Papa John's International, Inc. v. Pratap
Claim Number: FA1201001427509
Complainant is Papa John's International, Inc. (“Complainant”), represented by John J. Dabney of McDermott Will & Emery LLP, Washington D.C., USA. Respondent is Pratap (“Respondent”), Nepal.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pappajohns.com>, registered with ANSWERABLE.COM (I) PVT. LTD.
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.
Dr. Reinhard Schanda as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 31, 2012; the National Arbitration Forum received payment on February 3, 2012.
On February 1, 2012, ANSWERABLE.COM (I) PVT. LTD. confirmed by e-mail to the National Arbitration Forum that the <pappajohns.com> domain name is registered with ANSWERABLE.COM (I) PVT. LTD. and that Respondent is the current registrant of the name. ANSWERABLE.COM (I) PVT. LTD. has verified that Respondent is bound by the ANSWERABLE.COM (I) PVT. LTD. 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 7, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 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@pappajohns.com. Also on February 7, 2012, 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.
A timely Response was received and determined to be complete on February 27, 2012.
On March 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it is the world’s third largest pizza company, operating and franchising pizza delivery and carryout restaurants under the mark PAPA JOHN’S. Complainant and its franchisees operate thousands of Papa John’s restaurants throughout the United States and in many foreign countries.
For over 25 years, Complainant has used the mark PAPA JOHN’S and formatives thereof (Complainant’s “PAPA JOHN’S Trademarks”) to designate the source of its goods and services, including pizzas, and restaurant, carry out and food delivery services.
Complainant’s PAPA JOHN’S-branded pizza has won numerous awards for consumer satisfaction. For example, many years, Complainant has ranked #1 in customer satisfaction among all national pizza chains in the American Customer Satisfaction Index conducted by the national Quality Research Center at the University of Michigan Business School. Restaurants and Institutions has named Complainant “Best Pizza Chain in America” and awarded Complainant other top honors in its Choice in Chains Survey for many years.
Complainant contends that it also has received many awards based on its commercial success. For example, in 1999, Complainant was ranked as #1 Pizza Franchise in Entrepreneur magazine’s 20th Annual Franchise 500. In 2009, Entrepreneur named Complainant as one of the fastest growing franchises and ’10 on its list of America’s Top Global Franchises.
Complainant invests substantial resources in advertising the PAPA JOHN’S brand. Since the commencement of sales of PAPA JOHN’S-branded pizza over 25 years ago, Complainant has invested hundreds of millions of dollars in advertising an promoting the PAPA JOHN’S brand throughout the United Sates and the world.
Sales of Complainants PAPA JOHN’S-branded pizza are substantial. For the past several years, Complainant and its franchisees achieved over a billion dollars in annual revenues. Since commencement of sales over 25 years ago, Complainant and its franchisees have sold many billions of dollars of PAPA JOHN’S-branded pizza to many millions of customers throughout the United States.
Complainant owns valid U.S. trademark registrations for the mark PAPA JOHN’S and formatives thereof for pizza and restaurants, carry out, and food delivery services. Complainant’s registrations for its PAPA JOHN’S marks are “prima facie” evidence of the validity of those marks and of Complainant’s “exclusive right” to use those registered marks for the goods and services identified in the registrations.
Some of Complainant’s PAPA JOHN’S trademark registrations have achieved “incontestable” status and thus are “conclusive” evidence of the validity of those marks and of Complainant’s “exclusive right” to use those marks in commerce for the goods and services identified in the registrations.
As a result of Complainant’s long-term, widespread and prominent use of its PAPA JOHN’S Trademarks, Complainant’s PAPA JOHN’S Trademarks have acquired significant goodwill and recognition. The public associates PAPA JOHN’S brand pizza products and restaurant and food delivery services exclusively with Complainant, and has done so for decades. PAPA JOHN’S Trademarks are among the most famous brands in the United States for pizza and restaurant, carry out and food delivery services.
Since at least as early as 1995, Complainant has prominently used its PAPA JOHN’S Trademarks on the internet in connection with the advertising, promotion and sale for Complainant’s goods and services at Complainant’s website located at <papajohns.com>.
Complainant has spent many millions of dollars advertising and promoting its PAPA JOHN’S domain name. Over the years, Complainant has received many millions of visits to its website located at <papajohns.com>. Complainant’s domain name is well-known and distinctive and has been so for over a decade.
