IHOP IP, LLC v. Bruce Caley
Claim Number: FA1211001472501
Complainant is IHOP IP, LLC (“Complainant”), represented by Timothy J. Feathers of Stinson Morrison Hecker LLP, Missouri, USA. Respondent is Bruce Caley (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ihopprayer.com> and <ihopquincy.com>, registered with TIERRANET INC. d/b/a DOMAINDISCOVER.
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.
Flip Petillion as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 21, 2012; the National Arbitration Forum received payment on November 21, 2012.
On November 27, 2012, TIERRANET INC. D/B/A DOMAINDISCOVER confirmed by e-mail to the National Arbitration Forum that the <ihopprayer.com> and <ihopquincy.com> domain names are registered with TIERRANET INC. D/B/A DOMAINDISCOVER and that Respondent is the current registrant of the names. TIERRANET INC. D/B/A DOMAINDISCOVER has verified that Respondent is bound by the TIERRANET INC. D/B/A DOMAINDISCOVER 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 November 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 17, 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@ihopprayer.com, postmaster@ihopquincy.com. Also on November 27, 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 December 17, 2012.
A timely Additional Submission was received from Complainant and determined to be complete on December 21, 2012.
Respondent filed an Additional Submission on December 28, 2012, which is after the deadline for submissions. The Panel understands that the end-of-year period may have made it difficult for the Respondent to timely respond and has taken into account Respondent’s untimely, but succinct Additional Submission.
On January 2, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Flip Petillion 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges in its Complaint that:
1. It began using the IHOP mark in connection with restaurant and food-related services at least as early as 1972.
2. It is the holder of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the IHOP mark (e.g. Reg. No. 3,429,406 registered May 20, 2008).
3. Respondent registered the <ihopprayer.com> domain name on April 23, 2011.
4. The <ihopprayer.com> domain name originally resolved to a website which featured click-through advertising for religious and restaurant-related services.
5. Complainant sent a cease and desist letter, requesting transfer of the <ihopprayer.com> domain name, to Respondent on July 6, 2011. After receiving the letter, Respondent redirected the disputed domain name to resolve to <intercessorsforlife.com>, a website used as a static bulletin promoting a prayer group that meets in front of Boston’s Planned Parenthood on Saturdays.
6. Respondent registered the <ihopquincy.com> domain name on July 7, 2011.
7. The <ihopquincy.com> domain name also resolves to <intercessorsforlife.com>.
8. The <ihopprayer.com> and <ihopquincy.com> domain names are confusingly similar to Complainant’s IHOP mark.
9. Respondent is not commonly known by either disputed domain name and has not been authorized by Complainant to use the IHOP mark or any names confusingly similar thereto.
10. Respondent’s use of the phrase “This domain for sale” in the relevant WHOIS contact information constitutes an offer to sell the disputed domains.
11. Respondent had knowledge of Complainant's rights in the IHOP mark upon the registration of each contested domain.
a. Respondent’s actual knowledge of Complainant’s mark dates back to at least Respondent’s registration of the <ihopprayer.com> domain, and is evidenced by Respondent’s inclusion of a link to <ihop.com> on the original <ihopprayer.com> webpage.
b. At a minimum, Complainant’s registrations of the IHOP mark with the USPTO confers constructive knowledge in the mark.
B. Respondent
Respondent alleges in its Response that:
1. Its registration and use of the <ihopprayer.com> and <ihopquincy.com> domain names does not dilute Complainant’s mark, because Complainant has continually allowed other entities to use its IHOP mark.
2. Respondent lives in the city of Quincy, Massachusetts.
3. Respondent has a long history of prayer and the promotion thereof, in addition to his long history of peaceful confrontation of injustice and wrongdoing through comment and criticism.
4. Respondent acknowledges his own mortal imperfection, inviting the Panel’s criticism of Respondent on a personal level.
5. Respondent has operated his <intercessorsforlife.com> domain name since September 28, 2001, and his criticism of “JHOP Boston” (an IHOP-KC sister organization) on the resolving website constitutes a legitimate and fair use of the IHOP mark given the proximity of JHOP’s association to IHOP-KC.
6. Respondent also uses the <intercessorsforlife.com> domain directly, and therefore the <ihopprayer.com> and <ihopquincy.com> domain names indirectly, for the purpose of providing commentary on Complainant’s “unfriendly, legalistic way of dealing with people like [Respondent], etc.”
7. Respondent registered the <ihopprayer.com> and <ihopquincy.com> domain names because of their similarity to the acronym used by IHOP-KC (International House of Prayer based in Kansas City, MO), a prayer and Christian ministry organization.
8. After visiting IHOP-KC in April of 2011, Respondent registered the disputed domain names with the intention of providing “a place for IHOP prayer people to pray in my home town Quincy, etc.”
9. The <ihopkc.org> domain name is also comprised of Complainant’s mark and a geographic term, and since Complainant has not successfully commandeered a third party’s registration of that domain name, Complainant should not be able to invalidate Respondent’s registration of the <ihopquincy.com> domain name either.
