Jet’s America, Inc. v. Ryan G Foo / PPA Media Services
Claim Number: FA1509001638216
Complainant is Jet’s America, Inc. (“Complainant”), represented by Barbara L. Mandell of Fishman Stewart Yamaguchi PLLC, Michigan, USA. Respondent is Ryan G Foo / PPA Media Services (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jetspiza.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 17, 2015; the Forum received payment on September 17, 2015.
On September 21, 2015, Internet.bs Corp. confirmed by e-mail to the Forum that the <jetspiza.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 September 25, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 2015 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@jetspiza.com. Also on September 25, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On October 23, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
a. Complainant is the franchisor of hundreds of pizza stores across the United States and the owner of the JET’S PIZZA marks. Complainant has registered the JET’S PIZZA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,133,757, registered February 3, 1998), which demonstrates Complainant’s rights in the mark. The <jetspiza.com> domain name is confusingly similar to the JET’S PIZZA mark as it merely misspells “pizza” to “piza,” eliminates spacing between words, eliminates the apostrophe in “JET’S,” and finally adds the generic top-level domain (“gTLD”) “.com.”
b. Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent’s disputed domain name redirects Internet users seeking Complainant’s website to the website of Complainant’s competitor, Pizza Hut®.
c. Respondent has registered and is using the disputed domain name in bad faith. First, Respondent has asked for compensation for the domain name that is in excess of the out-of-pocket expenses for its acquisition. Second, Respondent has a history of unlawful acquisition of domain names and adverse UDRP rulings that required the transfer of the disputed domain names to the complainants. Third, Respondent’s use of the disputed domain name constitutes a disruption of Complainant’s business as the disputed domain name resolves to promote the business of Pizza Hut®, a competitor of Complainant. Fourth, Respondent is profiting by redirecting Internet users to confusingly similar domain names of a competitor. Fifth, Respondent is engaging in the tactic of typosquatting by misspelling Complainant’s famous mark. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Jet’s America, Inc. of Sterling Heights, MI, USA. Complaint owns the domestic registration for the mark JET’S PIZZA, as well as related marks constituting the JETS PIZZA family of marks. Complainant has continuously used the marks since at least as early as 1998 in connection with its provision of goods and services in the pizza restaurant business.
Respondent is Ryan G Foo / PPA Media Services of Santiago, Chile. Respondent’s registrar’s address is listed as Nassau, The Bahamas.
The Panel notes that the disputed domain name was registered on or about January 18, 2010.
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 is the franchisor of hundreds of pizza stores across the United States and the owner of the JET’S PIZZA mark. Complainant has registered the JET’S PIZZA mark with the USPTO (e.g., Reg. No. 2,133,757, registered February 3, 1998). Complainant contends that its USPTO registrations demonstrate Complainant’s rights in the mark. The Panel finds that Complainant’s trademark registration with the USPTO suffices to demonstrate Complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant argues that the <jetspiza.com> domain name is confusingly similar to Complainant’s mark as it merely misspells “pizza” to “piza.” Past panels have found confusing similarity between a respondent’s disputed domain name and a complainant’s mark where the domain name differed from the mark by just one letter. See Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar). Prior panels have also found changes such as the elimination of punctuation and spacing, and the addition of the gTLD “.com” to be insufficient in distinguishing a domain name from a mark. See LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The Panel here finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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), 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). The Complainant has met this burden.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant argues that Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. The Panel notes that the WHOIS information merely lists “Ryan G Foo / PPA Media Services” as registrant and that Respondent has failed to submit any evidence for the Panel’s consideration. Due to Respondent’s failure to submit any supporting evidence the Panel finds no basis in the available record to conclude that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant alleges that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). Complainant argues that Respondent’s disputed domain name redirects Internet users seeking Complainant’s website to the website of Complainant’s competitor, Pizza Hut. Previous panels have found that there is not a bona fide offering of goods or services or a legitimate noncommercial or fair use where the respondent uses the disputed domain name to redirect Internet users to a website that competes directly with the complainant. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). The Panel here finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent has asked for compensation for the domain name that is in excess of the out-of-pocket expenses for its acquisition, thereby engaging in conduct proscribed by Policy ¶ 4(b)(i). In support, Complaint provides a screenshot of the webpage that offers the disputed domain name for sale for $4,750.00. Prior panels have found bad faith under Policy ¶ 4(b)(i) where a respondent requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). The Panel here finds that Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(b)(i).
Complainant contends that Respondent has a history of unlawful acquisition of domain names and adverse UDRP rulings that required the transfer of the disputed domain names to the complainants. See The Toronto-Dominion Bank v. Ryan G. Food, PPA Media Services, Jinesh Shah, Whois Privacy Corp., Domain Administrator, Fundacion Private Whois, Domain Admin, Whois Privacy Corp., Claim Number FA1408001576648 (January 12, 2015); see also Legend Pictures, LLC. V. Domain Administrator, Fundacion Private Whois/ Ryan G. Foo, D2014-1114 (WIPO Aug. 26, 2014). Past panels have found a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where a respondent has been party to numerous UDRP proceedings ordering the respondent to transfer the domain name to the complainant. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). The Panel here finds that Respondent has engaged in a pattern of bad faith registration and use per Policy ¶ 4(b)(ii).
Complainant alleges that Respondent’s use of the disputed domain name constitutes a disruption of Complainant’s business as the disputed domain name resolves to promote the business of Pizza Hut, a competitor of Complainant. Previous panels have found bad faith registration and use under Policy ¶ 4(b)(iii) where a respondent uses a disputed domain name to divert Internet traffic to a website that competes directly with the complainant. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel here finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Complainant argues that Respondent is profiting by redirecting Internet users to confusingly similar domain names of a competitor. Specifically, Complainant contends that Respondent receives revenue from advertisers based on visitors to the disputed domain name. Prior panels have found bad faith under Policy ¶ 4(b)(iv) where the respondent uses a disputed domain name to redirect Internet users to a website that offers goods and services similar to those offered by the complainant. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). The Panel here finds that, to the extent Respondent is engaged in such activity, Respondent’s behavior supports a conclusion that Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant asserts that Respondent is engaging in the tactic of typosquatting by misspelling Complainant’s famous mark. Past panels have found evidence of bad faith pursuant to Policy ¶ 4(a)(iii) where a respondent’s disputed domain name was simply a misspelling of a complainant’s mark. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark). The Panel here finds that the facts support a conclusion that Respondent has engaged in typosquatting and therefore bad faith pursuant to Policy ¶ 4(a)(iii). The Panel makes no findings regarding the purported fame of Complainant’s mark.
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <jetspiza.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: November 6, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page