Sizzler USA Franchise, Inc., Sizzler International Marks, LLC and Sizzler Restaurants Group Pty Ltd. v. Kazi Samee
Claim Number: FA1204001440246
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 Kazi Samee (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <indiansizzlerde.com>, registered with Wild West Domains, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 19, 2012; the National Arbitration Forum received payment on April 20, 2012.
On April 20, 2012, Wild West Domains, LLC. confirmed by e-mail to the National Arbitration Forum that the <indiansizzlerde.com> domain name is registered with Wild West Domains, LLC. and that Respondent is the current registrant of the name. Wild West Domains, LLC. has verified that Respondent is bound by the Wild West Domains, 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 April 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 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@indiansizzlerde.com. Also on April 20, 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 May 14, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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.
Complainants requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainants contend as follows:
Complainants, Sizzler USA Franchise, Inc., Sizzler International Marks, LLC and Sizzler Restaurants Group Pty Ltd. own trademark rights in the SIZZLER mark. Complainants own numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for their SIZZLER mark (e.g., Reg. No. 882,633 registered December 16, 1969). Additionally, Complainants own trademark registrations for their SIZZLER mark with trademark agencies throughout the world, such as China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 772,921) and IP Australia (“IPA”) (Reg. No. 414,006).
Respondent’s <indiansizzlerde.com> domain name is confusingly similar to Complainants’ SIZZLER mark because the additions of the letters “de,” the generic term “indian,” and the generic top-level domain (“gTLD”) “.com” are not sufficient to distinguish the disputed domain name from Complainant’s mark.
Respondent uses the <indiansizzlerde.com> domain name in connection with a website and Newark, Delaware restaurant.
Respondent is not commonly known by the disputed domain name, not licensed or authorized to use Complainants’ mark, and is not connected to Complainants.
Respondent registered and uses the <indiansizzlerde.com> domain name to commercially benefit by creating Internet user confusion as to Complainants’ affiliation with the disputed domain name;
Respondent must have been aware of Complainants’ mark when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainants have, and had, trademark rights in SIZZLER at all times relevant to this proceeding. Respondent’s <indiansizzlerde.com> domain name is confusingly similar to Complainants’ trademark.
Respondent registered the <indiansizzlerde.com> domain name on January 12, 2012.
Respondent knew of Complainant’s SIZZLER trademark at the time it registered the at-issue domain name.
Respondent had, and has, no authority to use Complainants’ trademark in any manner whatsoever.
Respondent registered and uses the at-issue domain name to sponsor a website that commercially relates to Respondent’s Newark, Delaware restaurant business.
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.”).
There are three Complainants in this proceeding: Sizzler USA Franchise, Inc., Sizzler International Marks, LLC, and Sizzler Restaurants Group Pty Ltd. UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint” (emphasis added). Complainants allege that they each own trademark rights in the SIZZLER mark and that therefore there is a sufficient nexus between them to permit their acting as a common interest in this proceeding. The Panel agrees and finds a sufficient legal connection between the parties to treat them as a single entity under Supp. Rule 1(e).
The at-issue domain name is confusingly similar to trademarks in which Complainants have rights.
Complainants reference identifying information concerning various USPTO trademark and foreign registrations for their SIZZLER mark. The references appear to be credible. Complainants thereby established their rights in the SIZZLER mark under Policy ¶ 4(a)(i). 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 Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
The at-issue domain name is nearly identical to Complainants' registered SIZZLER trademark. In fact, the only difference between Complainants' mark and the at-issue domain name is the addition of the word "indian," the term "de," and the generic top level domain name ".com" to the mark. The affixation of the generic terms "indian,""de" and ".com" are insufficient, even when taken collectively, to distinguish the at-issue domain name from Complainants' trademark for the purposes of Policy ¶ 4(a)(I). See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); see also Am. Online, Inc. v. Tullo, FA 150811 (Nat. Arb. Forum Apr. 15, 2003) (finding that the <3daol.com> domain name is confusingly similar to the complainant’s AOL mark because “…the addition of the prefix ‘3d’ does nothing to ‘distinguish’ Respondent’s domain name from Complainant’s registered trademarks.”); see also Arthur Guinness Son & Co. (Dublin) v. Healy!BOSTH, see also 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.”)
Respondent lacks rights and interests in respect of the <indiansizzlerde.com> domain name.
Under Policy ¶ 4(a)(ii) Complainants must first make out a prima facie case that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights and legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since there was no response to the Complaint, Complainants’ prima facie case will act conclusively.
Respondent is not commonly known by the disputed domain name. WHOIS information identifies “ICS INC.” as the registrant of <indiansizzlerde.com>. “ICS INC.” does not nominally relate or otherwise identify the at-issue domain name. Moreover, the record contains no evidence tending to show that Respondent is commonly known by the <indiansizzlerde.com> domain name. The domain name was also registered subsequent to Complainants’ acquiring rights in the SIZZLER trademark and Respondent is neither licensed nor authorized to use such trademark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Additionally, Respondent’s confusingly similar domain name references a commercial website which is directly connected to Respondent’s Newark, Delaware restaurant. Since Complainants’ trademark concerns the restaurant business, Respondent may be considered a competitor. Under the circumstances, 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). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
Given the uncontroverted evidence, Complainants satisfy their initial burden and thereby conclusively demonstrate that Respondent lacks rights and interests in respect of the <indiansizzlerde.com> domain name pursuant to Policy ¶4(a)(ii).
Respondent registered and uses the at-issue domain name in bad faith.
By using a domain name that is confusingly similar to Complainants’ well-known mark, Respondent attempts to confuse Internet users into believing that it is affiliated with Complainants. Respondent’s website promotes and supports a restaurant named “Indian Sizzler.” Therefore, it appears that Respondent has registered and is using the at-issue domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Since Complainants’ mark is well known throughout the United States and since Respondent operates in the same field of commerce and same geographic area covered by Complainants registered trademarks, it would be inconceivable to find that Respondent was unaware of Complainants’ mark when it registered <indiansizzlerde.com>. Respondent’s knowledge of Complainants’ mark at the time it registered the at-issue domain name further demonstrates that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <indiansizzlerde.com> domain name be TRANSFERRED from Respondent to Complainants.
Paul M. DeCicco, Panelist
Dated: May 15, 2012
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