10. IHOP-KC, an entity which does not hold a trademark registration for the IHOP mark, does not object to Respondent’s registration of the contested domain names as “they do not seek to control what anyone else does.”
11. Respondent includes a disclaimer on its landing pages to preclude confusion with Complainant.
12. Respondent has never used nor intended to use either disputed domain in connection with any commercial purpose or for the realization of financial gain.
13. Respondent’s original use of the <ihopprayer.com> domain name to resolve to a parked page that was listed as being “for sale” was the result of its registrar’s policy of automatic diversion to such pages upon registration.
14. Respondent has no intention of selling the contested domains, and any “for sale” text in the relevant WHOIS records was put there inadvertently by the registrar.
15. Respondent is “willing to work together for coexistence.”
C. Additional Submissions
Complainant alleges in its Additional Submission that:
1. Respondent’s evidence of alleged third-party use of the IHOP mark is irrelevant, because Complainant is not required to own every domain that includes its mark nor is it required to address all potentially infringing and diluting uses at one time.
2. Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the <ihopprayer.com> and <ihopquincy.com> domain names, and Respondent has not provided any concrete evidence to overcome its burden of proving Complainant wrong in this respect.
3. A number of Respondent’s exhibits, as well as Respondent’s own statements, indicate that Respondent is commonly known by the name “Intercessors for Life.”
4. Respondent did not add a disclaimer to his webpage until after receiving the Complaint.
5. Respondent’s disclaimer does nothing to overcome the initial interest confusion created by Respondent’s use of domain names which are confusingly similar to Complainant’s IHOP mark.
6. Respondent is responsible for the WHOIS information and content displayed on domains registered to him, and could have used a new account to register the <ihopprayer.com> and <ihopquincy.com> domain names with accurate registration information, rather than listing “This domain is for sale” as the registrant name.
In its untimely Additional Submission, Respondent alleges that:
1. Complainant admits that International House of Prayer does have the right to use the IHOP sign together with geographic and other characters.
2. Respondent has a legitimate interest in the domain names at issue.
3. Respondent did not register any domain names for retaliation.
4. Respondent’s addition of a disclaimer is out of good will towards anyone who might be worried that someone might be confused.
Complainant is the holder of trademark registrations with the USPTO for the IHOP mark (e.g. Reg. No. 3,429,406 registered May 20, 2008), which it has used in connection with restaurant services since 1972. The disputed domain name <ihopprayer.com> was created on April 23, 2011 and is registered by Respondent. Prior to July 6, 2011, the disputed domain name <ihopprayer.com> was used for a parking page featuring sponsored links. On July 6, 2011, Complainant sent a cease and desist letter to Respondent, requesting the transfer of the disputed domain name <ihopprayer.com>. On July 7, 2011, Respondent replied that he did not consider Complainant to have a legitimate case. Respondent subsequently redirected the disputed domain name <ihopprayer.com> to a webpage at <intercessorsforlife.com>. Also on July 7, 2011, the disputed domain name <ihopquincy.com> was created. This domain name also refers to a webpage at <intercessorsforlife.com>. Respondent is the current registrant of the <ihopquincy.com> domain name. Respondent used to mention in the WHOIS records of both disputed domain names that the domain names were for sale.
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.
The Panel notes that previous panels have agreed that registration of a mark with a federal trademark authority is sufficient to establish rights in the mark for the purposes of Policy ¶ 4(a)(i). See Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that the Complainant’s federal trademark registration established its rights in the mark under Policy ¶ 4(a)(i)). Complainant shows that it is the holder of registrations with the USPTO for the IHOP mark (e.g. Reg. No. 1,388,339 registered April 1, 1986). The Panel finds that these registrations confer rights in the mark to Complainant pursuant to Policy ¶ 4(a)(i). See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant claims that the <ihopprayer.com> and <ihopquincy.com> domain names are confusingly similar to Complainant’s IHOP mark within the meaning of Policy ¶ 4(a)(i). The Panel notes that each domain contains Complainant’s IHOP mark, while also adding either the term “prayer” or “quincy” and the generic top-level domain (“gTLD”) “.com.” Complainant posits that Respondent’s addition of the term “prayer” suggests that Complainant’s restaurant services are affiliated with a particular religion, and that while others in the industry have promoted themselves as Christian companies, Complainant has maintained a religion-neutral approach. Complainant asserts that the term “quincy” refers to Quincy, Massachusetts. The Panel finds that neither the addition of the generic term “prayer” nor the addition of the geographic term “quincy” is sufficient to alleviate the likelihood of confusion Respondent has created in incorporating Complainant’s IHOP mark in the contested domain names. See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is confusingly similar to the Complainant's trade mark ‘AXA’” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”). Moreover, the Panel finds that the affixation of the “.com” gTLD does not adequately distinguish the <ihopprayer.com> and <ihopquincy.com> domain names from Complainant’s mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). In view of the above, the Panel finds that the <ihopprayer.com> and <ihopquincy.com> domain names are confusingly similar to Complainant’s IHOP mark within the meaning of Policy ¶ 4(a)(i).
