American Dairy Queen Corporation v. ALMAR Solutions, Inc c/o Jacob Horwitz
Claim Number: FA0908001276991
Complainant is American Dairy Queen Corporation (“Complainant”), represented by Collin
B. Foulds, of Gray, Plant, Mooty, Mooty & Bennett,
P.A.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <dqpos.com>, registered with Dotster.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 31, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 3, 2009.
On August 3, 2009, Dotster confirmed by e-mail to the National Arbitration Forum that the <dqpos.com> domain name is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 August 10, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 31, 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@dqpos.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 3, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <dqpos.com> domain name is confusingly similar to Complainant’s DQ mark.
2. Respondent does not have any rights or legitimate interests in the <dqpos.com> domain name.
3. Respondent registered and used the <dqpos.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Dairy Queen Corporation, franchises a chain of retail frozen custard businesses. Complainant first registered its DQ mark with the United States Patent and Trademark Office (“USPTO”) on January 23, 1973 (Reg. No. 951,528).
Respondent registered the disputed domain name on February 28, 2009. Respondent’s disputed domain name resolves to a website that offers for sale point-of-sale (“POS”) terminals to Complainant’s franchisees. Consumers may more commonly recognize POS terminals as the check-out register at many retail stores.
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.
Complainant has provided evidence of the registration of its
DQ mark with the USPTO (Reg. No. 951, 528 issued January 23, 1973). The Panel finds that Complainant’s evidence
of a governmental trademark registration for its DQ mark adequately establishes
Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat.
Arb. Forum Apr. 17, 2006) (“Complainant has
established rights in the MICROSOFT mark through registration of the mark with
the USPTO.”); see also
Respondent’s <dqpos.com> domain name contains Complainant’s DQ mark, with the additions of the “pos” abbreviation for the generic retail phrase “point-of-sale,” and the generic top-level domain (“gTLD”) “.com.” In these circumstances, this Panel finds neither the addition of a generic abbreviation, nor the addition of a gTLD adequately distinguishes the disputed domain name from Complainant’s mark. Thus, the Panel finds in its analysis under Policy ¶ 4(a)(i) that Respondent’s disputed domain name is confusingly similar to Complainant’s mark. See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)); see also Victoria’s Secret v. Plum Promotions, FA 96503 (Nat. Arb. Forum Feb. 27, 2001) (“The mere addition of the generic term “tv” does not reduce the likelihood of confusion under Policy 4(a)(i).”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts Respondent does not possess rights or legitimate interests in the disputed domain name. Complainant is required to produce a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. The burden of proof then shifts to Respondent to demonstrate it does possess rights or legitimate interests in the disputed domain name. The Panel finds Complainant has established a sufficient prima facie case. Respondent has failed to submit a Response to these proceedings, thus the Panel may infer Respondent lacks rights and legitimate interests in the disputed domain name. The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (“In the absence of direct evidence, the complainant and the panel must resort to reasonable inferences from whatever evidence is in the record. In addition . . . Paragraph 14(b) of the Rules [authorizes] a panel to draw such inferences from respondent’s failure to respond ‘as it considers appropriate.’”).
Complainant contends Respondent is not commonly known by the <dqpos.com> domain name and that Respondent is not licensed or otherwise authorized to use Complaint’s DQ mark. There is no evidence in the WHOIS information or the record which could lead the Panel to conclude Respondent is commonly known by the disputed domain name. Therefore, the Panel finds Respondent has not established rights or legitimate interest in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Complainant has provided evidence in the form of a screenshot
demonstrating that Respondent is using the disputed domain name to market its
POS terminals to Complainant’s franchisees.
The Panel finds that Respondent’s use of a disputed domain name
incorporating Complainant’s DQ mark in order to sell Respondent’s unrelated
products is not 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). See
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered the disputed domain name on February 28, 2009, long after Complainant had established rights in its mark. Complainant has provided evidence Respondent is using its DQ mark on the confusingly similar disputed domain name to market POS terminals to Complainant’s franchisees. The Panel finds Respondent is attempting to profit by using the goodwill Complainant has established in its DQ mark to sell Respondent’s POS terminal products. Respondent’s conduct demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <dqpos.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: September 17, 2009
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