Complainant contends that Respondent’s domain name <pappajohns.com> is confusingly similar to Complainant’s Papa John’s Trademarks because it incorporates Complainant’s famous PAPA JOHN’S mark in its entirety, save for the addition of the letter “p” of the word PAPA, the deletion of the apostrophe and the addition of the generic top level domain name “.com.”
Respondent’s addition of the letter “p” to the word PAPA does not reduce the virtual identity between Complainant’s PAPA JOHN’S Trademarks and domain name <papajohns.com> and Respondent’s Domain Name <pappajohns.com>.
Respondent’s use of the misspelled word “papa” is obviously intended to attract internet users seeking Complainant who misspell or err in typing complainant’s website, as Respondent’s Domain Name uses the identical pronunciations as, and is almost visually identical to, Complainant’s PAPA JOHN’S Trademarks and domain name <papajohns.com>.
Respondent’s deletion of an apostrophe between the letters “N” and “S” in Complainant’s mark PAPA JOHN’S does not reduce the virtual identity between Complainant’s PAPA JOHN’S Trademarks and domain name <papajohns.com> and Respondent’s Domain Name <pappajohns.com> In fact, the deletion of the apostrophe is legally irrelevant because punctuation is not reproducible in domain names.
Respondent’s addition of “.com” to Complainant’s mark PAPA JOHN’S, does not reduce the virtual identity between Complainant’s PAPA JOHN’S Trademarks and Respondent’s Domain Name. The term “.com” is the most common top-level domain used for internet websites, e-mail and networking. Thus, the use of this generic code cannot serve to distinguish Respondent’s Domain Name <pappajohns.com> from Complainant’s PAPA JOHN’S Trademarks and <papajohns.com> domain name.
Because Complainant has long advertised, promoted and sol its pizza products and restaurant and food delivery services using its PAPA JOHN’S Trademarks at <papajohns.com>, consumers seeking information about Complainant and its goods and services are likely to falsely believe that Respondent’s Domain Name <pappajohns.com> resolves to a website owned by Complainant and is an official source of information about Complainant, complainant’s business, and Complainant’s goods and services.
Complainant contends that Respondent is using the Domain Name for a website that offer sponsored click-throughout links to companies offering pizza and pizza restaurant and delivery services, e.g., “Order pizza Online”, “Pizza Delivery,” “Pizza Restaurants,” and “Order Pizza”. Respondent’s website also contains photographs of pizzas and a pizza delivery person.
Respondent’s website located at the Domain Name <pappajohns.com> is not owned, licensed or approved by or affiliated with Complainant. None of the linked websites to the Domain Name <pappajons.com> are owned, licensed or approved by or affiliated with Complainant.
Respondent’s use of the Domain Name <pappajohns.com> to display click-through links and to redirect uses to third-party websites is not a bona fide offering of goods and services or a legitimate noncommercial or fair use.
Respondent is listed in the Domain Name’s WhoIs information as “Pratap.” Nothing in Respondent’s WhoIs information implies that Respondent is “commonly known” by the Domain Name. Thus, Respondent does not own any rights or have any legitimate interests in the Domain Name.
Respondent registered the Domain Name more than a decade after Complainant began use of its PAPA JOHN’S Trademarks, years after Complainant registered its domain name <papajohns.com> for its website, and after Complainant’s PAPA JOHN’S Trademarks had become famous and well-known throughout the United States for pizza and restaurant and food delivery services. Because Complainant obviously has priority of use over Respondent.
Finally Complainant contends that Respondent’s Domain Name <pappajohns.com> contains Complainant’s famous PAPA JOHN’S mark. That fact alone is sufficient to prove Respondent’s bad faith registration and use.
Further, Respondent is using the Domain Name <pappajohns.com> for a website where Respondent offers click-through links to third-party commercial websites. The conduct constitutes bad faith registration and use of the Domain Name.
Complainant’s trademark registrations are constructive notice to Respondent of Complainant’s trademark rights in PAPA JOHN’S. Respondent’s registration of its Domain Name <pappajohns.com> decades after Complainant secured its initial trademark registration for PAPA JOHN’S is further evidence or Respondent’s bad faith registration and use of Respondent’s Domain Name <pappajohns.com>.
B. Respondent
In his Response the Respondent submitted the following contentions:
“I
acquired the domain name due to the fact that it incorporates the name ‘Pappa
Johns’ (two generic english names). While acquiring the domain name we
assumed that no party could claim exclusive rights to such generic english
names. I live in Nepal and thus I had no knowledge or awareness of the
complainant's business in the USA while making the domain acquisition.
