Sizzler USA Franchise, Inc., Sizzler International Marks, LLC and Sizzler Restaurants Group Pty Ltd. v. 88DB Hong Kong Limited / Patrick Ng
Claim Number: FA1301001479053
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 88DB Hong Kong Limited / Patrick Ng (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bishtsizzlercaterers.com>, registered with NAME.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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 7, 2013; the National Arbitration Forum received payment on January 9, 2013.
On January 8, 2013, NAME.COM LLC confirmed by e-mail to the National Arbitration Forum that the <bishtsizzlercaterers.com> domain name is registered with NAME.COM LLC and that Respondent is the current registrant of the name. NAME.COM LLC has verified that Respondent is bound by the NAME.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 January 15, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 4, 2013 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@bishtsizzlercaterers.com. Also on January 15, 2013, 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 February 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.
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. Panel has issued its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and rules and principles of law deemed applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in SIZZLER and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. The trademark SIZZLER has been used in connection with restaurant services for over fifty years.
2. Sizzler USA Franchise, Inc. is a corporation organized and existing under the laws of Delaware.
3. Sizzler International Marks, LLC is a limited liability company organized and existing under the laws of Delaware.
4. Sizzler Restaurants Group Pty Ltd is a limited proprietary company organized and existing under the laws of Australia.
5. Sizzler International Marks, LLC and Sizzler Restaurants Group Pty Ltd are sister companies owned by parent Collins Foods International.
6. Sizzler USA Franchise, Inc. was once a sister company of Sizzler International Marks, LLC and Sizzler Restaurants Group Pty Ltd, but is now owned by Sizzler USA Acquisition, Inc., which is a separate company from Collins Foods International.
7. The international SIZZLER trademark portfolio is held between Sizzler International Marks, LLC, Sizzler Restaurants Group Pty Ltd and Sizzler USA Franchise, Inc. which cooperate to protect the trademark.
8. The disputed domain name was registered on October 23, 2012.
9. The domain name is not in use.
10. There is no commercial agreement between Respondent and any of the complainants and none of the complainants has authorized Respondent to use the SIZZLER trademark or to register any domain name incorporating the trademark.
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."
Preliminary Issue: Multiple Complainants
In these proceedings there are multiple Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “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 Vancouver Org. Comm. for the 2010 Olympic & Paralympic Games & Int’l Olympic Comm. v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
Panel is satisfied that the three named complainants, Sizzler USA Franchise, Inc., Sizzler International Marks, LLC and Sizzler Restaurants Group Pty Ltd. are part of an international group of companies which owns and controls the SIZZLER trademark. It is said that each named Complainant has sufficient interest in the SIZZLER mark to object to the disputed domain name under the Policy in its own right. Panel accepts that is most likely correct and so finds that the named Complainants have a sufficient connection with one another for the purposes of Rule 1(e) and can each claim to have rights in the domain name. Panel therefore treats the three named complainants to these proceedings as a single entity and in this decision will refer to them collectively as the “Complainant.”
Primary Issues
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Complainant provides evidence of its United States Patent and Trademark Office Registration No. 882,633 in the name of Sizzler USA Franchise, Inc., filed December 16, 1969 for the word mark SIZZLER and so Panel is satisfied that it has trademark rights (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) holding that “Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”; see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
Complainant submits that whilst the disputed domain name adds the terms “bisht” and “caterers” to its SIZZLER mark, those additions are insufficient to distinguish the disputed domain from the trademark so as to avoid confusion. Complainant submits that the word “caterers” is non-distinctive since it merely relates to the services provided under the trademark. Further, Complainant submits that “Bisht” is a surname and of no distinguishing value.
Panel is satisfied that the disputed domain name is confusingly similar to Complainant’s trademark. The non-distinctive elements – namely, the gTLD, “.com” and the word “caterers” can be largely disregarded in making the comparison since neither is added matter which distinguishes the domain name from the trademark in any significant way so as to avoid confusion (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”).
What remains is the word, “bisht”, which seems (from evidence which follows) to be a family name, but is also the name for the outercoat traditionally worn by Arabian men. Either sense of the word - be it surnominal or a common noun - is arbitrary in connection with restaurant services and is capable of some distinctive function. Nevertheless, taken as a whole and further accentuated by inclusion of the word “caterers”, the trademark stands out as the prominently distinctive and memorable part of the whole expression “bishtsizzlercaterers”, which brings to mind the trademark, with the result that confusion is more likely than not.
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Before moving on, Panel finds this to be a convenient place to add some additional observations about the nature of the trademark SIZZLER for reasons which later emerge.
Panel notes Complainant’s assertion that the trademark is “certainly not generic or descriptive” and pauses to question that statement for the reason that the words “sizzler” has a clear dictionary meaning. According to the Merriam-Webster Dictionary, for example, “sizzler” is defined as “one that sizzles; a scorcher” and the example of use given there is “it looks like tomorrow's going to be another sizzler.” (see, http://www.merriam-webster.com/dictionary/sizzler). References to foodstuffs such as meat which, whilst cooking, sizzle, abound and that usage is reflected by Complaint’s own website which gives this account of the genesis of the business:
“In 1957 young restaurateurs in California, Del & Helen Johnson decided to try an idea for a new restaurant which they had read about in the Wall Street Journal – a ‘self service budget steakhouse’, so the first Sizzler Restaurant opened on January 27, 1958”.
Another source easily accessed by Panel paints the business as being “founded in 1958 as Del's Sizzler Family Steak House by Del and Helen Johnson in Culver City, California” and credits that information to the Complainant’s website as it stood some time ago.
