national arbitration forum

 

DECISION

 

Taco Bell Corp. v. Jeremiah Mahoney

Claim Number: FA0911001296247

 

PARTIES

 

Complainant is Taco Bell Corp. (“Complainant”), represented by Philip Davison, of YUM! Brands, Inc., Texas, USA.  Respondent is Jeremiah Mahoney (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <tacobelldiet.com>, registered with Godaddy.com, Inc.

 

PANEL

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 25, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 30, 2009.

 

On November 25, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <tacobelldiet.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 December 7, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 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@tacobelldiet.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On January 6, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

A.  Complainant makes the following assertions:

 

1.      Respondent’s <tacobelldiet.com> domain name is confusingly similar to Complainant’s TACO BELL mark.

 

2.      Respondent does not have any rights or legitimate interests in the <tacobelldiet.com> domain name.

 

3.      Respondent registered and used the <tacobelldiet.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

Complainant, Taco Bell Corp., is a leading Mexican-style fast-food restaurant chain.  Complainant owns multiple trademark registrations for the TACO BELL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 820,073 issued December 6, 1966).

 

Respondent registered the <tacobelldiet.com> domain name on June 18, 2009.  Before Complainant contacted Respondent about its infringing use of the disputed domain name, Respondent’s disputed domain name resolved to an inactive blog site.  Sometime after November 6, 2009, Respondent changed the content on the resolving website to feature a blog about “Tacino O’bell.”

 

DISCUSSION

 

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.

 

Identical and/or Confusingly Similar

 

Complainant asserts that it holds and has submitted evidence of federal trademark registrations for the TACO BELL mark with the USPTO (e.g., Reg. No. 820,073 issued December 6, 1966).  As a result, the Panel finds that Complainant’s federal trademark registrations with the USPTO sufficiently establish Complainant’s rights in the TACO BELL mark pursuant to Policy ¶ 4(a)(i).  See Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)); see also American  Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)… .”).

 

Complainant argues that Respondent’s <tacobelldiet.com> domain name is confusingly similar to Complainant’s TACO BELL mark pursuant to Policy ¶ 4(a)(i).  Respondent’s disputed domain name contains Complainant’s mark in its entirety, adds the term “diet,” and adds the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the term “diet,” when added to Complainant’s TACO BELL mark in the disputed domain name, creates a confusing similarity between Complainant’s mark and the disputed domain name because the term “diet” has an obvious relationship to Complainant’s offering of mexican-style food products.  See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark).

 

In addition, the Panel finds that the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark.  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).  Therefore, the Panel finds that Respondent’s <tacobelldiet.com> domain name is confusingly similar to Complainant’s TACO BELL mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant asserts that Respondent lacks all rights and legitimate interests in the disputed domain name.  When Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  The Panel finds that in this case, Complainant has established a prima facie case and Respondent has failed to submit a Response to these proceedings.  See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”).  Despite Respondent’s failure to provide a Response to the Complaint, the Panel elects to evaluate whether the evidence demonstrates Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).

 

 

Complainant contends that Respondent is not commonly known by, and has never been licensed to register, the disputed domain name.  The Panel finds that registrant’s WHOIS information demonstrates that Respondent is not commonly known by the disputed domain name.  Therefore, pursuant to Policy ¶ 4(c)(ii), the Panel finds Respondent lacks rights and legitimate interests in the disputed domain name.  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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Before Complainant contacted Respondent about the disputed domain name, Respondent’s disputed domain name resolved to an inactive blog.  The Panel finds that Respondent’s failure to make an active use of the disputed domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark 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 also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website.  The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy  ¶ 4(c)(iii).”).

 

After Complainant’s communication with Respondent, Respondent’s disputed domain name resolved to an unrelated commercial blog.  The Panel finds that Respondent’s use of the disputed domain name to redirect Internet users to Respondent’s commercial blog website does not constitute 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 Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the respondent’s use of the disputed domain names to divert Internet users attempting to reach the complainant’s website and in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent’s current use of the disputed domain name to resolve to an unrelated commercial blog is an attempt to intentionally cause a likelihood of confusion between the disputed domain name and Complainant’s mark.  The Panel finds that Respondent’s use of the confusingly similar disputed domain name to commercially benefit is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See 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); see also 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).

 

Until Complaint contacted Respondent about the disputed domain name, Respondent had registered the disputed domain name but had failed to make an active use of it.  The Panel finds that such non-use consitutes bad faith registration and use under Policy ¶ 4(a)(iii).  See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that failure to make an active use of a domain name permits an inference of registration and use in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

 

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <tacobelldiet.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Bruce E. Meyerson, Panelist

Dated:  January 20, 2010

 

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