Cecil Whittaker's, Inc. v. Charles Brown
Claim Number: FA1002001305935
Complainant is Cecil Whittaker's, Inc. (“Complainant”), represented by Vicki
L. Little, of Devereux Murphy LLC,
REGISTRAR
The domain name at issue is <cecilwhittakerspizza.com>, registered with Godaddy.com, Inc.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On February 5, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 25, 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@cecilwhittakerspizza.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <cecilwhittakerspizza.com> domain name is confusingly similar to Complainant’s CECIL WHITTAKER’S PIZZERIA mark.
2. Respondent does not have any rights or legitimate interests in the <cecilwhittakerspizza.com> domain name.
3. Respondent registered and used the <cecilwhittakerspizza.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Cecil
Whittaker's, Inc., holds a trademark registration with the United States Patent
and Trademark Office (“USPTO”) for its CECIL WHITTAKER’S PIZZERIA mark (Reg.
No. 1,920,446 issued September 19, 1995) in connection with restaurant
services.
Respondent, Charles Brown,
registered the <cecilwhittakerspizza.com> disputed domain name on
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 asserts rights in its CECIL WHITTAKER’S PIZZERIA
mark through its holding of a trademark registration with the USPTO (Reg. No. 1,920,446 issued September 19, 1995). The Panel finds that Complainant has
established rights in the CECIL WHITTKER’S PIZZERIA mark under Policy ¶ 4(a)(i)
thorugh its registration with the USPTO.
See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum
Complainant argues that Respondent’s <cecilwhittakerspizza.com> domain name is confusingly similar to Complainant’s CECIL WHITTAKER’S PIZZERIA mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name is confusingly similar to Complainant’s mark as it incorporates the dominant features of Complainant’s mark and changes the word “pizzeria” to “pizza,” deletes the apostrophe in Complainant’s mark, deletes the spaces between the words in Complainant’s mark, and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that changing the word “pizzeria” to “pizza” creates a confusing similarity between the disputed domain name and Complainant’s mark. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (concluding that the <classicmetalroofing.com> domain name was confusingly similar to the complainant’s CLASSIC METAL ROOFS mark because changing the final term of the mark from “roofs” to “roofing” was a minor alteration and did not sufficiently distinguish the domain name from the mark).
The Panel also finds that deletion of the apostrophe creates
a confusing similarity between the disputed domain name and Complainant’s
mark. See LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA
203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an
apostrophe did not significantly distinguish the domain name from the mark); see also Daddy’s Junky Music Stores, Inc. v. Kausar, FA 140598 (Nat. Arb.
Forum Feb. 11, 2003) (“The lack of an apostrophe in the domain name is not a
distinguishing difference because punctuation is not significant in determining
the similarity of a domain name and a mark.”).
Additionally, the Panel finds the deletion of spaces in Complainant’s
mark and the addition of a gTLD create a confusing
similarity between the disputed domain name and Complainant’s mark. See Bond & Co. Jewelers, Inc. v.
Therefore, pursuant to Policy
¶ 4(a)(i), the Panel finds that Respondent’s disputed domain names are
confusingly similar to Complainant’s CECIL WHITTAKER’S PIZZERIA mark.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also 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)). Nevertheless, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name.
The WHOIS information for the disputed domain name lists the registrant as “Charles Brown.” Respondent is not associated in any way with Complainant and has never been authorized or licensed to use Complainant’s mark. Respondent is not party to any agreement with Complainant, and there is no agreement with anyone that would allow use of Complainant’s name in connection with this domain name or website. Without evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s disputed domain name resolves to a website used to advertise various pizzerias doing
business under the Cecil Whittaker’s name, each of which is in competition with
Complainant and its franchisees. The
website also includes Complainant’s mark.
The Panel presumes that Respondent is profiting through the receipt of
click-through fees. Therefore, the Panel
finds that Respondent is not using the disputed domain name in connection with
a bona fide offering of goods and
services pursuant to Policy ¶ 4(c)(i) or making a legitimate noncommercial or
fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See
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)); see also Bank
of Am. Corp. v. Northwest 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 Respondent’s
use of the disputed domain name, which includes a display of Complainant’s mark,
is an attempt by Respondent to pass itself off as Complainant and is evidence
of Respondent’s lack of rights and legitimate interests in the disputed domain
name. See American
Int’l Group, Inc. v. Busby, FA 156251
(Nat. Arb. Forum
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s use of the disputed domain
name to advertise various pizzerias in competition with Complainant and its
franchisees constitutes a disruption of Complainant’s business pursuant to
Policy ¶ 4(b)(iii).
See Caterpillar Inc. v. Vine,
FA 97097 (Nat. Arb. Forum June 22,
2001) (“Respondent registered each of the disputed domain names in order to
gain customers and to disrupt Complainant's business of authorizing dealers to
sell its CATERPILLAR equipment.”); see
also St. Lawrence Univ. v.
Nextnet Tech, FA 881234 (Nat.
Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet
users seeking information on Complainant’s educational institution to competing
websites, Respondent has engaged in bad faith registration and use pursuant to
Policy ¶ 4(b)(iii).”).
The Panel finds that
Respondent is using the disputed domain name to intentionally attract Internet
users and profit through the receipt of click-through fees. The Panel finds that this use is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
Asbury Auto. Group,
Inc. v.
Respondent’s use of the disputed domain name incorporates
Complainant’s mark and is an attempt by Respondent to pass itself off as being
affiliated with Complainant. The Panel
finds that this is further evidence of Respondent’s bad faith registration and
use of the disputed domain name pursuant to Policy ¶ 4(a)(iii). See American Int’l Group, Inc. v. Busby, FA 156251 (Nat.
Arb. Forum May 30, 2003) (finding that the disputed domain name was
registered and used in bad faith where the respondent hosted a website that
“duplicated Complainant’s mark and logo, giving every appearance of being
associated or affiliated with Complainant’s business . . . to
perpetrate a fraud upon individual shareholders who respected the goodwill
surrounding the
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cecilwhittakerspizza.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 18, 2010
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