All that need be noted at this point is that in spite of Complainant’s registered trademark rights and the finding made on confusing similarity, the trademark carries with it a level of descriptiveness when applied to the cooking process of certain foodstuffs.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000.
The publicly available WHOIS information identifies Respondent as “88DB Hong Kong Limited / Patrick Ng” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.
Complainant makes little concentrated effort to show if and how the domain name has been used. The Amended Complaint states at one point that “the restaurant services offered by Complainant under its SIZZLER trademark are highly related to the catering services offered by Respondent in connection with its domain name”. There are also other scattered statements which further suggest that the domain name is in use. Nevertheless, none of the exhibits to the Amended Complainant show any example of use of the disputed domain name or of a website corresponding to it.
On the other hand, Panel notes that Exhibit D to the original Complaint is a screenshot from a catering service by the name of “Bisht Sizzlers Caterers.” The Schedule of Exhibits to the original Complaint identified Exhibit D as “Print-out of website located at <www.indiansizzler.com>” which does not help clarify the matter. That exhibit and any reference to it was omitted without explanation from the Amended Complaint. Panel notes here that the Forum’s request for amendment did not touch on this matter or require that amendment.
In these circumstances Panel has itself referred to the web address, www.bishtsizzlercaterers.com, which is simply said to be “under construction”. Since there is no conclusive evidence that a website corresponding with the disputed domain name existed at an earlier time, Panel determines that the domain name has not been used. Nonetheless, Exhibit D to the Complaint as originally filed would suggest use of the trading name “Bisht Sizzlers Caterers” since the webpage said to be extracted from www.indiansizzler.com promotes a catering business in Delhi by that name owned it would seem by a Mr Pradeep Bisht. When Panel went to www.indiansizzler.com it did not display the page originally shown at Exhibit D. Instead, Panel found a directory to Indian restaurants. When Panel made a “Google” search of the name “Bisht Sizzlers Caterers” a number of hits were immediately relevant and led to food and dining directories showing information about a Delhi catering business by that name which from all the available indicators seemed to be one and the same as the business identified by Exhibit D. The street addresses correspond and Mr Bisht’s name appears as a contact point. One reference notably includes the following statement:
“Bisht Sizzlers Caterers was established in the year 2001 in Baba Farid Puri, Delhi. We offer world class catering and cuisine services to all types of family functions and events. We render our catering services for weddings, birthday parties, outdoor caterings, conferences and many more functions.
We provide the menu according to our customer demands and budgets from low to high budget. With our hard work and dedicated services, we help our clients to make their events memorable.”
Details of the range of food and catering services are given as is a list of corporate clients (see, for example, http://in.88db.com/india/Delhi/q-Bisht%20Sizzlers%20Caterers%20Delhi/1/search/).
The Policy provides the opportunity for a respondent to show that before it had notice of the dispute it had used or made 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. Very casual research by Panel suggests the likelihood that a person somehow connected with Respondent had, since 2001, used a name corresponding to the domain name (albeit differing slightly by the addition of the extra “s” in “Sizzlers”) in connection with food and catering services with an accent on kebabs and other char grilled foodstuffs. Whether or not that offering could be described as “bona fide” in light of Complainant’s trademark rights is a question left open, not only by Respondent's failure to submit a response, but also in light of the not insignificant chance that the word “sizzler” in the disputed domain name was chosen without reference to Complainant’s business or trademark.
Absent a Response, Panel must 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. In that respect Panel is entitled to accept all reasonable allegations and inferences from the Complaint as true unless the evidence is 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).
Without submissions from Respondent as to why it might have adopted the domain name but allowing for the chance of use of a name corresponding with the domain name since 2001, Complainant nevertheless remains the owner and senior user of a registered trademark which has been incorporated without authority into the disputed domain name in a way already found to give rise to likely confusion with the trademark and in circumstances indicative of competing use of that domain name. Panel finds that Complainant has established a prima facie case that Respondent lacks rights or a legitimate interest in the domain name. Since that case has not been rebutted in any way by Respondent, Panel finds that Complainant has established the second limb of its case.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith. Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which if established is taken to be evidence of the registration and use of a domain name in bad faith.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Unlike paragraph 4(c) of the Policy, there is no reference here to use of the disputed domain name or of a name corresponding to the domain name. Since there is no evidence of use of the domain name or of a website corresponding with the domain name in either the Complaint as originally filed or as later amended, Panel must continue the paragraph 4(b) analysis on the basis that the domain name has not been used. Accordingly, there is no scope for the application of paragraph 4(b)(iv) of the Policy and there is no evidence whatsoever to support a finding that Respondent registered the disputed domain for the primary purpose of either disrupting Complainant’s business (Policy, paragraph 4(b)(iii)), or preventing Complainant from registering that same name (Policy, paragraph 4(b)(ii)), or for selling it to Complainant or some third party (Policy, paragraph 4(b)(i)).
Nonetheless, that is not dispositive of the matter of bad faith since paragraph 4(b)(i)-(iv) are non limiting and it is open to a complainant to show both registration in bad faith and use in bad faith. In that respect Panel need not reach a finding on whether or not the domain name was registered in bad faith since there is no proof of bad faith use and Panel does not consider that this is an appropriate case to apply the principle of so-called “passive holding” first expounded in Telstra Corp. Ltd. v. Nuclear Marshmallows, Case No. D2000-0003.
For these reasons Panel finds that Complainant has failed to establish the third and final aspect of the Policy.
Having failed to establish one of the three elements required under the ICANN Policy, Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <bishtsizzlercaterers.com> domain name REMAIN with Respondent.
Debrett G. Lyons, Panelist
Dated: February 16, 2013
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