Luby's Fuddruckers Restaurants, LLC v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1307001508201
Complainant is Luby's Fuddruckers Restaurants, LLC (“Complainant”), represented by Michael Racusin, Texas, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fuddruckkers.com>, registered with INTERNET.BS CORP.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 3, 2013; the National Arbitration Forum received payment on August 3, 2013.
On August 5, 2013, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <fuddruckkers.com> domain name is registered with INTERNET.BS CORP. and that Respondent is the current registrant of the name. INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS CORP. 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 August 6, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 26, 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@fuddruckkers.com. Also on August 6, 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 September 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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 makes the following contentions:
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.”).
Complainant alleges that it has interests in the FUDDRUCKERS mark through its registration with the USPTO (Reg. No. 1,298,164, registered September 25, 1984). Previous panels have held that a complainant’s registration of a mark with the USPTO sufficiently establishes the complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See, e.g., Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Previous panels have also held that a complainant need not register its mark in the respondent’s country of residency to establish rights in the mark in accordance with the Policy. See, e.g., Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, because Complainant has submitted evidence that it has registered its FUDDRUCKERS mark with the USPTO, the Panel holds that Complainant has sufficiently established its rights in the FUDDRUCKERS mark under Policy ¶ 4(a)(i), despite the fact that Respondent resides in Panama.
Complainant next alleges that Respondent’s <fuddruckkers.com> domain name is confusingly similar to its FUDDRUCKERS mark under Policy ¶ 4(a)(i), because the domain name differs from the mark by a single character: the addition of the letter “k.” The Panel notes that the disputed domain name also adds the generic top-level domain (“gTLD”) “.com” to the mark. However, previous panels have held that such an addition of a gTLD is irrelevant for the purposes of a confusing similarity analysis. See, e.g., Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). As to the domain name’s addition of a single letter “k,” previous panels have held that similar alterations are insufficient to distinguish a domain name from a mark. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding the respondent’s <microssoft.com> domain name to be confusingly similar to the complainant’s MICROSOFT mark because they differ by only one letter, and “such a small alteration is insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)”). Therefore, the Panel determines that the <fuddruckkers.com> domain name’s addition of the letter “k” is not sufficient to distinguish it from Complainant’s FUDDRUCKERS mark, and accordingly finds that the domain name is confusingly similar to the mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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 suggests that Respondent is not commonly known by the <fuddruckkers.com> domain name pursuant to Policy ¶ 4(c)(ii) and that Complainant has not authorized Respondent to use its FUDDRUCKERS mark in a domain name. The Panel also notes that the WHOIS information identifies the registrant of the disputed domain name as “Fundacion Private Whois / Domain Administrator,” which tends to show Respondent is known by that name and not “Fuddruckkers.” Previous panels have found that a respondent is not commonly known by a disputed domain name where there is no evidence in the record, including the WHOIS information, to suggest that the respondent is commonly known by the domain name and the complainant has not authorized the respondent to use its mark. See, e.g., 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, the Panel determines that there is no evidence in the record suggesting that Respondent is commonly known as “Fuddruckkers” and Complainant has not authorized Respondent to use its FUDDRUCKERS mark, the Panel accordingly holds that Respondent is not commonly known as <fuddruckkers.com> under Policy ¶ 4(c)(ii).
Complainant next alleges that Respondent’s use of the <fuddruckkers.com> domain name is not protected as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant alleges that Respondent is using the domain name with a general intent to divert internet users seeking the goods and services provided under Complainant’s well-known FUDDRUCKERS mark, since the domain name differs from the mark by a single character. In Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001), the panel held that the respondent’s use of a confusingly similar domain name tended to show that the respondent lacked rights or legitimate interests in the domain name. The Panel agrees with Complainant that the <fuddruckkers.com> domain name is confusingly similar to Complainant’s FUDDRUCKERS mark, it holds that this tends to show Respondent lacked legitimate rights in the disputed domain name. The Panel also notes that the website resolving from the <fuddruckkers.com> domain name displays hyperlinks promoting goods and services unrelated to Complainant’s hamburger restaurant goods and services, including hyperlinks entitled “GET IN SHAPE FOR WOMEN,” “VERIZON OFFICIAL SITE,” and “JOB OPENINGS,” among others. Previous panels have held that a respondent’s use of a disputed domain name to display hyperlinks unrelated to the complainant’s business tends to show that the respondent lacks protected rights in the domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii). See, e.g., 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). Therefore, the Panel determines that Respondent is using the <fuddruckkers.com> domain name to promote hyperlinks to third parties unrelated to Complainant and holds that Respondent lacks protected rights in the domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Complainant has proven this element.
Complainant suggests that Respondent has demonstrated bad faith under Policy ¶ 4(b)(iv), because the <fuddruckkers.com> domain name is likely to cause confusion to Internet users seeking the goods and services provided under Complainant’s well-known FUDDRUCKERS mark. Complainant also suggests that Respondent is presumably achieving a commercial gain from its registration and use of the disputed domain name in the form of click-through fees. The Panel notes that the website resolving from the <fuddruckkers.com> domain name displays hyperlinks to third-party websites promoting goods and services unrelated to Complainant’s hamburger restaurant goods and services, including hyperlinks entitled “GET IN SHAPE FOR WOMEN,” “VERIZON OFFICIAL SITE,” and “JOB OPENINGS,” among others. Previous panels have held that a respondent’s use of a confusingly similar domain name to display hyperlinks unrelated to the complainant is evidence of bad faith under Policy ¶ 4(b)(iv). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Here, as in Williams-Sonoma, Inc., supra, Complainant has submitted evidence that Respondent is using a confusingly similar domain name to display links to various third-party websites. Accordingly, the Panel infers that Respondent is engaging in this behavior for its own commercial benefit and thus demonstrating bad faith registration and use of the <fuddruckkers.com> domain name pursuant to Policy ¶ 4(b)(iv).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <fuddruckkers.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: September 5, 2013
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