Papa John's International, Inc. v. Karen Madden
Claim Number: FA1005001323830
Complainant is Papa John's International, Inc. (“Complainant”), represented by John
J. Dabney, of McDermott Will & Emery LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <papajohnsdelivery.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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 10, 2010.
On May 11, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <papajohnsdelivery.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 18, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 7, 2010 by which Respondent could file a Response, to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@papajohnsdelivery.com by e-mail. Also on May 18, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 9, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <papajohnsdelivery.com> domain name is identical/confusingly similar to Complainant’s PAPA JOHN’S mark.
2. Respondent does not have any rights or legitimate interests in the <papajohnsdelivery.com> domain name.
3. Respondent registered and used the <papajohnsdelivery.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Papa John’s International, Inc., operates franchise pizza delivery and carryout restaurants under the PAPA JOHN’S mark. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its PAPA JOHN’S mark (e.g., Reg. No. 1,940,948 issued December 12, 1995).
Respondent, Karen Madden, registered the <papajohnsdelivery.com> domain name on June 2, 2008. Respondent is using the disputed domain name for a parked website that offers sponsored click-through links to various food products and services, some of which compete with Complainant.
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 finds that Complainant has established rights in its PAPA JOHN’S mark pursuant to Policy ¶ 4(a)(i) through its trademark registrations with the USPTO (e.g., Reg. No. 1,940,948 issued December 12, 1995). 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 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.”).
Complainant argues that the <papajohnsdelivery.com> domain name is confusingly
similar to Complainant’s mark because it: (1) contains Complainant’s mark in
its entirety; (2) deletes the space between the words of the mark; (3) deletes
the apostrophe from the mark; (4) adds the descriptive term “delivery,” that
describes a large portion of Complainant’s pizza enterprise; (5) adds the
generic top-level domain name “.com.”
Complainant contends that the above noted changes are not sufficient to
distinguish the disputed domain name from Complainant’s mark. The Panel finds that, under Policy ¶ 4(a)(i),
Respondent’s <papajohnsdelivery.com>
domain name is confusingly similar to Complainant’s PAPA JOHN’S mark. See Am.
Int’l Group, Inc. v. Domain Admin. Ltd., FA
1106369 (Nat. Arb. Forum Dec. 31, 2007)
(finding that “spaces are impermissible and a generic top-level domain, such as
‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is
required in domain names. Therefore, the
panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the
complainant’s [AMERICAN GENERAL] 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.”); see also Space Imaging LLC v. Brownell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combines the complainant’s mark with a generic term
that has an obvious relationship to the complainant’s business); see also Trip
Network Inc. v. Alviera, FA 914943
(Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a
domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Complainant is required to produce a prima facie case in support of these allegations. Once Complainant has produced a prima facie case the burden of proof shifts to Respondent to submit evidence and arguments that show it does have 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 Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “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.”). The Panel finds that Complainant has produced a prima facie case to support its allegations, so the burden of proof has shifted to Respondent. Due to Respondent’s failure to respond to these proceedings the Panel may accept as true, the assertions of Complainant. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). The Panel will examine the evidence on record to determine whether Respondent has any rights or legitimate interests in the <papajohnsdelivery.com> domain name under Policy ¶ 4(c).
Complainant argues that the domain name registrant listed in
the <papajohnsdelivery.com>
domain names WHOIS information is “Karen Madden,” which does not imply that
Respondent is commonly known by the disputed domain name. Further, Complainant argues that Respondent has
not been authorized or sanctioned by Complainant to register Complainant’s mark
in a corresponding domain name. The
Panel finds that Respondent is not commonly known by the disputed domain name
under Policy ¶ 4(c)(ii), as shown through the WHOIS information and other
evidence on record. See IndyMac Bank F.S.B. v. Eshback, FA
830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to
establish rights and legitimate interests in the <emitmortgage.com>
domain name as the respondent was not authorized to register domain names
featuring the complainant’s mark and failed to submit evidence of that it is
commonly known by the disputed domain name); 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).
Complainant further argues that Respondent is not using the <papajohnsdelivery.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant alleges that Respondent is using the disputed domain name as a parked website that offers various click-through links to Complainant’s competitors in the food product and services business. The Panel finds that Respondent’s use of the <papajohnsdelivery.com> domain name to operate a parked website that displays third-party links to Complainant’s competitors, presumably for financial gain, is not a use in connection with 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 Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent’s use of the <papajohnsdelivery.com> domain name
to display third-party links to Complainant’s competitors is evidence that
Respondent registered and used the disputed domain name in bad faith. Complainant alleges that such use results in
a disruption of Complainant’s Internet traffic, and thus a disruption of its
business. The Panel finds that
Respondent registered and used the disputed domain name in bad faith pursuant
to Policy ¶ 4(b)(iii), where Respondent is diverting Internet users seeking
Complainant to businesses in competition with Complainant. See
Complainant also alleges that Respondent registered and used
the disputed domain name to intentionally attract Internet users to its
directory website where Respondent receives click-through fees for the
third-party links displayed on its website.
Complainant argues that such use is further evidence of bad faith
registration and use under Policy ¶ 4(b)(iv).
The Panel agrees and finds that Respondent’s use of the disputed domain
name to operate a commercial links page, where Respondent presumably collects
click-through fees, is further evidence of Respondent’s bad faith registration
and use under Policy ¶ 4(b)(iv). See
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 <papajohnsdelivery.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: June 17, 2010
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