Robeks Corporation v. Paydues Inc
Claim Number: FA1209001464353
Complainant is Robeks Corporation (“Complainant”), represented by Jodi A. DeSchane of Faegre Baker Daniels, LLP, Minnesota, USA. Respondent is Paydues Inc (“Respondent”), New Mexico, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <robeksfranchise.net>, which is registered with GODADDY.COM, LLC.
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 electron-ically on September 25, 2012; the National Arbitration Forum received payment on September 26, 2012.
On October 5, 2012, GODADDY.COM, LLC confirmed by e-mail message ad-dressed to the National Arbitration Forum that the <robeksfranchise.net> domain name is registered with GODADDY.COM, LLC and that Respondent is the cur-rent 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 October 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 25, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all en-tities and persons listed on Respondent’s registration as technical, administra-tive, and billing contacts, and to postmaster@robeksfranchise.net. Also on October 5, 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 November 5, 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 Not-ices, 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
Complainant uses its ROBEKS mark to market its international restaurant chain and has done so since 1996.
Complainant offers franchises through its subsidiary and franchise website located at <robeksfranchise.com>.
Complainant holds registrations, on file with the United States Patent and Trademark Office ("USPTO") for its ROBEKS service mark, including Reg. No. 2,805,045, registered Jan. 13, 2004.
The <robeksfranchise.net> domain name was registered on July 7, 2011.
Respondent’s <robeksfranchise.net> domain name is confusingly similar to Com-plainant’s ROBEKS mark.
Respondent has not been commonly known by the disputed domain name, and is not licensed or otherwise authorized to use the ROBEKS mark.
Respondent is using the disputed domain name to resolve to a website purport-ing to offer information regarding ROBEKS franchising services, but is in fact attempting to solicit personal contact information from potential franchisees while also offering a “Franchise Tool Kit.”
Respondent’s attempts to deceive consumers by attempting to pass itself off as Complainant is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the contested domain name.
Respondent does not have any rights to or legitimate interests in the disputed domain name.
Respondent has registered and is using the disputed domain name in bad faith.
Respondent is a serial cybersquatter that has been ordered to transfer other trademark infringing domain names to the respective clients through prior UDRP proceedings.
Respondent’s prior UDRP disputes indicate a pattern of bad faith registration and use of domain names.
Respondent’s use of the disputed domain name to purportedly give information on becoming a franchisee of Complainant indicates bad faith in the registration and use of the domain name.
Respondent uses the disputed domain name to attract Internet users to Re-spondent’s website, for its commercial gain, by creating a likelihood of confusion with Complainant’s ROBEKS mark.
Respondent’s attempts to pass itself off as Complainant by means of its employ-ment of the contested domain name are also evidence of bad faith in the regis-tration and use of the domain name.
B. Respondent
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."
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 can-celled 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 or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal 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 reason-able 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.”
Complainant has rights in its ROBEKS service mark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with the a national trademark authority, the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Turning to the central question arising under Policy ¶ 4(a)(i), we conclude from our review of the record that Respondent’s <robeksfranchise.net> domain name is confusingly similar to Complainant’s ROBEKS mark. The domain name con-tains the entire mark, merely adding the generic and descriptive term “franchise,” which describes an aspect of complainant’s business, and the generic top level domain (“gTLD”) “.net.” These alterations of the mark, made in forming the do-main name, do not save the domain name from a finding of confusing similarity under the standards of the Policy. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respondent’s domain name (<amextravel.com>) confusingly similar to a UDRP 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 Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (con-cluding that the affixation of a gTLD to the mark of another in creating a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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.
Complainant has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine 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 Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by the disputed domain name, and that Respondent is not licensed or otherwise authorized to use the ROBEKS service mark. Moreover, the pertinent WHOIS information identifies the regis-trant of the disputed domain name only as “Paydues Inc.,” which does not re-semble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have demonstrat-ed that it has rights to or legitimate interests in the domain name within the con-templation of Policy ¶ 4(c)(ii). See, for example, Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the relevant WHOIS in-formation, suggesting that that respondent was commonly known by the disputed domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is using the disputed domain name to resolve to a website purporting to offer information regarding ROBEKS franchising services while in fact attempting to solicit personal contact information from potential franchisees of Complainant via the offering of a “Franchise Tool Kit.” Complainant further asserts, again without objection from Respondent, that Respondent’s attempts thus to deceive consumers, presumably for its financial gain, is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncom-mercial or fair use of the domain name under Policy ¶ 4(c)(iii). We agree. See, on the point, 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 Complainant has satisfied Policy ¶ 4(a)(ii).
We are satisfied from the evidence that Respondent is a serial cyber-squatter which has on multiple occasions been ordered to transfer domain names to various UDRP complainants. See Buffalo Wings & Rings v. Paydues Inc., D2012-14462 (WIPO Sept. 3, 2012); see also Radiator Express Warehouse v. Paydues Inc., D2012-1252 (WIPO Aug. 13, 2012); further see World Travel Holding, Inc. v. Paydues, Inc., D2012-1128 (WIPO July 27, 2012). This record of misconduct shows a pattern of bad faith in the registration and use of domain names which, under Policy ¶ 4(b)(ii), stands as evidence of bad faith registration and use of the instant domain name. See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (determining under Policy ¶ 4(b)(ii) that a respondent’s multiple prior UDRP rulings were evidence of bad faith registration and use of the domain name there under consideration).
We are further persuaded from the evidence that Respondent is using the dis-puted domain name to attract Internet users to Respondent’s website, for its commercial gain, by creating a likelihood of confusion among such users with regard to the possibility of Complainant’s association with the domain name or endorsement of Respondent’s website. This is evidence of Respondent’s bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iv). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent used a dis-puted domain name to sell services that targeted a UDRP complainant’s market).
Finally, we are convinced that Respondent’s attempt to employ the contested do-main name to pass itself off as Complainant is also evidence of bad faith regis-tration and use of the domain name. See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that a respondent's use of the domain name <monsantos.com> to misrepresent itself in the Internet market-place as a UDRP complainant and to provide misleading information to the public supported a finding of bad faith).
The Panel therefore finds that Complainant has met its obligations of proof under 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 <robeksfranchise.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 16, 2012
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