Sizzler USA Franchise, Inc., Sizzler International Marks, LLC and Sizzler Restaurants Group Pty Ltd. v. Pratik Subedi
Claim Number: FA1210001465332
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 Pratik Subedi (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bombaysizzlers.net>, registered with 1 & 1 INTERNET AG.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 2, 2012; the National Arbitration Forum received payment on October 3, 2012.
On October 5, 2012, 1 & 1 INTERNET AG confirmed by e-mail to the National Arbitration Forum that the <bombaysizzlers.net> domain name is registered with 1 & 1 INTERNET AG and that Respondent is the current registrant of the name. 1 & 1 INTERNET AG has verified that Respondent is bound by the 1 & 1 INTERNET AG 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 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 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@bombaysizzlers.net. Also on October 10, 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 9, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
1. Rule 3(b)(ix)(1):
a. Complainants have trademark rights in the SIZZLER® mark.
A. First, the SIZZLER® trademark is the subject of numerous trademark registrations in the United States and throughout the world. This alone is sufficient to establish Complainants' rights for purposes of an ICANN proceeding. See Choice Hotels International, Inc. v Rudi Seiberlich, FA 1272848 (Nat. Arb. Forum Aug. 17, 2009) (trademark registration adequately demonstrates a Complainants’ rights in a mark under Policy ¶4(a)(i)); Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (same); Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (same).
B. Furthermore, the SIZZLER® mark is famous and well-known throughout the world. It is certainly not generic or descriptive. As such, Complainants' SIZZLER® mark is inherently distinctive and there is no requirement that Complainants prove secondary meaning in the mark. Moreover, as a federally registered trademark, Complainants' SIZZLER® mark is presumed to be inherently distinctive. See, e.g., Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) ("Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning."). Nevertheless, were it required to prove secondary meaning, it would have no difficulty doing so. The foregoing is sufficient to establish Complainants' trademark rights in their SIZZLER® mark and satisfy UDRP Policy ¶4(a)(i).
a. The Domain Name -- "bombaysizzlers.net" -- is confusingly similar to Complainants' SIZZLER® mark.
The Domain Name is virtually identical to Complainants' registered SIZZLER® trademark. In fact, the only difference between Complainants' mark and the Domain Name is the addition of the letter "s" and the word "bombay" and the addition of the generic top level domain name identifier ".net" to the mark. The addition of the letter "s", and the generic terms "bombay" and ".net" are not sufficient to distinguish the Domain Name from Complainants' registered SIZZLER® trademark and to avoid confusion. See Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO D2002-0002 (March 22, 2002) (Toyota-occasions.com is confusingly similar to TOYOTA trademark); Arthur Guinness Son & Co. (Dublin) v. Healy/BOSTH, WIPO D2001-0026 (March 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainants combined with a generic word); Caterpillar Inc. v. Stephen R. Vine, FA 97097 (June 22, 2001) (usedcaterpillarspecialist.com, catauctions.com, usedcat-auctions.com are confusingly similar to CATERPILLAR trademark). Indeed the addition of "bombay" suggests that the owner is merely one of Complainants' franchisees.
2. Rule 3(b)(ix)(2): Respondent has no rights or legitimate interests in or to the Domain Name.
a. Policy (4)(b)(iv): Complainants have substantially and continuously used the name and mark SIZZLER in the United States since at least as early as 1958. The company is one of the world's leading restaurant chains. Complainants own and operate, either directly or through franchise agreements, the famous SIZZLER chain of restaurants. Complainants' business has expanded to nearly 300 restaurants located throughout the world, including over 200 restaurants in the United States and over 80 restaurants internationally. Complainants have been using the SIZZLER mark for over 50 years as a source indicator for the wide variety of foods and services offered at its restaurants.
Complainants have spent substantial sums in advertising and promoting their restaurants under the name and mark SIZZLER, developing enormous goodwill among their customers and a valuable and hard-earned commercial reputation behind the SIZZLER name in the restaurant industry in all demographics of the general public. Accordingly, Complainants have rights in the SIZZLER mark sufficient for the purpose of Policy Section 4(a)(1).
At the time Respondent registered the Disputed Domain Name in August 2012, Complainants had been using the SIZZLER mark continuously and substantially exclusively in the United States for more than fifty (50) years. They have consistently and diligently policed and guarded their name and reputation against unauthorized third-party use.
Additionally, Respondent is not now using, and has never used, the Domain Name or any name corresponding to the Domain Name, in connection with a bona fide offering of goods or services, nor is there any evidence that suggests that Respondent is preparing to do so. To the contrary, the Domain Name features only a "portal" web page, which contains revenue generating links to third party websites. Such use does not constitute a bona fide offering of goods and services under Policy ¶4(c)(i). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (April 10, 2007) (use in connection with "portal" web page "constitutes neither a bona fide offering of goods and services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii)."). Even if it did (which it does not), any such use was commenced long-after Complainants began using and established rights in its SIZZLER® mark.
