Burger King Corporation v. Totto Cutugno
Claim Number: FA0804001177474
Complainant is Burger King Corporation (“Complainant”), represented by Matthew
R. Mills of Arent Fox
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <burgerkingmenu.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically April 10, 2008; the National Arbitration Forum received a hard copy of the Complaint April 11, 2008.
On April 14, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <burgerkingmenu.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April 23, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 13, 2008, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@burgerkingmenu.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 20, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <burgerkingmenu.com>, is confusingly similar to Complainant’s BURGER KING mark.
2. Respondent has no rights or legitimate interests in the <burgerkingmenu.com> domain name.
3. Respondent registered and used the <burgerkingmenu.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Burger King Corp., is the second largest fast food hamburger chain in the world, serving 11 million people worldwide each day. Complainant uses the BURGER KING mark to market its restaurant services, and food and beverage items, including hamburgers and soft drinks. Complainant registered the BURGER KING mark with the United States Patent and Trademark Office (“USPTO”) on May 20, 1969 (Reg. No. 869,775) and with the Chinese Trademark Authority on August 20, 1986 (Reg. No. 260,169).
Respondent registered the <burgerkingmenu.com> domain name September 13, 2006, and has been using the disputed domain name to redirect Internet users to a pay-per-click web page that displays links related to Complainant’s business.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant registered the BURGER KING mark with the USPTO and the Chinese Trademark Authority, and thereby established rights in the mark under Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
Complainant contends that the <burgerkingmenu.com> domain name is confusingly similar to its BURGER KING mark. Complainant asserts that the disputed domain name wholly incorporates Complainant’s mark, and differs only by the addition of the generic top-level domain (“gTLD”) “.com,” the generic term “menu,” and the removal of the space between the terms of the mark. Previous panels have held that the addition of a gTLD is irrelevant for distinguishing a disputed domain name from a mark in the confusing similarity analysis under Policy ¶ 4(a)(i) because all registered domain names are required to have a top-level domain. Moreover, in Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000), the panel found confusing similarity where the respondent’s domain name combined the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business. Here, Complainant contends that the generic term “menu” has an obvious relationship to its fast-food restaurant business. The Panel concludes that the addition of the generic term “menu” does not distinguish the disputed domain name from the mark. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s BURGER KING mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant has the initial burden of demonstrating that Respondent has no rights to or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case, the burden shifts to Respondent. Here, Complainant asserted that Respondent lacks all rights and legitimate interests in the <burgerkingmenu.com> domain name, and therefore the Panel finds that Complainant made a prima facie case pursuant to Policy ¶ 4(a)(i). The burden shifts to Respondent to demonstrate its rights and legitimate interests in the disputed domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Because Respondent did not file a Response to the
Complainant, the Panel may presume that Respondent has no rights and legitimate
interests in the disputed domain name. In American Express Co. v. Fang
Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002), the panel concluded that “based on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.” This Panel, however, considers all evidence
in the record to determine if Respondent has any rights or legitimate interests
under Policy ¶ 4(c). See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights
or legitimate interests where the respondent fails to respond).
Complainant contends that it has never authorized or licensed Respondent to use the BURGER KING mark. Further, nothing in the WHOIS record indicates that Respondent is commonly known by Complainant’s mark. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Respondent is using the disputed domain name to redirect Internet
users to its commercial pay-per-click web page where links to topics related to
Complainant’s business are listed. Respondent
is likely receiving click-through fees. Previous
panels have concluded that such use does not demonstrate Respondent’s rights or
legitimate interests in the disputed domain name. The Panel finds that Respondent’s use of the <burgerkingmenu.com> domain name is
not a bona fide offering of goods or
services under Policy ¶ 4(c)(i), and that it is not a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v.
Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding
that the respondent’s use of the disputed domain name
to redirect Internet users to websites unrelated to the complainant’s mark,
websites where the respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or
services as contemplated by the Policy);
see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum
Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i)
and it is not a legitimate noncommercial or fair use under Policy ¶
4(c)(iii).”).
The Panel finds that Complainant
satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered the disputed
domain name with knowledge of its rights in the BURGER KING mark,
and that Respondent seeks to commercially benefit from the goodwill associated
with the mark by receiving click-through fees from the website that resolves
from the disputed domain name.
Respondent’s use of the disputed domain name is capable of creating
confusion with Complainant’s BURGER KING mark as to
the source or sponsorship of the website that resolves from the disputed domain
name. The Panel finds that Respondent
registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat.
Arb. Forum Nov. 21, 2002) (finding that the respondent registered and
used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the
respondent was using the confusingly similar domain name to attract Internet
users to its commercial website); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb.
Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used
a domain name confusingly similar to the complainant’s mark to attract users to
a website sponsored by the respondent).
Respondent’s use of the
disputed domain name is also capable of disrupting Complainant’s business
pursuant to Policy ¶ 4(b)(iii) because the website
that resolves from the disputed domain name lists topics related to
Complainant’s business. See Disney
Enters., Inc. v. Noel, FA 198805 (Nat.
Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly
similar to Complainant's mark to divert Internet users to a competitor's
website. It is a reasonable inference that Respondent's purpose of registration
and use was to either disrupt or create confusion for Complainant's business in
bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding the respondent acted in bad faith by attracting
Internet users to a website that competes with the complainant’s business).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <burgerkingmenu.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 3, 2008.
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