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.”).
Complainant alleges that Respondent is not commonly known by either the <ihopprayer.com> or the <ihopquincy.com> domain name, and has not been authorized by Complainant to use the IHOP mark or any names confusingly similar thereto. Complainant also notes that the WHOIS information, along with Respondent’s signed response to Complainant’s cease and desist letter, identifies the registrant of the domains as “Bruce Caley,” and that the WHOIS records used to refer to “This domain is for sale” as the listed registrant. In its Additional Submission, Complainant contends that a number of Respondent’s exhibits, namely Exhibits C-H, as well as Respondent’s own statements, indicate that Respondent is commonly known by the name “Intercessors for Life.” In light of the evidence in the record, the Panel finds that Respondent has not shown that it is in fact commonly known by either domain name within the meaning of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant also alleges that neither contested domain name is being used in accordance with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant asserts that, prior to the receipt by Respondent of Complainant’s cease and desist letter, Respondent used the disputed domain name <ihopprayer.com> as a parking page containing sponsored links. Following receipt of the cease and desist letter, Respondent registered the disputed domain name <ihopquincy.com>, and at the time of the Complaint, each domain redirected visitors to <intercessorsforlife.com>, a website which is being used as a static bulletin promoting a prayer group that meets in front of Boston’s Planned Parenthood on Saturdays, and which is unrelated to Complainant’s business. According to the Panel, the Respondent does not provide for a valid or plausible reason to use the IHOP sign to redirect visitors to his <intercessorsforlife.com> domain name. Therefore, the Panel finds that such unrelated use of the <ihopprayer.com> and <ihopquincy.com> domain names does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a noncommercial or fair use under Policy ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”). Respondent’s assertion that the disputed domain names would refer to ‘International House of Prayer’ does not confer any rights to Respondent on the disputed domain names, as Respondent is not known under such name. It should also be noted that a reference to ‘International House of Prayer’ was only added on Respondent’s website linked to <intercessorsforlife.com> after Complainant had notified Respondent about its rights in the IHOP sign. Before notice of Complainant’s rights, no (preparations of) use were made in relation to the disputed domain names.
Furthermore, Complainant contends that Respondent’s use of the phrase “This domain for sale” in the relevant WHOIS contact information of both disputed domain names constitutes an offer to sell the disputed domain names, and that such an offer provides further evidence that Respondent is without rights or legitimate interests in the <ihopprayer.com> and <ihopquincy.com> domain names. The Panel finds that this indeed constitutes an offer to sell the domain names to the public. The Panel finds that such offer without any use, or demonstrable 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 before any notice of the dispute demonstrates a lack of rights or legitimate interests in the domain names pursuant to Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
Complainant contends that Respondent’s use of the phrase “This domain for sale” in the relevant WHOIS contact information constitutes a continuing offer to sell the disputed domains, evidencing bad faith registration and use. The Panel indeed finds that this phrase constitutes evidence of an offer to sell the <ihopprayer.com> and <ihopquincy.com> domain names to the public. According to the Panel such general offer demonstrates the registration and use of the domains in bad faith pursuant to Policy ¶ 4(b)(i) on the part of Respondent. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). The Panel finds that such is the case where a Respondent had knowledge of Complainant’s rights in the disputed domain name or a name confusingly similar to the domain name and where Respondent fails to show rights or legitimate interests in the disputed domain name.
In the present case, Complainant argues that Respondent had knowledge of Complainant's rights in the IHOP mark upon the registration of each contested domain. Complainant asserts that Respondent’s actual knowledge of Complainant’s mark dates back to at least Respondent’s registration of the <ihopprayer.com> domain, and is evidenced by Respondent’s inclusion of a link to <ihop.com>, referring to Complainant, on the original <ihopprayer.com> webpage. According to the Panel, this shows that Respondent actually knew of Complainant’s mark and rights at the time of registration. This certainly is the case for the registration of the <ihopquincy.com> domain name, which was only registered after Respondent received a cease and desist letter from Complainant in relation to its use of the <ihopprayer.com> domain name. Respondent shows no rights or legitimate interests in the disputed domain names. This shows, that upon the balance of probabilities, Respondent’s sole interest in the disputed domain names is to sell the domain name to a right holder for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name.
Complainant further argues that Respondent did not add a disclaimer to his webpage until after receiving the Complaint in this proceeding. Notwithstanding the timing issue, Complainant also argues that Respondent’s disclaimer does nothing to overcome the initial interest confusion created by Respondent’s use of domain names which are confusingly similar to Complainant’s IHOP mark. The Panel finds that Respondent’s new disclaimer does not mitigate bad faith either retroactively, proactively, or concurrently, because the disclaimer does nothing to dispel the initial interest confusion that is inevitable from Respondent’s actions. See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does not mitigate a finding of bad faith under Policy ¶ 4(a)(iii)”).
For these reasons, the Panel finds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ihopprayer.com> and <ihopquincy.com> domain names be TRANSFERRED from Respondent to Complainant.
Flip Petillion, Panelist
Dated: January 10, 2013
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