Internet users searching for authorized information about Complainants' services may believe that Complainants have sponsored the site and may thereby be persuaded to visit Respondent through the website at the Disputed Domain Name. Respondent's registration and use of the Disputed Domain Name is causing injury to Complainants. Respondent is not entitled to use the SIZZLER mark to mislead consumers and direct them to Respondent's website, therefore use of the SIZZLER mark in the Disputed Domain Name is not fair use. See Chinroy Kumar Ghose v. ICDSoft.com and Maria Shiva, WIPO D2003-0248 (May 22, 2003) ("[T]he bad faith lies in the deliberate and misleading use of another person's trademark for the purpose of directing Internet users looking for sites associated with the owner of that trademark, to the [unauthorized registrant's] website."); Winchester Properties LLC v. DefaultData.com, FA 97114 (Nat. Arb. Forum, June 22, 2001) (Respondent's registration of "winchestercounty club.com not fair use).
Moreover, given the existing federal and common law trademark rights in the SIZZLER mark, Respondent has no legitimate interest in the use of the Disputed Domain Name. Respondent is not an entity that is related to or licensed by Complainants, nor is it a franchisee of Complainants. See Parfums Christina Dior v. QTR Corporation, WIPO 2000-0011 (2000) (respondent had no legitimate interest in DIOR domain name, as it was not a licensee or authorized to use DIOR mark). Because of the fame of Complainants' Mark, Respondent uses the fact that an Internet user would expect a domain name containing "SIZZLER", i.e., the Disputed Domain Name, to be owned by or in some way associated with Complainants in order to divert Internet traffic to its competing website.
Finally, Respondent has no connection with Complainants, and is not authorized to use Complainants' trademark as a trade name or domain name. See Caterpillar, Inc. v. Ivenue.com, Inc. FA 97079 (Nat. Arb. Forum, June 6, 2001) (registrant not known by CATERPILLAR name, and therefore, registration of "caterpillarparts.com" is not fair use). Thus, Respondent makes no legitimate or fair use of the Disputed Domain Name.
Moreover, the Disputed Domain Name even sounds like the name of an authorized website promoting Complainant's services. Thus, the Disputed Domain Name is confusingly similar to Complainants' SIZZLER mark.
1. Policy 4(c)(i): Due to Complainants' extensive and worldwide use of its SIZZLER® mark, Respondent must have been aware of Complainants' SIZZLER® mark when it registered the Domain Name.
2. Policy 4(c)(ii): Complainants have never licensed or otherwise authorized Respondent to use the Domain Name or the SIZZLER® mark. In fact, Respondent has no connection with Complainants or Complainants' SIZZLER® mark.
3. Policy 4(c)(iii): Respondent is not making a legitimate noncommercial or fair use of the domain name because the domain name is confusingly similar to Sizzler Restaurants, Complainants' name.
3. Rule 3(b)(ix)(3): Respondent registered and is using the Domain Name in bad faith.
a. Policy 4(b)(iv): As discussed in Paragraph 13(a)(1) above, due to Complainants' extensive and worldwide use of its SIZZLER® mark, Respondent must have been aware of Complainants' SIZZLER® mark when it registered the Domain Name. Therefore Complainants believe that Respondent adopted the Domain Name, which includes Complainants' registered trademark, for the additional purpose of diverting Internet users seeking Complainants to its website. As described above, Respondent is using the domain name with a "portal" web page, which intercepts users seeking Complainants' website. Respondent then earns "click through" fees when users click on links on its portal web page in their continued effort to locate Complainants on the Internet. This conduct, creating and then exploiting Internet users' confusion for its own profit, is evidence of Respondent's use and registration in bad faith. E.g., Tyson Foods, Inc. v. Dezider Banga, FA 1295794 (Nat. Arb. Forum December 23, 2009) ("the registration and use of a domain name confusingly similar to a Complainant's mark to direct Internet traffic to a commercial "links page" in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶4(b)(iv).").
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is not 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.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are three Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) provides that “[a]ny 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.” In this case, it appears the three Complainants collectively have the necessary rights to bring this proceeding. Respondent has not contested Complainant’s assertion to this effect in the complaint.
