The Complainant is Sbarro Franchise Co., LLC, United States of America, represented by Gottlieb, Rackman & Reisman, PC, United States of America (“United States” or “U.S”).
The Respondent is Domains By Proxy, LLC, Panama / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2020. On July 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 31, 2020, 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 the Complainant on August 14, 2020, 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 August 17, 2020. 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 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 15, 2020. The Center appointed Jonas Gulliksson as the sole panelist in this matter on September 24, 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 is a subsidiary of Sbarro LLC (“Sbarro”), which is an owner and operator of fast food pizzerias and Italian-style restaurants. Sbarro owns, operates licenses and oversees more than 577 company-owned and franchised restaurants around the world, including, 319 locations in the US. Sbarro has traded under the SBARRO mark since 1965. The Complainant owns 15 trademark and service mark registrations in the US, including in particular: - the trademark SBARRO with registration No. 4982244, registered on June 21, 2016; - the trademark SBARRO with registration No. 5185586, registered on April 18, 2017; and - the service mark SBARRO with registration No. 5185588, registered on April 18, 2017. Further, the Complainant is the proprietor of numerous trademark registrations worldwide for the mark SBARRO. The Domain Name was registered on April 6, 2020. The Domain Name directs to a website purporting to be affiliated with McAfee Secure Anti-Virus. The Complainant does not have any business dealings or agreements with McAfee. 5. Parties’ Contentions A. Complainant The Complainant alleges the following: The Domain Name’s inclusion of the SBARRO trademark in its entirety, which by virtue of Sbarro’s decades-long use of the mark, substantial advertising and promotion, and enormous sales success is indisputably strong, distinctive, and uniquely associated with Sbarro, inevitably results in confusing similarity. It is well established that the addition of a prefix and/or suffix word or term to a trademark in order to form a domain name does not usually negate confusing similarity. The Domain Name amounts to nothing more than a conjoining of the Complainant’s famous trademark and a prefix, consisting of the word “info”, and the dominant part of the Domain Name remains SBARRO. As such, the Domain Name is confusingly similar to the SBARRO trademark. The Complainant has not licensed, authorized, or otherwise sanctioned the Respondent’s use of the SBARRO trademark for any purpose. Moreover, Sbarro’s use of the famous SBARRO mark predates the Respondent’s registration of the Domain Name by more than five decades. In addition, there is nothing to indicate that the Respondent is now or has ever been known by or referred to by a name wholly consisting of or incorporating “Sbarro”. First, the Complainant notes that the Respondent received the correspondence from the Complainant’s counsel but made no effort to transfer the Domain Name to the Complainant. Likewise, the Domain Name resolves to a malicious website that is attempting to trick the user, perhaps into paying a fee or into downloading malware - it is not associated with a webpage that might indicate that the Respondent has any claim to or interest in the name “Sbarro”. In short, there is no evidence that the Respondent has made any bona fide commercial use of the name “Sbarro”. Accordingly, the Respondent cannot lay claim to any legitimate rights or interest in the Domain Name. The Respondent’s bad faith is demonstrated primarily by the Domain Name’s inclusion of the famous SBARRO mark, in which Sbarro has enjoyed exclusive rights in the field of restaurant and food services for more than fifty years. It appears that the SBARRO mark is being used to attract users to the site associated with the Domain Name. Likewise, the Respondent cannot reasonably dispute that it was unaware of the SBARRO trademark and its use in connection with restaurant and catering services prior to registering the Domain Name. There are more than 577 company-owned and franchised restaurants around the world. As such, it is overwhelmingly likely that the Respondent has encountered the SBARRO trademark in use in connection with Sbarros’s famous eateries. Further, the Respondent’s use of the Domain Name, which incorporates the Complainant’s name and its registered mark SBARRO, and redirection to a malicious website, either for the purpose of phishing, identity theft, or malware distribution, is per se evidence of bad faith. Further, the Complainant notes that the Respondent is a prolific cybersquatter, who has been involved in at least 80 UDRP proceedings. Additionally, “Sbarro” is an arbitrary word with no significance except as a trademark. By any reasonable analysis, therefore, it cannot be seriously doubted that the Respondent devised and registered the Domain Name with every intention of trading upon the renown of and goodwill reposed in the SBARRO mark. Finally, the Respondent’s failure to respond to the letters sent by the Complainant’s counsel on May 20, 2020, and the follow up email of June 9, 2020, further supports bad faith by the Respondent. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The burden for the Complainant under paragraph 4(a) of the Policy is to prove: (i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has clearly established that it is proprietor to several trademark and service mark registrations for SBARRO, which are registered prior to the registration of the Domain Name. The Panel finds that the Domain Name is confusingly similar to the SBARRO mark. The Domain Name incorporates the mark in its entirety, while adding the phrase “info”. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, 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. Further, it is well established that “.com”, as a generic Top-Level Domain suffix, is disregarded in the assessment of the similarity between the Domain Name and the Complainant’s mark (see section 1.11.1 of the WIPO Overview 3.0). Accordingly, the Panel finds that that the Domain Name is confusingly similar to a trademark and service mark in which the Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must first make out a prima facie case showing that the respondent lacks rights or legitimate interests in respect of a disputed domain name and then the burden, in effect, shifts to the respondent to come forward with evidence of its rights or legitimate interests (see section 2.1 of the WIPO Overview 3.0). The Panel acknowledges that the Complainant has made a prima facie case showing that the Respondent lacks rights or legitimate interests in respect of the Domain Name. In this regard, the Panel notes that the Respondent does not seem to have acquired trademark or service mark rights in relation to the Domain Name, nor is there any indication that the Complainant has authorized the Respondent’s use and registration of the Domain Name. Further, the Domain Name directs to a website purporting to be affiliated with McAfee Secure Anti-Virus. The website informs the user that their computer is infected with a virus and provides a link to update virus protection. The Panel concludes that there are indicia that the Respondent is engaged in a fraudulent scheme by making Internet users visiting the website think that their computers are infected with viruses, and therefore making payments for antivirus protection. In addition, the Respondent has hidden its identity by using a domain name service that enables it to conceal its identity. There is no evidence that the Respondent has been commonly known by the Domain Name. The burden of production on this element has shifted to the Respondent, who has not responded nor shown that it has any rights or legitimate interest in in relation to the Domain Name. Consequently, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy. The Respondent has provided no explanation for registering the Domain Name, and the Panel can think of no plausible explanation for registering the term, “infosbarro” as a domain name, given the world-wide use of the SBARRO mark and the fact that “sbarro” is a made-up word, with no meaning other than to refer to Sbarro and its business. Thus, the Panel concludes that the Domain Name was registered in bad faith. As mentioned in the section above, there are indicia that the Respondent is engaged in a fraudulent scheme by making Internet users visiting the website think that their computers are infected with viruses, and therefore making payments for antivirus protection. The Respondent seems to have registered and used the Domain Name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the trademark and service mark of the Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. Further, the Respondent has been involved in several UDRP proceedings concerning trademark-abusive domain names, in which it has been decided that the disputed domain names shall be transferred from the Respondent to the complainants in such proceedings, see Skyscanner Limited v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-0018; Carvana, LLC v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-1376; Teva Pharmaceutical Industries Limited v. Registration Private, Domains By Proxy LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-0071; Government Employees Insurance Company (GEICO) v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1012; and O2 Worldwide Limited v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-0082. The foregoing indicates a pattern of conduct by the Respondent of taking advantage of third party trademarks without authorization. In addition, the Respondent has hidden its identity by using a domain name service that enables it to conceal its identity. Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith. 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 Jonas Gulliksson
Sole Panelist
Date: October 8, 2020
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