Paragraph 4(a)
(i) I have taken no position as to whether the domain name is confusingly
identical or similar to a trademark owned by the complainant.
(ii) As to whether we have legitimate interest to the domain name, ‘Pappa Johns’
are common generic english names with multiple third party users here in Nepal.
We did not register the domain names with the intend of targetting the
respondent's trademarks. Given the generic nature of the English names ‘Pappa’ and
‘Johns’ and there common usage here in Nepal, I believe I am infringing on
nobody's rights owning the domain. I was not aware of the complainant's owning
of trademarks in the United States. The word ‘Pappa’ means Gift in the
Nepalese language and is word of everyday use.
(iii) There are multiple third party businesses using the terms ‘Johns’ and ‘Pappa’
that are not exclusively associated with the complainant. We acquired the
domain name 12 years ago and i have used it to post advertising links related
to generic English names ‘Johns’ and ‘Pappa’. The fact that the complainant has
not raised a word for more than 12 years means that it was legitimate use (see
example). What the complainant is doing right now is a classic case of reverse
domain name hijacking. The complainant is merely basing its argument on the
inference that since PapaJohns was so well known in the United States of
America, I am aware of their existence. My conclusion from the complainant's
esoteric infringement is the fallacious assumption that everyone all over the
world including Nepal where I come from, is aware of it. In the same vein the
complainant is trying to abuse the legal system to wrest the domain from its
rightful owner.
I have put the domain name into legitimate use through posting advertising links related to the names "Johns" and "Pappa". My posting of pay per click advertising on the domain's landing page constitute a legitimate and bona fide offering of goods and services. Numerous UDRP panels, deciding on similar infringement claims, have held pay-per-click as a legitimate business model.
As far as the direct evidence provided by the complainant, the advertising
links displayed on the domain name are automatically determined by software
applications. The terms displayed on the domain name relate to common names ‘Pappa’
and ‘Johns’. I have no control over the terms selected by the software
applications and displayed on the domain name. Furthermore this means all that
the complainant needed to produce this evidence was simply to search its
trademark "Papajohns" on the landing page which would have resulted
in it appearing there. In the face of this malicious gaming of the underlying
application in order to force the complainant's trademark to appear on the
domain, the provided evidence of a screenshot is unreliable hence null and
void.
And finally since the words "Johns" and "Pappa" are english
names and therefore are equivalent to "common words" under the UDRP
policy, the complainant fails to provide direct evidence of bad faith
registration and use of the domain name. Given there exists substantial third
party use of the common terms "Johns" and "Pappa", no bad
faith can be inferred in our case. In the absence of any evidence direct proof
that the disputed domain name was registered for the purpose of benefitting
from the complainant's trademark rights, there can be no finding of bad faith
registration in this case.”
The Panel finds that:
1. the Domain Name <pappajohns.com>, is confusingly similar to Complainant’s registered trademarks,
2. the Respondent has not established any right or legitimate interest in the Domain Name <pappajohns.com>, and
3. the Respondent has registered and is using the Domain Name <pappajohns.com>, 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."
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 contends that it has established its rights in the PAPA JOHN’S mark by registering it with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,383,735 registered February 18, 1986). Complainant has provided the trademark certificate to verify that it is the owner and that the mark is duly registered. Based upon the registration, the Panel finds that Complainant has established its rights in the PAPA JOHN’S mark under Policy ¶ 4(a)(i). 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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant also contends that the <pappajohns.com> domain name is confusingly similar to its PAPA JOHN’S mark. According to Complainant, the disputed domain name includes the entire mark, merely adding two elements: the letter “p” and the generic top-level domain (“gTLD”) “.com.” Complainant states that the disputed domain also removes the space between the terms of the mark and an apostrophe, of which neither are allowed in domain names. The Panel concludes that the changes made do little to distinguish Respondent’s disputed domain name from Complainant’s PAPA JOHN’S mark either aesthetically or phonetically, thereby making the two confusingly similar under Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the addition of the letter “c” to the complainant’s SAFLOK mark does not distinguish the <saflock.com> domain name from the mark under Policy ¶ 4(a)(i)).
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Techs., Inc. v. Int’l Elec. Commc’ns, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corp. v. Khaled Ali Soussi, D2000-0252 (WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant argues that Respondent is not commonly known by the disputed domain name. Complainant states that Respondent has offered no evidence to support a finding to the contrary. Also, Complainant claims that the WHOIS information supports its argument by identifying the registrant of the disputed domain name as “Pratap.” Based upon the available evidence, the Panel determines that Respondent’s is not commonly known as <pappajohns.com> under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also 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).
