national arbitration forum

 

DECISION

 

Burger King Corporation v. LAMBCON LLC c/o Shane Lamb

Claim Number: FA0912001300548

 

PARTIES

Complainant is Burger King Corporation (“Complainant”), represented by Halle B. Markus, of Arent Fox LLP, Washington D.C., USA.  Respondent is LAMBCON LLC c/o Shane Lamb (“Respondent”), California.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <burgerkingdelivered.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.

 

Louis E. Condon as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 23, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 28, 2009.

 

On December 29, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <burgerkingdelivered.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 January 8, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 28, 2010 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@burgerkingdelivered.com by e-mail.

 

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

 

On February 5, 2010, 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.

 

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 <burgerkingdelivered.com> domain name is confusingly similar to Complainant’s BURGER KING mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, Burger King Corporation, holds registrations for the BURGER KING mark in association with its restaurant and carry-out food services, food products and assorted accessories.  Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BURGER KING mark (e.g., Reg. No. 869,775 issued May 20, 1969).

 

Respondent, LAMBCOM LLC, registered the <burgerkingdelivered.com> domain name on November 15, 2009.  Respondent’s disputed domain name redirects to a website offering delivery services for Burger King and a variety of other restaurants and stores.

 

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 owns multiple trademark registrations for the BURGER KING mark with the USPTO (e.g., Reg. No. 869,775 issued May 20, 1969).  The Panel finds Complainant has established rights in the BURGER KING mark for purposes of Policy    ¶ 4(a)(i) through its trademark registrations with the USPTO.  See Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that the Complainant’s federal trademark registration established its rights in the mark under Policy ¶ 4(a)(i)); see also Paisley Park Enters v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).

 

Complainant argues that Respondent’s disputed domain name is confusingly similar to Complainant’s BURGER KING mark pursuant to Policy ¶ 4(a)(i).  Respondent’s disputed domain name wholly incorporates Complainant’s mark, adds the generic, descriptive term “delivered,” and adds the generic top-level domain (“gTLD”) “.com.”  The Panel finds that a domain name that includes the identical mark of Complainant combined with a generic term fails to distinguish the Respondent’s disputed domain name and the Complainant’s mark.  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark).  The addition of a gTLD does not prevent the disputed domain name from being confusingly similar to the Complainant’s mark.  See Trip Network Inc. v. Alveira, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant in a Policy ¶ 4(a)(i) analysis and does not create a domain name distinguishable from Complainant’s mark).  Therefore, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s BURGER KING mark pursuant to Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

Complainant alleges Respondent lacks rights and legitimate interests in the disputed domain name.  Once Complainant has put forth a prima facie case, the burden shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).  The Panel finds that Complainant has adequately established a prima facie case in these proceedings.  Since Respondent has failed to respond to the allegations against it, the Panel may assume that Respondent lacks any rights or legitimate interests in the disputed domain name.  The Panel, however, elects to consider the evidence in record in light of the Policy ¶ 4(c) factors to determine if Respondent has any rights or legitimate interests in the disputed domain name.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).

 

Complainant contends that Respondent is not commonly known by the disputed domain name.  The Panel finds that the WHOIS information lists the registrant as “LAMBCOM LLC,” which demonstrates that Respondent is not commonly known by the disputed domain name.  Therefore, pursuant to Policy ¶ 4(c)(ii), the Panel finds Respondent is not commonly known by 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 respondent was commonly known by the disputed domain name).

Respondent’s disputed domain name redirects to a website offering delivery services for Complainant’s products, as well as the products of other restaurants and stores.  The Panel finds that Respondent’s use of Complainant’s mark in the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use of the disputed domain name under 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 Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).

 

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

 

Registration and Use in Bad Faith

 

Respondent’s disputed domain name redirects to a website offering delivery services for Complainant’s products, as well as the products of other restaurant and stores.  Respondent’s use of Complainant’s mark in the domain name capitalizes on the wide recognition of Complainant’s mark in order to attract Internet users to Respondent’s own website for Respondent’s commercial gain.  The Panel finds Respondent’s efforts to redirect Internet users to Respondent’s website through use of Complainant’s mark in the domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting);  see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”) 

 

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

 

DECISION

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 <burgerkingdelivered.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Louis E. Condon, Panelist

Dated:  February 17, 2010

 

 

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