Famous Dave's of America, Inc. v. Paydues Inc.
Claim Number: FA1112001420191
Complainant is Famous Dave's of America, Inc. (“Complainant”), represented by Patricia I. Reding of Faegre Baker Daniels, Minnesota, USA. Respondent is Paydues Inc. (“Respondent”), New Mexico, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <famousdavesfranchise.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 December 15, 2011; the National Arbitration Forum received payment on December 16, 2011.
On December 15, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <famousdavesfranchise.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 16, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 5, 2012 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@famousdavesfranchise.com. Also on December 16, 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 January 17, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 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 <famousdavesfranchise.com> domain name is confusingly similar to Complainant’s FAMOUS DAVE’S mark.
2. Respondent does not have any rights or legitimate interests in the <famousdavesfranchise.com> domain name.
3. Respondent registered and used the <famousdavesfranchise.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Famous Dave's of America, Inc., has been in the restaurant, bar, food, and beverage businesses since 1998. Complainant operates over 50 corporate-owned restaurants, with another 130-plus franchised locations. Complainant offers its products and services under the FAMOUS DAVE’S mark, which it has registered with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,170,880 registered July 7, 1998).
Respondent, Paydues Inc., registered the <famousdavesfranchise.com> domain name on July 7, 2011. The disputed domain name resolves to a website purporting to offer franchising information related to Complainant’s business but in actuality linking to franchising information about third-party businesses, 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.
Complainant claims rights in the FAMOUS DAVE’S mark based on its registration of the mark with the USPTO (e.g. Reg. No. 2,170,880 registered July 7, 1998). It is well established that registration of a mark with the USPTO establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”).
Complainant urges that the Panel find the <famousdavesfranchise.com> domain name confusingly similar to Complainant’s FAMOUS DAVE’S mark for the purposes of Policy ¶ 4(a)(i). The disputed domain name contains Complainant’s mark, deleting both the space between the words and the apostrophe. Previous panels have found these changes to be insignificant when considering confusing similarity. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”). The disputed domain name also adds the descriptive term “franchise,” as well as the generic top-level domain (“gTLD”) “.com.” The term “franchise” is a clear reference to Complainant’s restaurant franchising operations and is thus descriptive of Complainant’s business. Terms that describe a complainant’s business do not distinguish a disputed domain name under Policy ¶ 4(a)(i), just as the affixation of a gTLD has been held to be insufficient to distinguish a disputed domain name. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel concludes that the <famousdavesfranchise.com> domain name is confusingly similar to Complainant’s FAMOUS DAVE’S mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that the elements of Policy ¶ 4(a)(i) have been satisfied.
Under Policy ¶ 4(a)(ii), Complainant is charged with first presenting a prima facie case before the burden is shifted to Respondent to refute Complainant’s claims. See 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.”); see also Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”). Complainant in this case has successfully satisfied its burden, while Respondent has not, as it has not presented a Response. Respondent’s silence enables the Panel to infer that Respondent lacks rights and legitimate interests. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond) However, the Panel will continue to examine the record under the Policy ¶ 4(c) factors to determine whether Respondent has rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent is not commonly known by the <famousdavesfranchise.com> domain name for the purposes of Policy ¶ 4(c)(ii). The WHOIS information for the disputed domain name identifies the domain name registrant as “Paydues Inc.” The Panel fails to find any similarity to the disputed domain name. Complainant also states that it has not licensed or otherwise authorized Respondent’s use of Complainant’s mark in the disputed domain name. Finally, Respondent has failed to satisfy its burden of providing the Panel with a Response, so there is no evidence in the record to refute Complainant’s claims. The Panel finds that Respondent is not commonly known by the disputed domain name for the purposes of 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 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 that it is commonly known by the disputed domain name).
Complainant further argues 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). The disputed domain name resolves to a website purporting to offer franchising information related to Complainant’s business but in actuality links to franchising information about third-party businesses, some of which compete with Complainant. A respondent’s use of a disputed domain name to provide links to competing products and services evidences a lack of rights or legitimate interests. 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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 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).
The Panel opines that the elements of Policy ¶ 4(a)(ii) have been satisfied.
Complainant alleges that Respondent’s registration and use of the <famousdavesfranchise.com> domain name constitutes bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii). Respondent’s website purports to offer information about Complainant’s business at a confusingly similar domain name, suggesting that Respondent’s purpose for operating the website is to attract visitors seeking information about Complainant’s business. When these visitors arrive at Respondent’s website and are instead exposed to links to competing businesses, Complainant’s business has been disrupted in bad faith under Policy ¶ 4(b)(iii). See 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)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant further alleges that Respondent’s registration and use of the disputed domain name constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). Respondent’s intent to divert Internet traffic to its own website is evidenced by Respondent’s registration of a domain name containing Complainant’s mark, which resolves to a website purporting to offer information about Complainant’s business. Respondent is attempting to wrongfully associate itself with Complainant in order to usurp Complainant’s goodwill and generate greater user traffic. The Panel infers that Respondent derives a financial gain from the operation of its website such that Respondent seeks to realize a commercial gain from the confusion it creates as to Complainant’s affiliation with the disputed domain name. This type of business model has been held to violate the Policy and shows bad faith under ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Finally, Complainant alleges that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the FAMOUS DAVE’S mark. The Panel may find that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights. A finding of mere constructive notice is generally insufficient to support such a showing. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). The Panel finds that Complainant has proven that Respondent has actual knowledge of Complainant's mark and, therefore, that Respondent has registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel opines that the elements of Policy ¶ 4(a)(iii) have 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 <famousdavesfranchise.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 23, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page