Sizzler USA Franchise, Inc., Sizzler International Marks, LLC and Sizzler Restaurants Group Pty Ltd. v. Sizzler\'s Chicken
Claim Number: FA1105001391228
Complainant is Sizzler USA Franchise, Inc., Sizzler International Marks, LLC and Sizzler Restaurants Group Pty Ltd. (“Complainant”), represented by Rod S. Berman of Jeffer Mangels Butler & Mitchell LLP, California, USA. Respondent is Sizzler\'s Chicken (“Respondent”), Ontario, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sizzlerschicken.com>, registered with Tucows, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 27, 2011; the National Arbitration Forum received payment on May 31, 2011.
On May 31, 2011, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <sizzlerschicken.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 2011 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@sizzlerschicken.com. Also on June 6, 2011, 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 30, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sizzlerschicken.com> domain name is confusingly similar to Complainant’s SIZZLER mark.
2. Respondent does not have any rights or legitimate interests in the <sizzlerschicken.com> domain name.
3. Respondent registered and used the <sizzlerschicken.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainants, Sizzler USA Franchise, Inc., Sizzler International Marks, LLC and Sizzler Restaurants Group Pty Ltd., allege that they jointly own rights in the SIZZLER mark and therefore have a sufficient nexus to bring this Complaint as a single entity. The Panel finds that there is sufficient evidence to establish a sufficient nexus or link between Complainants and will treat them as a single entity and refer to them as “Complainant” throughout this decision. Complainant offers restaurant services under its SIZZLER mark and owns multiple trademark registrations for the mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 882,663 issued December 16, 1969;
Reg. No. 888,458 issued March 24, 1970;
Reg. No. 1,384,530 issued February 25, 1986;
Reg. No. 1,462,078 issued October 20, 1987;
Reg. No. 1,795,103 issued September 28, 1993;
Reg. No. 2,294,706 issued November 23, 1999;
Reg. No. 3,056,206 issued January 31, 2006; and
Reg. No. 3,657,044 issued July 21, 2009.
Respondent, Sizzler\'s Chicken, registered the <sizzlerschicken.com> domain name on July 20, 2010. The disputed domain name resolves to a portal website displaying many revenue-generating links to third party websites, including many restaurants in competition 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 the SIZZLER mark for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO, despite the fact that Respondent lives or operates outside the U.S. 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 KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Respondent’s <sizzlerschicken.com> domain name is confusingly similar to Complainant’s SIZZLER mark because the disputed domain name starts with Complainant’s mark and merely adds the letter “s,” the term “chicken,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding a letter to Complainant’s mark does not distinguish the disputed domain name. See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶ 4(a)(i)); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the end of the complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation”). Adding a generic term to the mark also does not alleviate confusing similarity. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); 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). Finally, the Panel finds that the attached gTLD is of no consequence to the Policy ¶ 4(a)(i) analysis. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel therefore finds that Respondent’s <sizzlerschicken.com> domain name is confusingly similar to Complainant’s SIZZLER mark pursuant to Policy ¶ 4(a)(i).
The Panel concludes Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that 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(a)(ii). 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 and 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.”). 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.
Complainant states that it has never authorized or licensed Respondent to use the SIZZLER mark in the disputed domain name. The WHOIS information for the <sizzlerschicken.com> domain name identifies the registrant as “Sizzler\’s Chicken.” The Panel finds that without other affirmative evidence in the record, the WHOIS information alone is insufficient to support a finding that Respondent is commonly known by the disputed domain name according to Policy ¶ 4(c)(ii). See Hewlett-Packard Co. v. HP Supplies, FA 282387 (Nat. Arb. Forum July 22, 2004) (“The Panel finds, because of the prominence of the HP mark, that Respondent’s registration under the ‘HP Supplies’ name does not establish that Respondent is commonly known by the <hpsupplies.com> domain name.”); see also Skyline Displays, Inc. v. Hangzhou Skyi Display Equip. Co., FA 187706 (Nat. Arb. Forum Oct. 14, 2003) (“Despite the fact that Respondent lists itself as Hangzhou Skyi Display Equipment Co., Ltd. in its WHOIS contact information, there is no evidence presented to the Panel showing that Respondent is commonly known by the <skyidisplay.com> domain name prior to registering the domain name.”).
Complainant alleges that Respondent’s <sizzlerschicken.com> domain name resolves to a website featuring generic links, many of which use the SIZZLER mark in the link title or which direct Internet users to competing restaurants. The Panel finds that Respondent’s use of the disputed domain name is 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. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate non-commercial or fair use of the domain name); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)).
The Panel concludes Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <sizzlerschicken.com> domain name resolves to a website containing links to restaurants competing with Complainant. This activity disrupts Complainant’s business, as Internet users seeking Complainant will be diverted to websites featuring Complainant’s competitors. The Panel finds that this disruption shows bad faith registration and use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii by using the disputed domain name to operate a commercial search engine with links to the products of the complaint and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent’s <sizzlerschicken.com> domain name resolves to a portal web page featuring pay-per-click links to other websites, including those of competing restaurants, to generate revenue for Respondent. Respondent uses Complainant’s mark in the disputed domain name in order to create and exploit the confusion of Internet users in order to drive traffic to the resolving website with the aim of higher profit. The Panel finds that this constitutes bad faith registration and use according to 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 Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds 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 <sizzlerschicken.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 7, 2011
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