Buffets, Inc. v. Shane Burke
Claim Number: FA0905001261341
Complainant is Buffets,
Inc. (“Complainant”), represented by Joel
D. Leviton, of Fish & Richardson P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <oldcountrybuffetcoupons.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 6, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 6, 2009.
On May 6, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <oldcountrybuffetcoupons.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 8, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 28, 2009 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@oldcountrybuffetcoupons.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 2, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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. Respondent’s <oldcountrybuffetcoupons.com> domain name is confusingly similar to Complainant’s OLD COUNTRY BUFFET mark.
2. Respondent does not have any rights or legitimate interests in the <oldcountrybuffetcoupons.com> domain name.
3. Respondent registered and used the <oldcountrybuffetcoupons.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Buffets, Inc., is the owners of the OLD COUNTRY
BUFFET mark, registered with the United States Patent and Trademark Office
(“USPTO”) (i.e., Reg. No. 1,343,558 issued June 18, 1985). The OLD COUNTRY BUFFET mark is used in the
restaurant services industry and is a leading restaurant chain in the
Respondent registered the <oldcountrybuffetcoupons.com> domain name on March 31, 2009. Respondent is using the disputed domain name to resolve to a website containing click-through links that further resolve to websites of Complainant and Complainant’s competitors.
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."
In view of 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 draw such inferences it 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 that Complainant must 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.
The Panel concludes that Complainant has sufficiently
established its rights in the OLD COUNTRY BUFFET mark through its registration
with the USPTO pursuant to Policy ¶ 4(a)(i).
See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007)
(“As the [complainant’s] mark is registered with the USPTO, [the] complainant
has met the requirements of Policy ¶ 4(a)(i).”); see also
Complainant alleges that Respondent’s <oldcountrybuffetcoupons.com> domain name is confusingly similar to its OLD COUNTRY BUFFET mark. The disputed domain name incorporates Complainant’s entire mark with the addition of the generic term “coupons” and the suffix “.com.” The Panel concludes that the generic term “coupons” fails to adequately distinguish Respondent’s domain name from Complainant’s mark, especially because the coupons at issue on Respondent’s website relate to the restaurant industry, which Complainant is a part of. Additionally, the affixation of the generic top-level domain “.com” is considered to be inconsequential in regards to a Policy ¶ 4(a)(i) analysis. Thus, the Panel finds Respondent’s disputed domain name to be confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)).
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights and legitimate interests in the <oldcountrybuffetcoupons.com> domain name. Once Complainant produces a sufficient prima facie case in support of its contentions, the burden then shifts to Respondent to establish rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). The Panel determines in these proceedings that Complainant has presented a prima facie case. Respondent has failed to respond to the Complaint, and such failure can be treated as an admission that Respondent lacks relevant rights or legitimate interests in the disputed domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). The Panel now chooses to review the record in order to determine whether Respondent has rights or legitimate interests in the <oldcountrybuffetcoupons.com> domain name pursuant to Policy ¶ 4(c).
The WHOIS information lists Respondent as “Shane Burke.” Additionally, Complainant has not authorized Respondent to use Complainant’s OLD COUNTRY BUFFET mark. This information, taken together with other evidence in the record, suggests that Respondent is not commonly known by the <oldcountrybuffetcoupons.com> domain name, and the Panel so finds. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
The disputed domain name resolves to a website that features click-through links and advertisements which divert Internet users to websites of Complainant and Complainant’s competitors. The Panel presumes that Respondent is generating revenue from such use, and therefore finds that Respondent has failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant has satisfied Policy ¶ 4(a)(i).
The Panel finds that Respondent’s use of a confusingly similar domain name to divert Complainant’s customers to Respondent’s <oldcountrybuffetcoupons.com> domain name, containing links to Complainant’s competitors, presumably disrupts Complainant’s business. Thus, the Panel finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Complainant asserts that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv) because Respondent is using the disputed domain name to resolve to a website containing click-through links which resolve to websites of Complainant and Complainant’s competitors. The Panel concludes that Respondent’s appropriation of the OLD COUNTRY BUFFET mark is intended to attract Internet users, and the Panel further infers that Respondent is profiting from such use. See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant). Thus, the Panel concludes that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Complainant has 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 <oldcountrybuffetcoupons.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 16, 2009
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