Sizzler USA Franchise, Inc., Sizzler International Marks, LLC, and Sizzler Restaurants Group Pty Ltd. v. Umair Arshad
Claim Number: FA1201001426886
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 umair arshad (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sizzler-coupons.com>, registered with GoDaddy.com, LLC.
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.
Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 27, 2012; the National Arbitration Forum received payment on January 30, 2012.
On January 27, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <sizzler-coupons.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 February 2, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 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@sizzler-coupons.com. Also on February 2, 2012, 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 March 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Karl V. Fink (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 (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 <sizzler-coupons.com> domain name is confusingly similar to Complainant’s SIZZLER mark.
2. Respondent does not have any rights or legitimate interests in the <sizzler-coupons.com> domain name.
3. Respondent registered and used the <sizzler-coupons.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sizzler USA Franchise, Inc., Complainant, Sizzler International Marks, LLC, and Complainant, Sizzler Restaurants Group Pty Ltd., are sufficiently connected and will hereinafter be referred to as “Complainant.” Complainant is the owner of multiple registrations through the United States Patent and Trademark Office (“USPTO”) for the SIZZLER mark (e.g., Reg. No. 882,633 registered December 16, 1969). Complainant uses its SIZZLER mark in connection with restaurants and related goods and services.
Respondent, Umair Arshad, registered the <sizzler-coupons.com> domain name on October 17, 2011. The disputed domain name resolves to a website purporting to offer coupons to Complainant’s restaurants but instead offers information about Complainant and Complainant’s restaurants. Respondent lists its disputed domain name for sale in a public auction.
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 argues that it has rights in the SIZZLER mark. Complainant asserts that it has numerous registrations for the SIZZLER mark (e.g., Reg. No. 882,633 registered December 16, 1969) through the USPTO and that these registrations establish its rights in the mark. Panels have previously held that registration of a mark with a federal trademark authority, regardless of the location of the parties, is a sufficient ground on which to find rights in a mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel finds that Complainant has rights in the SIZZLER mark under Policy ¶ 4(a)(i).
Complainant argues that the <sizzler-coupons.com> domain name is confusingly similar to its SIZZLER mark. The Panel finds that the addition of a hyphen does not differentiate a disputed domain name from a mark. See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). The Panel also finds that Respondent’s addition of the generic word “coupons” fails to make the <sizzler-coupons.com> domain name distinct from the SIZZLER mark. 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. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). The Panel also finds that Respondent’s addition of the generic top-level domain (“gTLD”) “.com” is irrelevant for a Policy ¶ 4(a)(i) analysis. See 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); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The Panel thus finds that the <sizzler-coupons.com> domain name is confusingly similar to the SIZZLER mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Where a complainant has made a prima facie case in support of the allegations it makes, the respondent has the burden of disproving these claims according to Policy ¶ 4(c)(ii). 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.”). If, however, Respondent does not submit a Response to the Complaint, the Panel may infer that Respondent is void of rights and 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); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant). Complainant asserts that Respondent has neither rights nor legitimate interests in the disputed domain name. The Panel finds that this assertion has been supported by Complainant by evidence amounting to a prima facie case. The Panel is left without the benefit of a response from Respondent and thus may infer that Respondent does not have rights or legitimate interests in the <sizzler-coupons.com> domain name. However, the Panel will review the record for information which suggests otherwise.
Complainant argues that Respondent is not commonly known by the <sizzler-coupons.com> domain name. Complainant alleges that it has never licensed or otherwise authorized Respondent to use the SIZZLER mark and is in no way affiliated with Respondent. The WHOIS record for the <sizzler-coupons.com> domain name lists “Umair Arshad” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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 argues that Respondent lacks right and legitimate interests in the disputed domain name. Complainant avers that Respondent’s <sizzler-coupons.com> domain name resolves to a website that purports to offer coupons to Complainant’s restaurant but instead only offers information about Complainant and Complainant’s restaurants. Complainant presents communication between Complainant and Respondent in which Respondent says, “No coupons are offered in this Website and I am not selling any Product.” Complainant further contends that Respondent stated, “The domain was available That’s [sic] why I registered it. I am selling my website in public auction. If your client is interested please send me the offer. I will transfer the domain to your client.” Panels have found that a willingness to sell a disputed domain name is evidence that a respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”). Based on the informational content found on Respondent’s website and Respondent’s offer to sell the disputed domain name, the Panel finds that Respondent is not making 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).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s bad faith is demonstrated by Respondent’s willingness to sell the <sizzler-coupons.com> domain name to Complainant or a third party. Complainant provides the Panel with correspondence from Respondent in which Respondent states that the disputed domain name is being publically auctioned and that Complainant may make an offer to purchase the disputed domain name from Respondent. The panels in Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000), and Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000), held that the willingness to sell a disputed domain name is evidence of bad faith. Based on its correspondence with Complainant, Respondent admittedly registered the disputed domain name because “[t]he domain was available,” and Respondent states that it just uses the disputed domain name to provide user content while Respondent attempts to sell the domain name. Therefore, the Panel finds that Respondent registered and is using the disputed domain name for the purpose of selling the <sizzler-coupons.com> domain name, which is evidence of bad faith pursuant to Policy ¶ 4(b)(i).
Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the SIZZLER mark prior to registration of the domain names because of Complainant's widespread use of the SIZZLER mark. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); 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 satisfied 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 <sizzler-coupons.com> domain name be TRANSFERRED from Respondent to Complainant.
Karl V. Fink (Ret.), Panelist
Dated: March 2, 2012
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