Luby’s Fuddruckers Restaurants, LLC v. Paydues Inc.
Claim Number: FA1112001421339
Complainant is Luby’s Fuddruckers Restaurants, LLC (“Complainant”), represented by Michael Racusin, Texas, USA. Respondent is Paydues Inc. (“Respondent”), New Mexico, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fuddruckersfranchise.net>, registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 22, 2011; the National Arbitration Forum received payment on December 22, 2011.
On December 27, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <fuddruckersfranchise.net> 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 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 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@fuddruckersfranchise.net. Also on December 29, 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 January 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant owns, operates and franchises restaurants under its FUDDRUCKERS service mark.
Complainant owns a registration, on file with the United States Patent and Trademark Office (“USPTO”), for its FUDDRUCKERS service mark (Reg. No. 1,298,164, registered September 25, 1984).
Respondent registered the disputed <fuddruckersfranchise.net> domain name on July 7, 2011.
The disputed domain name resolves to a website labeled “About Fuddruckers Franchise,” that invites Internet users to submit contact their personal information in order to receive materials for becoming a franchisee of Complainant.
Respondent’s <fuddruckersfranchise.net> domain name is confusingly similar to Complainant’s FUDDRUCKERS mark.
The contested domain name is not used in connection with a bona fide offering of goods or services, not is it employed in making a legitimate noncommercial or fair use.
Respondent does not have any rights to or legitimate interests in the domain name <fuddruckersfranchise.net>.
Respondent registered and uses the <fuddruckersfranchise.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in its FUDDRUCKERS service mark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. 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.”).
Respondent’s <fuddruckersfranchise.net> domain name is confusingly similar to Complainant’s FUDDRUCKERS service mark under Policy ¶ 4(a)(i). The disputed domain name contains Complainant’s entire mark, with the addition of the descriptive term “franchise,” which relates to an aspect of Complainant’s business, and the generic top-level domain (“gTLD”) “.net.” These additions to the mark, made in forming the contested domain name, do not distinguish the domain from the mark under the standards of the Policy. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance” to a complainant’s AIG mark failed to differentiate the resulting domain name from the mark under Policy ¶ 4(a)(i) because the appended term related to that complainant’s business); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described a complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish a respondent’s <duracellbatteries.com> from that complainant’s DURACELL mark); further 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 Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights to or legitimate interests in the <fuddruckersfranchise.net> domain name. Once Complainant makes out a prima facie case in support of its allegations under Policy ¶ 4(a)(ii), the burden shifts to Respondent to prove that it does have rights to or legitimate interests in a contested 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 respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Therefore, Respondent’s failure to respond to the Complaint filed in this proceeding allows us to presume that Respondent does not have any rights to or legitimate interests in the <fuddruckersfranchise.net> domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that there is nothing in the record to suggest that Respondent has ever been commonly known as the contested <fuddruckersfranchise.net> domain name. Indeed, the pertinent WHOIS information identifies the registrant of the domain name only as “Paydues Inc.,” which does not resemble the domain name. We conclude therefore, that Respondent is not commonly known by the <fuddruckersfranchise.net> domain name so as to have demonstrated that it has rights to or legitimate interests in 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 a respondent was not commonly known by the <cigaraficionada.com> domain name, and so had no rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii), based on the relevant WHOIS information and other evidence in the record); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that a respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names, and so had no rights to or legitimate interests in those domain names under Policy ¶ 4(c)(ii), because the relevant WHOIS information listed the registrant of the disputed domain names only as Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't, and there was no other evidence in the record to suggest that that respondent was commonly known by the domain names).
We next observe that Complainant alleges, and Respondent does not deny, that the contested domain name is not used in connection with a bona fide offering of goods or services, not is it employed in making a legitimate noncommercial or fair use. Rather, Complainant asserts, without objection from Respondent, that Respondent’s use of the <fuddruckersfranchise.net> domain name entails a website entitled “About Fuddruckers Franchise” and contains information about Complainant and how Internet users can become franchisees of Complainant’s restaurants. In the circumstances here presented, we may comfortably presume that Respondent profits from this use of the disputed domain name. Such a use of the domain is evidence that Respondent is attempting to pass itself off as Complainant. Thus, Respondent is not making a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <fuddruckersfranchise.net> domain name under Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that a respondent attempted to pass itself off as a complainant online, which stood as evidence that that respondent had no rights to or legitimate interests in a disputed domain name); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007):
Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the … domain name for 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 thus finds that Policy ¶ 4(a)(ii) has been satisfied.
It is evident from the record that Respondent both registered and uses the <fuddruckersfranchise.net> domain name for the purpose of creating a likelihood of confusion with Complainant’s mark as to the possibility that Complainant is the source or sponsor of Respondent’s resolving website. It is likewise evident that Respondent intends to profit from this confusion. We conclude, therefore, that Respondent registered and uses the <fuddruckersfranchise.net> domain name in bad faith pursuant 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 a respondent was diverting Internet users searching for a complainant’s website to its own website, likely profiting in the process); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that a respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking a complainant’s website to its own website for commercial gain, where that respondent likely profited from this diversion scheme).
Moreover, Because it appears that Respondent is attempting to pass itself off as Complainant by means of a domain name that is confusingly similar to Complainant’s FUDDRUCKERS service mark, we have evidence that Respondent has registered and uses the contested domain name in bad faith under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that a respondent's use of <monsantos.com> to misrepresent itself as a complainant and to provide misleading information to the public supported a finding of bad faith).
For these reasons, the Panel finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <fuddruckersfranchise.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 7, 2012
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