The Complainant is Applebee’s Restaurants LLC, United States of America (“United States”), represented by Neal, Gerber & Eisenberg, United States.
The Respondent is WhoisGuard, Inc., Panama / Gabriella Garlo, Brazil. 2. The Domain Name and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2020. On November 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 12, 2020, 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 the Complainant on November 16, 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 November 20, 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 November 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 17, 2020. On December 10, 2020, the Complainant submitted a Supplemental filing requesting the addition of a further disputed domain name to the proceeding, The Center appointed Marilena Comanescu as the sole panelist in this matter on January 7, 2021. 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. On January 11, 2021, the Panel issued the Administrative Panel Procedural Order no. 1 accepting Complaint’s submission to include the additional disputed domain name The Complainant is an United Stated based casual and family dining restaurant chain operating since 1983 under the name APPLEBEE’S. At the time of filing the Complaint, the Complainant’s chain has nearly 2,000 Applebee’s restaurants operating system-wide in 49 states and 16 international countries. The Complainant and its affiliates hold hundreds of trademark registrations for APPLEBEE’S, such as the following: - the United States Trademark Registration No. 3435409 for APPLEBEE’S (word with device) of September 24, 2008, registered on May 27, 2008 and covering services in classes 35 and 43; and - the International Trademark Registration No. 1245529 of April 2, 2015, for APPLEBEE’S (word), covering services in class 43. The Complainant’s main website is available at “www.applebees.com”. The disputed domain name The disputed domain name Prior to the present proceedings, on October 2, 2020, the Complainant sent a cease and desist letter to the Respondent. No reaction was received to the letter. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain names are confusingly similar to its trademark APPLEBEE’S, the Respondent has no rights or legitimate interests in the disputed domain names, and the Respondent registered and is using the disputed domain names in bad faith. The Complainant requests the transfer of the disputed domain names. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In view of the absence of a formal Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met: (i) the disputed domain names are 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 the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. The Panel will further analyze the potential concurrence of the above circumstances. A. Preliminary Issue: Addition of a Domain Name to the Proceeding after filing the Complaint After filing the Complaint, the Complainant submitted a Supplemental filing on December 10, 2020 requesting the addition of a further domain name to the case, As noted in the section 4.12.2 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) the request for addition of domain names to a complaint after it has been notified to the respondent and the proceedings have formally commenced can be accepted in limited cases, where for example there is clear evidence of respondent gaming/attempts to frustrate the proceedings. Paragraphs 10(a), 10(b) and 10(e) of the Rules, entitled “General Powers of the Panel” explicitly provide the following: “(a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules. This Panel decided to accept the addition of the disputed domain name The Panel finds that the Complainant holds rights in the APPLEBEE’S trademark. The disputed domain names Further, it is well established in decisions under the UDRP that the gTLD (e.g., “.com”, “.info”, “.club”, “.deals”, “.coupons”) are typically disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the theWIPO Overview 3.0. Given the above, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark APPLEBEE’S, pursuant to the Policy, paragraph 4(a)(i). C. Rights or Legitimate Interests The Complainant asserts that the Respondent does not hold any trademark rights, license, or authorization whatsoever to use the mark APPLEBEE’S, that the Respondent is not commonly known by the disputed domain names and that the Respondent has not used the disputed domain names in connection with a legitimate noncommercial or fair use or a bona fide offering of goods or services. Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of theWIPO Overview 3.0. The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case. There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain names or that the Respondent made a bona fide offering of goods or services or a legitimate noncommercial use under the disputed domain names. The Respondent has used the disputed domain names in connection with parking pages displaying PPC links, promoting services of the Complainant’s competitors. UDRP panels have constantly found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s marks or otherwise mislead Internet users. See section 2.9 of theWIPO Overview 3.0. For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, pursuant to the Policy, paragraph 4(a)(ii). D. Registered and Used in Bad Faith The Complainant holds trademark rights for APPLEBEE’S since at least 1995 with a first use in commerce since 1983. Due to its extensive use and marketing, the APPLEBEE’S trademark has become distinctive and enjoys significant reputation in its industry. The disputed domain names were registered in 2020 and incorporate the Complainant’s mark in its entirety with a minor alteration. Furthermore, the disputed domain names are registered in the gTLDs “coupons”, respectively “deals”, which are closely related to the Complainant’s services. From the above, the Panel finds that the disputed domain names were registered in bad faith, knowing the Complainant and targeting its trademark. At the time of filing the Complaint, the disputed domain names resolved to a parking page providing links to services similar to those offered by the Complainant. Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith. The Respondent was using without permission the Complainant’s distinctive trademark in order to get traffic on its web portals and to misleadingly divert Internet users to third parties websites, and thus to obtain commercial gain from the false impression created with regard to a potential affiliation or connection with the Complainant. Further, the Respondent registered the disputed domain names under a privacy service and refused to participate in the present proceedings and to the Complainant’s cease and desist letter in order to put forward any arguments in its favor. The Respondent was apparently involved in at least four other UDRP cases as a respondent, see IHOP Restaurants LLC v. WhoisGuard, Inc. / Gabriella Garlo,WIPO Case No. D2020-3001; Sodexo v. WhoisGuard Protected, WhoisGuard, Inc. / Gabriella Garlo,WIPO Case No. D2020-2706; Rheem Manufacturing Company v. WhoisGuard, Inc. / Gabriella Garlo,WIPO Case No. D2020-2115; and Skyscanner Limited v. Gabriella Garlo,WIPO Case No. DCO2020-00871 . Such circumstances, together with the circumstances detailed in section 6.A. above, clearly indicate that the Respondent registered the disputed domain names in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name and demonstrate that the Respondent is engaged in a pattern of such conduct. Such fact constitutes bad faith under paragraph 4(b)(ii) of the Policy. For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith, pursuant to the Policy, paragraph 4(a)(iii). 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 names Marilena Comanescu See the Panel’s prerogative to conduct independent searches in public records provided under section 4.5 of the WIPO Overview 3.0.
(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(e) A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.”
Sole Panelist
Date: February 23, 2021
Full & Egal Universal Law Academy