in the disputed domain name fall well short of what is required to support the Second Respondent’s claim under paragraph 4(c)(i) or (ii). See e.g. WIPO Overview 3.0, sections 2.2 and 2.3.
The Second Respondent points out that Internet searches reveal some other businesses which are called SBARRO. Curiously, the businesses pointed to are websites in French in France and Geneva, Switzerland identified by a search for “Ecole sbarro automobile”. This does not assist the Second Respondent as, apart from anything else, the Second Respondent does not claim any derivation from these businesses.
Accordingly, the Panel finds that the Complainant has established that the the Second Respondent does not have rights or a legitimate interest in the disputed domain name under the Policy. E. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd.,WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The rejection of the Second Respondent’s claim to rights or legitimate interests in the disputed domain name leads to a strong inference that the disputed domain name was registered and is being used in bad faith.
The Panel finds therefore that the Complainant has also established the third requirement under the Policy. 6. 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.
Warwick A. Rothnie
Sole Panelist
Date: September 24, 2018 Addendum to Administrative Panel Decision
The Panel’s decision in this administrative proceeding was finalised on September 24, 2018 in accordance with the Rules.
Subsequent to notification of the decision, it has come to the Panel’s attention that the Respondent submitted a purported supplemental filing to the Center on Friday September 22, 2018. The Respondent’s supplemental filing seeks to rebut matters raised in the Complainant’s supplemental filing.
The excessive delay in submitting the Respondent’s supplemental filing would ordinarily be a basis for excluding it from consideration. Ordinarily, moreover, parties are expected to state their case with relevant supporting materials in full in, respectively, the Complaint and the Response.
Bearing in mind that that admission of unsolicited supplemental filings is within the Panel’s discretion, the Panel admitted the Complainant’s supplemental filing as it essentially sought to address a surprising and unanticipated “defence” raised by the Respondent. A further supplemental filing in rebuttal by a Respondent might be justifiable where it addresses factual errors or some other new material advanced in the Complainant’s supplemental filing. In the interests of fairness and balance, therefore, the Panel has considered the Respondent’s proposed supplemental filing.
Apart from repeating a number of points made in the Response, the Respondent’s supplemental filing mainly seeks first to expand on the circumstances of the purchase of the disputed domain name. According to the Respondent, it involved negotiations over two days resulting in the Respondent and his escorts visiting the former registrant in person and handing over the purchase price in cash. Even at this extremely late stage, the Respondent does not provide any objective corroboration of these matters although the Respondent does say that a copy of a written receipt can be provided if required.
In addition, the Respondent states that he already operates a number of successful sole proprietor business including “Casa De Cars”, a car import business. The Respondent also points to a number of businesses in Pakistan operating under Italian names, including the Respondent’s own “Casa De Cars” which is apparently a car import business, to support his adoption of an Italian word for his proposed business. The Respondent also repeats his claim that the Complainant has no recognition in Pakistan.
Having considered the matters raised in the Respondent’s supplemental filing carefully in light of the requirements under the Policy, the Panel reaffirms its decision.
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