Complainant claims trademark rights in the SIZZLER mark pursuant to Policy ¶4(a)(i) based on its registrations with the United States Patent & Trademark Office (“USPTO”) as follows:
(Reg. No. 882,633 registered Dec. 16, 1969)
(Reg. No. 888,458 registered March 24, 1970)
(Reg. No. 1,384,530 registered Feb. 25, 1986)
(Reg. No. 1,462,078 registered Oct. 20, 1987)
(Reg. No. 1,795,103 registered Sept. 28, 1993)
Past panels have held evidence of registration with the USPTO is sufficient to establish rights in a given mark pursuant to Policy ¶4(a)(i). 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)); see also 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). This Panel concurs and finds Complainant has adequately established its rights in the SIZZLER mark.
Complainant claims Respondent’s <bombaysizzlers.net> domain name is confusingly similar to Complainant’s SIZZLER mark. The only difference between the <bombaysizzlers.net> domain name and Complainant’s SIZZLER mark is the addition of the letter “s” and the geographical term “bombay.” Complainant also notes the gTLD “.net” was added (which addition must be disregarded for the purposes of this analysis).
This Panel is not willing to conclude the disputed domain name will be confused with Complainant’s mark. The “Bombay” additional term has nothing to do with Complainant’s mark and does not have anything to do with Complainant’s business. It appears before Complainants’ mark in the disputed domain name. While Complainant claims the disputed domain name and its mark are confusingly similar, the Panel is not required to “turn off” its common sense and blindly accept this claim. Based on the evidence submitted, previous UDRP case holdings and the Panel’s common sense, the Panel respectfully disagrees and finds Respondent’s <bombaysizzlers.net> domain name is not confusingly similar to Complainant’s SIZZLER mark pursuant to Policy ¶4(a)(i). This finding is supported by Google Inc. v. Andrey Korotkov, Claim Number: FA1209001463221 (10/31/2012)
The Panel finds Policy ¶4(a)(i) NOT satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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.”).
Complainant claims Respondent is not commonly known by the <bombaysizzlers.net> domain name under Policy ¶4(c)(ii). Complainant never licensed or authorized Respondent to use Complainant’s SIZZLER mark. Complainant further claims Respondent has no connection to Complainant or Complainant’s mark. The Panel notes the WHOIS information for the disputed domain name identifies “Pratik Subedi” as the registrant of the disputed domain name.
It should be noted the disputed domain name now resolves to a web site purportedly for “Bombay Sizzler Pub & Grill” in Texas. However, there is nothing tying Respondent to that business. There is a question in the Panel’s mind as to why the disputed domain name is BombaySizzlers.net and the restaurant’s name is Bombay Sizzler (in the singular). Nevertheless, it should be noted it is not up to the Panel to construct Respondent’s possible arguments for it. If Respondent does not care enough about its domain name to make a response, then Respondent can hardly be heard to complain.
Based on Complainant’s assertions, the Panel finds there is no connection between Respondent and the <bombaysizzlers.net> domain name or Complainant’s SIZZLER mark. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complainant claims Respondent has no rights or interests in the disputed domain name as it does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <bombaysizzlers.net> domain name. Complainant argues Respondent’s disputed domain name resolves to a “portal” website containing revenue generating links to third party websites. This was all true when this proceeding was commenced and that is the operative time for the Panel to examine. Previous panels have found this type of use does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and 4(c)(iii). Some of the links present on Respondent’s website include, “Buy n’ Sell,” “$300 Off Wedding Package,” “Click to Win,” and “Pretty Zina’s Birthday Bash.” Based on the evidence submitted and previous UDRP cases, the Panel finds Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial fair use under Policy ¶4(c)(iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent is using its <bombaysizzlers.net> domain name to divert Internet users seeking Complainant’s products to its own website. Complainant claims Respondent is using the “portal” website to earn “pay-per-click” fees collected when Internet users are redirected to this “portal” website. This claim must be evaluated as of the time this proceeding was commenced. Previous panels have found bad faith when a Respondent is intentionally attracting, for commercial gain, Internet users to its online site, by creating a likelihood of confusion with Complainant’s mark. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶4(b)(iv)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶4(b)(iv)). Based on Complainant’s contentions, the snapshot of the web site previously at this domain name when this proceedings was commenced and previous panel decisions, this Panel finds Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶4(b)(iv).
Complainant claims 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 mark and its trademark registrations with the USPTO. Constructive notice is generally regarded as insufficient to support a finding of bad faith. The Panel is not willing to conclude, based upon the evidence provided, Respondent had Complainant’s mark in mind when the disputed domain name was registered. Nevertheless, Complainant will prevail on this point because Complainant need only prove bad faith registration and use by only one means and not by multiple means.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having not established all three elements required under the ICANN Policy, the Panel concludes relief shall be DENIED.
Accordingly, it is Ordered the <bombaysizzlers.net> domain name REMAIN WITH Respondent.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, November 12, 2012
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