Complainant also argues 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. Complainant states that the disputed domain name resolves to a website offering links to other third-party companies that also sell pizza. The Panel is of the view that the screen shot provided by Complainant supports this claim. Based upon this use, the Panel finds that Respondent is not engaging in 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Complainant alleges that Respondent registered and is using the disputed domain name for its own commercial gain, demonstrating bad faith registration and use. Complainant states that the disputed domain name resolves to a website offering links to third parties. The Panel is of the view that the printout provided by Complainant supports its allegation that links are offered from Respondent’s website and that some of the links are associated with Complainant’s competitors in the pizza industry. Complainant argues that Respondent collects click-through revenue for each Internet user diverted to the other websites through the links offered. The Panel determines that such a use demonstrates bad faith registration and use under Policy ¶ 4(b)(iv) if it also finds that Respondent is attempting to gain commercially from the disputed domain name. See 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.’”); see also 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).
Complainant asserts that its trademark registrations for the PAPA JOHN’S mark put Respondent on notice of its rights in the mark. Complainant argues that Respondent has constructive knowledge of Complainant's rights in the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. As a result the Panel holds that Respondent registered the disputed domain name 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).
Doctrine of Laches
Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. Panels have noted that the remedies under the UDRP are injunctive rather than compensatory in nature, and that a principal concern is to avoid ongoing or future confusion as to the source of communications, goods, or services.
Also in this case the Panel finds that the doctrine of laches does not apply as a defense, and correspondingly choose to disregard Respondent’s assertions. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”).
Reverse Domain Name Hijacking
Paragraph 15(e) of the UDRP Rules provides that, if "after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding". Reverse Domain Name Hijacking is defined under the UDRP Rules as "using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name".
Panels have found that the onus of proving complainant bad faith in such cases is generally on the respondent, whereby mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking. To establish Reverse Domain Name Hijacking, a respondent would typically need to show knowledge on the part of the complainant of the complainant's lack of relevant trademark rights, or of the respondent's rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name. Evidence of harassment or similar conduct by the complainant in the face of such knowledge (e.g. in previously brought proceedings found by competent authorities to be groundless, or through repeated cease and desist communications) may also constitute a basis for a finding of abuse of process against a complainant filing under the UDRP in such circumstances.
Panels have found Reverse Domain Name Hijacking in circumstances including where: the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP; the complainant failed to notify the panel that the complaint was a refiling of an earlier decided complaint or otherwise misled the panel; a respondent's use of a domain name could not, under any fair interpretation of the reasonably available facts, have constituted bad faith; the complainant knew that the respondent used the disputed domain name as part of a bona fide business for which the respondent obtained a domain name prior to the complainant having relevant trademark rights.
The fact of default by a respondent does not necessarily prevent a finding of Reverse Domain Name Hijacking in appropriate cases, and Panels have on occasion entered such findings on their own initiative, especially where the complainant has intentionally attempted to mislead the panel by omitting material evidence.
Panels have declined to find
Reverse Domain Name Hijacking in circumstances including where: the complainant
has succeeded in establishing each of the three essential elements required
under the UDRP; the complainant's argument under a required element of
the UDRP fails, but not by such an obvious margin that the complainant must
have appreciated that this would be the case at the time of filing the
complaint; there is a question of clean hands or factual accuracy on the part
of both parties; the respondent's website contains commercial links explicitly
referable to the complainant for the purpose of generating revenue, providing a
basis for the complainant to be aggrieved; or there appears to be another
relevant factual basis for filing the complaint. See Rojas v. Davis, D2004-1081
(WIPO Apr. 18, 2005); Mondial Assistance S.A.S. v. Compana LLC, D2007-0965
(WIPO Oct. 23, 2007); Grasso's Koninklijke Machinefabrieken N.V. v.
Tucows.com Co, D2009-0115
(WIPO Apr. 10, 2009); Compart AG v. Compart.com / Vertical Axis, Inc., D2009-0462 (WIPO
July 9, 2009); Ville de Paris v. Salient Properties LLC, D2009-1279
(WIPO Dec. 3, 2009).
Since the Panel is of the view that Complainant has satisfied all of the elements of Policy ¶ 4(a), the Panel holds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pappajohns.com> domain name be TRANSFERRED from Respondent to Complainant .
Dr. Reinhard Schanda, Panelist
Dated: March 20, 2012
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