Complainant is Golden Bison Consolidated, LLC, United States of America (“United States”), represented by Partridge Partners PC, United States.
Respondent is Registration Private, Domains By Proxy, LLC, United States / Scott Sullivan, 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 December 28, 2020. On December 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 30, 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 Complainant on January 5, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On January 18, 2021, Complainant requested the suspension of the proceeding so the Parties could enter into settlement discussions. On January 18, 2021, the Center confirmed the proceeding was suspended until February 18, 2021. On February 19, 2021, Complainant requested that the proceeding be reinstituted. The Center reinstituted the proceedings on February 25, 2021. Complainant filed an amendment to the Complaint on February 25, 2021. 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 Respondent of the Complaint, and the proceedings commenced on March 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 26, 2021. The Center appointed Phillip V. Marano as the sole panelist in this matter on April 12, 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. The Panel issued a Procedural Order in this matter on May 17, 2021. Therein, the Panel explained that it would benefit from additional evidence, information, and arguments from the parties concerning consumer recognition of the phrase “Best Bison” as a designation of source with respect to the first element of the Policy. The Panel granted the parties until May 31, 2021 to submit such evidence, information, and arguments; the Panel also extended the decision date. On May 31, 2021, Complainant submitted a sworn declaration of Complainant’s President and Chief Operating Officer, with supporting exhibits. Respondent did not submit any response. 4. Factual Background Complainant offers goods and services featuring premium bison meat, prepackaged meals, and restaurant services, including mobile food trucks. Complainant owns, by assignment from High Plain Bison Franchisor, LLC, a valid and subsisting Supplemental Registration (No. 5,252,821 registered on July 25, 2017) for the BEST BISON trademark in the United States with the earliest priority dating back to December 17, 2016. Respondent registered the disputed domain name on November 21, 2020. At the time of filing of this Complaint, the disputed domain name resolved to a GoDaddy parking page with pay-per-click hyperlinks to third party goods and services including links labeled “Restaurant Gift Card”, “Chipotle Group Order”, “Chipotle Menu Order Online”, and “Beef Jerky”. 5. Parties’ Contentions A. Complainant Complainant asserts ownership of the BEST BISON trademark and has adduced evidence of a Supplemental Registration in the United States, with earliest priority dating back to December 17, 2016. Complainant asserts that the BEST BISON trademark has acquired distinctiveness due to Complainant’s overall online advertising and Internet presence, including its use of the Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: the lack of any consent, license or authorization from Complainant to allow Respondent to use the BEST BISON trademark; the lack of any evidence that Respondent is known by the BEST BISON trademark; Respondent’s lack of any trademark applications or registrations for the BEST BISON trademark; and Respondent’s use of the disputed domain name in connection with a GoDaddy parking webpage and pay-per-click hyperlinks suggesting a connection with Complainant. Complainant argues that Respondent has registered and used the disputed domain name in bad faith for numerous reasons, including: Respondent’s constructive knowledge, in so much as even the slightest investigation by Respondent would have disclosed use of the BEST BISON trademark by Complainant; Respondent’s actual knowledge based on Complainant’s ownership of several @bestbison social media handles; Respondent’s lack of any legitimate reason for registration other than deliberately profiting from confusing Internet users; and Respondent’s use of the disputed domain name in connection with a GoDaddy parking webpage and pay-per-click hyperlinks that exploit a likelihood of confusion with Complainant for commercial gain. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings To succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy: i. The disputed domain name is identical or confusingly similar to a trademark 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 has been registered and is being used in bad faith. Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 (“A respondent’s default would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. UDRP panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g., where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”); The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a)”). A. Identical or Confusingly Similar Ordinarily, ownership of a nationally or regionally registered trademark serves as prima facie evidence that a complainant has trademark rights for the purposes of standing to file their complaint. WIPO Overview 3.0 , section 1.2.1 . However, here Complainant submitted evidence that the BEST BISON trademark has been registered on the Supplemental Register in the United States, with priority dating back to December 16, 2016. While this predates registration of the disputed domain name by Respondent by nearly four years, complainants relying on Supplemental Registrations are expected to show secondary meaning in order to establish trademark rights under the Policy. WIPO Overview 3.0 , section 1.2.2 . In the United States, placement on the Supplemental Register tends to suggest that the claimed mark is, as of the time so listed, merely descriptive and lacks acquired distinctiveness or secondary meaning. To that end, it is well established that a Supplemental Registration in the United States is not sufficient by itself to establish