The Complainant is Great Harvest Franchising, Inc., United States of America (“United States”), represented by Spilman Thomas & Battle, PLLC, United States.
The Respondent is Elizaveta Salina, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2020. On May 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 20, 2020, 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 May 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2020. The Center appointed Lynda M. Braun as the sole panelist in this matter on June 26, 2020. 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, based in Montana, United States, and founded in the early 1970s by two college students, is now a family of independently owned and operated whole grain bread and café franchises. The Complainant owns a number of registered trademarks and service marks in use since at least 1976, including the registered trademark and service mark for GREAT HARVEST, United States Registration No. 3632019, filed on April 25, 2007 and registered on June 2, 2009 in international classes 16, 21 and 25. The Complainant owns at least seven additional United States and foreign registered trademarks and service marks for GREAT HARVEST BREAD CO., including United States Registration No. 2506449, filed on November 13, 2000, and registered on November 13, 2001 in international class 42 (collectively, the “GREAT HARVEST Marks”). The Disputed Domain Name was registered on January 20, 2020 and was formerly used by a franchisee of the Complainant in relation to a franchise in Summerlin, Nevada, United States. The franchisee relinquished the Disputed Domain Name on termination of the franchise in 2019, following which it was acquired by the Respondent and redirected to an escort site entitled “Hesperia girl escort” with hyperlinks to pornography sites showing explicit sexual content. On April 17, 2020, the Complainant’s attorney sent a cease and desist letter to the Respondent via email, requesting transfer of the Disputed Domain Name, but received no response. 5. Parties’ Contentions A. Complainant The following are the Complainant’s contentions: - the Disputed Domain Name is confusingly similar to the Complainant’s trademarks; - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and, - the Disputed Domain Name was registered and is being used in bad faith. The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding: (i) the Disputed Domain Name is identical or confusingly similar to trademarks or service marks 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 was registered and is being used in bad faith. A. Identical or Confusingly Similar This element consists of two parts: first, does the Complainant have rights in a relevant trademark or trademarks and, second, is the Disputed Domain Name identical or confusingly similar to those trademarks. The Panel concludes that the Disputed Domain Name is confusingly similar to the GREAT HARVEST Marks as set forth below. It is uncontroverted that the Complainant has established rights in the GREAT HARVEST Marks based on its years of use and its registered trademarks for the GREAT HARVEST Marks. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the GREAT HARVEST Marks. The Disputed Domain Name consists of the entirety of the GREAT HARVEST Mark with the addition of the term “Summerlin” and followed by a generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of other terms. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182. Thus, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s GREAT HARVEST Marks. Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of production to demonstrate rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant. The Respondent does not operate any business under the name “Great Harvest” or “Great Harvest Bread Co.”. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its GREAT HARVEST Marks. The Complainant does not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Respondent used the Disputed Domain Name to redirect Internet users to an escort site with hyperlinks to pornography sites showing explicit sexual content. The use of a confusingly similar domain name to connect to adult entertainment hyperlinks is not a bona fideoffering of goods or services or a legitimate noncommercial or fair use. Finally, where a respondent has registered and is using a domain name in bad faith (see the discussion below), that respondent cannot be reasonably found to have made a bona fide offering of goods or services. Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith The Panel finds that, based on the record, the Complainant has demonstrated the Respondent’s bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(b) of the Policy. First, the use of a domain name containing a complainant’s trademark in relation to a webpage hosting adult material such as the pornography in this case is evidence of bad faith registration and use under paragraph 4(b)(iii) of the Policy. Second, the Respondent has demonstrated bad faith registration and use by attracting, for commercial gain, Internet users to the Respondent’s website and creating a likelihood of confusion with the Complainant’s GREAT HARVEST Marks. The use of a domain name to attract Internet users to a registrant’s website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website for commercial gain demonstrates registration and use in bad faith. Thus, the Respondent’s use of the significant goodwill in the GREAT HARVEST Marks by registering the Disputed Domain Name and using that Disputed Domain Name to misdirect visitors to an escort website with hyperlinks to pornographic sites demonstrates the Respondent’s bad faith registration and use of the Disputed Domain Name under the Policy, paragraph 4(b)(iv). Finally, the Respondent did not respond to the cease-and-desist letter from the Complainant’s attorney and did not explain nor justify use of the Complainant’s trademark in the Disputed Domain Name. Past UDRP panels have held that failure to respond to a cease-and-desist letter may be considered a factor in finding bad faith registration and use of a disputed domain name. See Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party,WIPO Case No. D2000-0330. 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 Lynda M. Braun
Sole Panelist
Date: July 10, 2020
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