OS Asset, Inc. v. Jeremy Breedlove
Claim Number: FA1203001435266
Complainant is OS Asset, Inc. (“Complainant”), represented by Courtni E. Thorpe of Baker & Hostetler LLP, Ohio, USA. Respondent is Jeremy Breedlove (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <outback-steakhouse.net>, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 19, 2012; the National Arbitration Forum received payment on March 21, 2012.
On March 20, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <outback-steakhouse.net> 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 March 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 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@outback-steakhouse.net. Also on March 21, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 20, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1.Complainant has registered the OUTBACK STEAKHOUSE with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,523,949 registered February 7, 1989);
2.Respondent’s <outback-steakhouse.net> domain name is identical to Complainant’s OUTBACK STEAKHOUSE mark;
3.Respondent is not commonly known by the disputed domain name;
4.Respondent’s disputed domain name resolves to a website offering links to Complainant’s own website, recipes to Complainant’s menu items and links to coupons for Complainant’s restaurants, so that Respondent earns pay-per-click revenue from operating the website ;
5.Respondent does not have rights or legitimate interests in the disputed domain name;
6.Respondent registered and is using the disputed domain name in bad faith by attempting to attract Internet users, for commercial gain, by creating a likelihood of confusion as to Complainant’s association with the disputed domain name.
7. Respondent had actual and constructive knowledge of Complainant’s rights in the mark when Respondent registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company operating and franchising a well-known and successful chain of more than 800 restaurants in the United States and overseas under the name Outback Steakhouse.
2. Complainant has registered the OUTBACK STEAKHOUSE trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,523,949 registered February 7, 1989);
3.Respondent’s disputed domain name <outback-steakhouse.net> resolves to a website offering links to Complainant’s own website, recipes to Complainant’s menu items and links to coupons for Complainant’s restaurants, without permission or authority from Complainant, so that Respondent earns pay-per-click revenue from operating the website.
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.
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.”).
The first question is whether Complainant has rights in a trademark or service mark. In that regard Complainant asserts that it has established its rights in the OUTBACK STEAKHOUSE mark by registering it with the USPTO (e.g., Reg. No. 1,523,949 registered February 7, 1989). Complainant submits multiple printouts from the USPTO website which the Panel finds all indicate that the mark is duly registered and that Complainant is the owner of record. The Panel finds that Complainant has satisfied the rights requirement encapsulated in Policy ¶ 4(a) (i) by registering the OUTBACK STEAKHOUSE mark with the USPTO. See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)); see also 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).
Complainant then submits that Respondent’s <outback-steakhouse.net> domain name is identical to its OUTBACK STEAKHOUSE mark. Complainant states that the disputed domain name includes the entire mark, merely adding the generic top-level domain (“gTLD”) “.net” and a hyphen, while removing the space between terms. These factors sometimes lead panels to say a domain name is
“virtually identical” to a domain name. The Panel finds that Respondent’s disputed domain name is identical or alternatively it is confusingly similar to Complainant’s OUTBACK STEAKHOUSE mark under Policy ¶ 4(a) (i). See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); 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).” Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii) and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s OUTBACK STEAKHOUSE trademark and to use it in his domain name without making any additions or alterations other than those described above.
(b) Respondent has then decided to use the domain name described above and in a manner clearly designed to earn monetary reward by trading on Complainant’s good name.
(c) Respondent has engaged in these activities without the consent or approval of Complainant.
(d) Complainant contends that Respondent is not commonly known by the disputed domain name. The Panel notes that Respondent has not offered any evidence to contradict Complainant’s assertions. Complainant states that the WHOIS information identifies the registrant of the disputed domain name as “Jeremy Breedlove.” Thus, based upon the evidence available, the Panel determines that Respondent is not commonly known by the disputed domain name 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 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).
(d) Complainant also contends 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 claims that that the disputed domain name resolves to a website offering links to Complainant’s own website, recipes to Complainant’s menu items, and links to coupons for Complainant’s restaurants. Complainant claims that Respondent registered the domain name with the intent to gain commercially because, when the domain name was purchased by Respondent, it was purchased at an auction which listed the monthly revenue of the website as $660.00 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 MySpace, Inc. v. Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding that “the linking of the disputed domain name to the Complainant’s commercial website is not a legitimate non-commercial or fair use of the domain name” and that the respondent’s use “cannot give rise to a right or legitimate interest in the disputed domain name”); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant relies on Policy ¶ 4(b) (iv) and contends that Respondent has registered and is using the disputed domain name with the intention of confusing Internet users as to Complainant’s affiliation with the website to which the disputed domain name resolves. Complainant states that the disputed domain name resolves to a website offering links to its own website, information about recipes that it offers from its restaurants, and links to coupons that purport to offer discounts at Complainant’s restaurants. Complainant states that Respondent likely generates revenue through Google AdSense by driving Internet traffic to its website. The Panel finds that Respondent’s use of the disputed domain name demonstrates bad faith registration and use under Policy ¶ 4(b) (IV). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arab. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b) (iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also McKinsey Holdings, Inc. v. Mgr. Jakub Bystron, FA 1330650 (Nat. Arb. Forum July 23, 2010) (finding that Respondent's use of the <mckinsey.us> domain name to resolve to Complainant’s official website was further evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Secondly, Complainant contends that, in light of the fame and notoriety of Complainant's OUTBACK STEAKHOUSE mark when viewed alongside the content provided from Respondent’s website, it is inconceivable that Respondent could have registered the <outback-steakhouse.net> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. It is sometimes said that arguments based on constructive knowledge may not establish bad faith under the UDRP, but in any event, on the facts of the present case, the Panel infers that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and his actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a) (iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Thirdly, in addition and having regard to the totality of the evidence and the submissions of Complainant, the Panel finds that, in view of Respondent’s registration of the domain name using the OUTBACK STEAKHOUSE mark and in view of the conduct that Respondent engaged in by using the domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <outback-steakhouse.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 23. 2012
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