rights to a mark for the purposes of the Policy. See, e.g., Tarheel Take-Out LLC v. Versimedia, Inc.,WIPO Case No. D2012-1668 (“It is well-settled that a Supplemental Registration in the U.S. is not sufficient in itself to establish that a Complainant has rights to a mark for the purposes of the Policy.”); Advance News Service Inc. v. Vertical Axis, Inc. / Religionnewsservice.com,WIPO Case No. D2008-1475 (holding that a Supplemental Registration for RELIGION NEWS SERVICE did not provide sufficient rights under the Policy to confer standing); PC Mall, Inc. v. Pygmy Computer Systems, Inc.,WIPO Case No. D2004-0437 (holding that a Supplemental Registration for MOBILE MALL did not provide sufficient rights under the Policy to confer standing). However, even without a trademark registration on the United States Principal Register, a mark can be protected under the Policy if it is a common law trademark based on use in commerce. Previous panels operating under the Policy have found complainants to have common law (typically unregistered) trademark rights sufficient to satisfy the degree of trademark or service mark rights required under paragraph 4(a)(i). See e.g., Jeffrey Archer v. Alberta Hotrods tda CELEBRITY 1000,WIPO Case No. D2006-0431 (June 1, 2006); Roper Industries, Inc. v. VistaPrint Technologies Ltd.,WIPO Case No. D2014-1828 (December 11, 2014). To sustain such a finding in the United States, a complainant must demonstrate that its mark is either inherently distinctive (i.e., arbitrary, fanciful, or suggestive) or a descriptive mark that has achieved a “secondary meaning” (i.e., the descriptive term has taken on a source-identifying, trademark meaning). Over the course of Policy decisions, a general consensus among panels has evolved with respect to evaluating the applicability of common law (or unregistered) rights to a given mark. Panels have considered factors such as longevity of use, amount of sales, nature and extent of advertising, consumer surveys, and media recognition in determining whether secondary meaning exists. SeeWIPO Overview 3.0 , section 1.3 ; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052. Conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, do not normally suffice to show secondary meaning. Here, Complainant has offered the following information and evidence to establish secondary meaning in its BEST BISON trademark: - Use of the BEST BISON trademark since December 17, 2016, constituting nearly five years of continuous use by Complainant; - The statement that the mark has been “[a]dvertised in connection with various media, including, but not limited to, the Internet.” - “A significant social media presence, including 1.8k followers on Facebook.” - Maintenance of “the [@]bestbison handle for social media websites, including Facebook and Twitter,” and copies of Complainant’s social media pages on Facebook, Yelp, and TripAdvisor. - Ownership of the - A copy of a “ ‘best bison’ Google search [that] returns information about Complainant, as well as showing its 4.4 star rating out of 444 Google reviews.” - The statement that, “[t]hrough extensive use and promotion, the BEST BISON mark has become well known and distinctive.” - Amount of sales “in excess of $1,000,000 … relating to restaurant services, as offered in connection with the BEST BISON mark … [b]etween May 2018 and December 2020….” - Current advertising expenditures in excess of $50,000 for the first quarter of 2021, focusing on both business-to-customer and business-to-business strategies. - Representative examples of unsolicited local media attention, including Sarah Baker Hansen, Omaha.com, Review: Smartly marketed, high-tech Best Bison leans on its leaner buffalo meat (August 1, 2018); and Delana Lefevers, OnlyInYourState.com, The One Delicious Restaurant In Nebraska That’s Dedicated Solely To Bison Dishes (February 28, 2019). - The sworn declaration of Complainant’s President and COO attesting to the foregoing, and concluding, “it is my opinion that [the] BEST BISON mark has become well known and associated by consumers with [Complainant’s] restaurant services and products as a symbol of source and quality.” The Panel has reviewed all of the evidence submitted by Complainant concerning claimed secondary meaning of the BEST BISON trademark, and in the absence of any conflicting evidence or arguments from Respondent, the Panel is satisfied that Complainant has established rights and goodwill in the BEST BISON trademark for the purposes of the Policy.1 Furthermore, the fact that Respondent is shown to have been targeting Complainant’s BEST BISON trademark, as described further below with respect to the first and third elements of the Policy, also supports Complainant’s assertion that its mark has achieved significance as a source identifier. SeeWIPO Overview , Section 1.3 . The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s BEST BISON trademark. In this Complaint, the disputed domain name is confusingly similar to Complainant’s BEST BISON trademark because, disregarding the .com generic Top-Level Domain (“gTLD”), the trademark is contained in its entirety within the disputed domain name. WIPO Overview 3.0, section 1.7. (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name … [I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar...”). gTLDs, such as .com in the disputed domain name, are generally viewed as a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0 , section 1.11 . The confusing similarity is not dispelled by combination with the term “burger”. WIPO Overview, section 1.8 (Additional terms “whether descriptive, geographic, pejorative, meaningless, or otherwise” do not prevent a finding of confusing similarity where the relevant trademark is recognizable within the disputed domain name); see also AT&T Corp. v. WorldclassMedia.com,WIPO Case No. D2000-0553 (“Each of the domain names in dispute comprises a portion identical to [the ATT trademark] in which the Complainant has rights, together with a portion comprising a geographic qualifier, which is insufficient