Sizzler USA Franchise, Inc., Sizzler International Marks, LLC and Sizzler Restaurants Group Pty Ltd. v. iPulchra
Claim Number: FA1110001410523
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 iPulchra (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sizzlerlounge.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 6, 2011; the National Arbitration Forum received payment October 7, 2011.
On October 6, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <sizzlerlounge.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 12, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 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@sizzlerlounge.com. Also on October 12, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 November 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <sizzlerlounge.com>, is confusingly similar to Complainant’s SIZZLER mark.
2. Respondent has no rights to or legitimate interests in the <sizzlerlounge.com> domain name.
3. Respondent registered and used the <sizzlerlounge.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., hereafter referred to as “Complainant”, are sufficiently related to one another as Sizzler USA Franchise, Inc. is the United States franchise arm of the Sizzler Restaurants Group Pty Ltd., its parent corporation. Also, Sizzler International Marks, LLC is the intellectual property holding company for Sizzler Restaurants Group Pty Ltd., the parent corporation for the other named entities. Complainant is a global provider of restaurant services.
Complainant owns multiple governmental trademark registrations with both the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 882,633 registered December 16, 1969) and the Office for the Harmonization of Internal Market (“OHIM”) (e.g., Reg. No. 1,335,330 registered March 2, 2005) for the SIZZLER mark. Complainant uses the mark to brand its restaurants and retail food outlets.
Respondent, iPulchra, registered the disputed domain name August 12, 2011. The disputed domain name resolves to a website offering links to third-party websites. Many of the third-party links resolve to other restaurant websites that 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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 contends that it has established its rights in the SIZZLER mark by registering that mark with the USPTO (e.g., Reg. No. 882,633 registered December 16, 1969) and the OHIM (e.g., Reg. No. 1,335,330 registered March 2, 2005). Complainant provided the trademark registration certificates for the registrations with the USPTO, but failed to provide evidence to support its registrations with the OHIM. However, Complainant’s ownership of registrations currently held with the USPTO for the SIZZLER mark is sufficient to establish one’s rights in the mark. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); 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). Therefore, the Panel finds that Complainant established its rights in the SIZZLER mark under Policy ¶ 4(a)(i) by registering the mark with the USPTO, although it has not provided evidence of trademark registrations in Respondent’s country of residence. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction)
Complainant also contends that Respondent’s <sizzlerlounge.com> domain name is confusingly similar to its SIZZLER mark. The disputed domain name includes the entire mark while adding the generic term “lounge” and the generic-top level domain (“gTLD”) “.com.” The Panel finds that the changes made fail to sufficiently differentiate Respondent’s <sizzlerlounge.com> domain name from Complainant’s SIZZLER mark and that Respondent’s disputed <sizzlerlounge.com> domain name is confusingly similar to Complainant’s SIZZLER mark under Policy ¶ 4(a)(i). See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); 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.”).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
The Panel finds that Complainant alleged and made a prima facie case showing that Respondent has no rights to or legitimate interests in the disputed domain name. Once Complainant does so, the burden of proof to show shifts to Respondent to show that it does have such rights under Policy ¶ 4(a)(ii). 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.”). Respondent failed to file any kind of Response in this action, which allows the Panel to assume that it lacks any rights or legitimate interests in the disputed domain name. See 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). Nonetheless, the Panel still examines the entire record before making a determination regarding Respondent’s rights or legitimate interests in the disputed domain name according to the factors listed in Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain name. Respondent does not claim to be commonly known by the disputed domain name and the WHOIS information identifies the registrant as “iPulchra.” The Panel finds that the WHOIS information and the lack of evidence in the record indicate that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); 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 also asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent’s <sizzlerlounge.com> domain name resolves to a site offering links to Complainant and its competitors in the restaurant industry, such as “Red Lobster.” The Panel finds that offering links to Complainant’s competitors is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See 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)); see also 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)).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s disputed domain name disrupts its business, indicating bad faith registration and use. Respondent’s disputed domain name resolves to a website offering links to Complainant’s competitors, like Red Lobster. Internet users may arrive at the website and then be diverted to the linked sites, purchasing goods from those restaurants rather than Complainant. The Panel finds that this use disrupts Complainant’s business and is affirmative evidence of Respondent’s bad faith registration and use of the disputed domain name 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 names to operate a commercial search engine with links to the products of the complainant 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)).
Complainant also alleges that Respondent is attempting to gain commercially from the disputed domain name, evidencing bad faith registration and use. Respondent’s disputed domain name resolves to a website offering links to third parties. Many of those links resolve to Complainant’s competitors in the restaurant industry. Presumably, each time an Internet user clicks through to one of the linked sites, Respondent collects a fee. Therefore, the Panel finds that Respondent is gaining commercially from the disputed domain name establishing bad faith registration and use under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sizzlerlounge.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 15, 2011.
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