to prevent the composite domain name from being confusingly similar to Complainant’s [ATT trademark]”) OSRAM GmbH v. Cong Ty Co Phan Dau Tu Xay Dung Va Cong Nghe Viet Nam,WIPO Case No. D2017-1583 (“[T]he addition of the letters ‘hbg’ to the trademark OSRAM does not prevent a finding of confusing similarity between the Disputed Domain Name and the said trademark.”). Indeed, Respondent’s choice of the term “burger” calls for an explanation from Respondent, or a rebuttal to Complainant’s argument that this term demonstrates Respondent has targeted Complainant’s goods and services in bad faith. In view of Complainant’s sworn declaration and evidence supporting secondary meaning in its BEST BISON trademark, incorporation of that trademark in its entirety in the disputed domain name, Respondent’s apparent targeting of Complainant, and the absence of any conflicting evidence or arguments by Respondent, the Panel concludes that Complainant has established the first element of the Policy. B. Rights or Legitimate Interests Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview , section 2.1 . It is evident that Respondent, identified by registration data for the disputed domain name as “Scott Sullivan”, is not commonly known by the disputed domain name or Complainant’s BEST BISON trademark. Furthermore, Respondent’s service of pay-per-click advertisements through the disputed domain name, to competing food and restaurant services, attempts to trade off the goodwill of Complainant and accordingly cannot constitute any bona fide offering of goods or services through the disputed domain name by Respondent. WIPO Overview 3.0 , section 2.9 (Unless “genuinely related to the dictionary meaning” of the disputed domain, “PPC links do not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of Complainant’s mark or otherwise mislead Internet users.”) Specifically, the disputed domain name has been used by Respondent to resolve to a GoDaddy parking page with pay-per-click hyperlinks to third party goods and services including links labeled “Restaurant Gift Card”, “Chipotle Group Order”, “Chipotle Menu Order Online”, and “Beef Jerky”. In view of the absence of any evidence supporting any rights or legitimate interests in the disputed domain name, and Respondent’s attempts to derive pay-per-click revenue from a GoDaddy parking page with hyperlinks to Complainant’s competitors, the Panel concludes that Complainant has established the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name: i. Circumstances indicating that Respondent has registered or Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the disputed domain name; or ii. Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or iii. Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or iv. By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. Complainant asserts that Respondent had at least constructive knowledge of Complainant when Respondent registered the disputed domain name because even the slightest investigation by Respondent would have disclosed use of the BEST BISON trademark by Complainant. Complainant further asserts that Respondent had actual knowledge of Complainant when Respondent registered the disputed domain name based on Complainant’s ownership and widespread use of numerous @bestbison social media handle. With respect to these arguments, the Panel notes a number of circumstantial factors in support. First, Respondent’s specific selection of the term “burger” in the disputed domain name, coupled with Respondent’s subsequent use of the disputed domain name in connection with pay-per-click advertisements to Complainant’s competitors, militates towards the determination that Respondent has targeted Complainant. Second, most of the marketing and unsolicited media evidence submitted by Complainant is focused on not only the ubiquitous Internet, but also in and around Nebraska, which is near Respondent in neighboring Iowa. In this Panel’s view, such circumstances corroborate the conclusion that, when the disputed domain name was registered on November 21, 2020, Respondent had knowledge of Complainant’s pre-existing rights in the BEST BISON trademark. Moreover, third-party generated material, such as the parking website and pay-per-click links in this case, serves as strong evidence of bad faith use under paragraph 4(b)(iv) of the Policy, and it cannot be disclaimed to prevent a finding of bad faith. WIPO Overview , section 3.5 (“A respondent cannot disclaim responsibility for content appearing on the website associated with its domain name” regardless of whether “such links [are] generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that respondent itself may not have directly profited….”). See SAP SE v. Domains by Proxy, LLC / Kamal Karmakar,WIPO Case No. D2016-2497 (“It is well established that where a domain name is used to generate revenue in respect of ‘click through’ traffic, and that traffic has been attracted because of the name’s association with the Complainant, such use amounts to use in bad faith … Revenue will be generated by such visitors clicking on the provided links and it does not matter whether that revenue accrues to the Respondents or the operator of the parking site”) (internal citations omitted). In view of the foregoing circumstances establishing Respondent’s targeting of Complainant, and Respondent’s use of the disputed domain name to resolve to pay-per-click advertisements to Complainant’s competitors, the Panel concludes that Complainant has established the third element of the Policy. 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, Phillip V. Marano 1 The determination that Complainant has rights within the scope of the Policy is without either advantage or prejudice to Complainant’s ultimate ability to persuade the USPTO to register the BEST BISON trademark on the Principal Register, or avoid a disclaimer of the term “bison”, as Complainant continues to garner evidence of secondary meaning.
Sole Panelist
Date: June 17, 2021
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