Red Robin International, Inc. v. Milan Kovac
Claim Number: FA1107001398705
Complainant is Red Robin International, Inc. (“Complainant”), represented by Jared Barrett of Seed Intellectual Property Law Group PLLC, Washington, USA. Respondent is Milan Kovac (“Respondent”), Slovakia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tellredrobbin.com>, registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a hebeidomains.com.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 14, 2011; the National Arbitration Forum received payment on July 15, 2011. The Complaint was received in both Slovak and English.
On July 15, 2011, Hebei Guoji Maoyi (Shanghai) Ltd d/b/a hebeidomains.com confirmed by e-mail to the National Arbitration Forum that the <tellredrobbin.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a hebeidomains.com and that Respondent is the current registrant of the names. Hebei Guoji Maoyi (Shanghai) Ltd d/b/a hebeidomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) Ltd d/b/a hebeidomains.com 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 July 25, 2011, the Forum served the Slovak language Complaint and all Annexes, including a Slovak language Written Notice of the Complaint, setting a deadline of August 15, 2011 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@tellredrobbin.com. Also on July 25, 2011, the Slovak language Written Notice of the Complaint, notifying Respondent of the email 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 August 18, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Slovak language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <tellredrobbin.com> domain name is confusingly similar to Complainant’s RED ROBIN mark.
2. Respondent does not have any rights or legitimate interests in the <tellredrobbin.com> domain name.
3. Respondent registered and used the <tellredrobbin.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Red Robin International, Inc., owner of the RED ROBIN mark, uses the mark for the promotion of its restaurants and related services. Complainant holds a number of trademark registrations for its RED ROBIN mark with the United States Patent and Trademark Office (“USPTO”), first registered in 1980 (e.g., Reg. No. 1,133,872 registered April 22, 1980).
Respondent, Milan Kovac, registered the <tellredrobbin.com> domain name on September 6, 2009. The disputed domain name resolves to a website which contains a misleading survey which attempts to gather Internet users’ personal information.
Respondent was a party to at least two prior UDRP proceedings which resulted in transfers of the disputed domain names from Respondent to the respective complainants in those cases. See United Servs. Auto. Ass’n. v. Milan Kovac, FA 1388167 (Nat. Arb. Forum June 29, 2010); State Farm Auto. Ins. Co. v. Milan Kovac, FA 1345382 (Nat. Arb. Forum Nov. 11, 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."
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.”).
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.
It is well established that rights in a mark can be established by registering with a trademark authority. See Metropolitan Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”) It is not necessary for Complainant to hold a trademark registration in Slovakia, the country of Respondent, in order to demonstrate rights in the mark. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). The Panel finds that Complainant has established rights in the RED ROBIN mark, under Policy ¶ 4(a)(i), through its numerous trademark registrations with the USPTO (e.g., Reg. No. 1,133,872 registered April 22, 1980).
Complainant asserts that Respondent’s <tellredrobbin.com> domain name is confusingly similar to Complainant’s RED ROBIN mark. Respondent’s disputed domain name incorporates the entire RED ROBIN mark and changes it by deleting the space between the words of the mark and by adding a generic top-level domain (“gTLD”) “.com.” The Panel finds that deleting spaces and adding a gTLD do not properly distinguish the disputed domain name from Complainant’s mark. See Bond & Co. Jewelers, Inc. v. Texas Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). The disputed domain name differs by the addition of a single letter “b,” which the Panel finds insufficient to avoid a finding of confusing similarity. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). Finally, the disputed domain name adds the word “tell,” which references Complainant’s official customer satisfaction website at <tellredrobin.com>. The addition of a generic word, particularly one directly relevant to Complainant’s business purposes does not distinguish the disputed domain name from Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Therefore, the Panel concludes that Respondent’s <tellredrobbin.com> domain name is confusingly similar to Complainant’s RED ROBIN mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant claims that Respondent has no rights or legitimate interests in the disputed domain name. In F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007), the panel stated, “Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.” The Panel finds that Complainant has made a prima facie showing. Respondent never submitted a response to the Complaint, a factor that indicates Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii). See America Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). The Panel still chooses to examine the evidence to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the <tellredrobbin.com> domain name. Complainant states that Respondent has not obtained any trademark or service mark registrations for any mark reflected in the disputed domain name and, moreover, that Complainant has not authorized or licensed Respondent to use its RED ROBIN mark in any domain name. The WHOIS information identifies the domain name registrant as “Milan Kovac,” which is not similar to the disputed domain name. The Panel concludes that Respondent is not commonly known by the <tellredrobbin.com> domain name, according to Policy ¶ 4(c)(ii), as no evidence presented indicates otherwise. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant asserts that Respondent’s disputed domain name resolves to a website with a deceptive survey purportedly sponsored by Complainant in an attempt to gather Internet users’ personal information. Complainant includes a testimonial in Annex 5 of a customer complaint indicating that Respondent’s <tellredrobbin.com> domain name is being used to convince users into divulging cell phone account information and subsequently making unauthorized charges to the accounts. The Panel concludes that Respondent’s disputed domain name is being used as part of an illegal phishing operation in an attempt to garner users’ personal information and financially benefit Respondent, which is not 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). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant argues that Respondent has engaged in a pattern of bad faith registration, having at least two prior UDRP proceedings that resulted in findings of bad faith and transfer of the disputed domain names. See United Servs. Auto. Ass’n. v. Milan Kovac, FA 1388167 (Nat. Arb. Forum June 29, 2010); see also State Farm Auto. Ins. Co. v. Milan Kovac, FA 1345382 (Nat. Arb. Forum November 11, 2010). The Panel concludes that Respondent’s apparent pattern of bad faith registration suggests that Respondent registered the <tellredrobbin.com> domain name in bad faith pursuant to Policy ¶ 4(b)(ii). 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); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks).
The Panel infers that Respondent profits from its registration and use of the disputed domain name through the collection of Internet users’ personal information. Given the confusingly similar domain name and misleading survey, Internet users may be confused as to Complainant’s sponsorship of the disputed domain name and website content. The Panel concludes that Respondent’s attempt to commercially gain from this confusion is evidence of bad faith use and registration under Policy ¶ 4(b)(iv). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion."); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Complainant claims that Respondent registered and is using the <tellredrobbin.com> domain name as part of a phishing operation intended to convince Internet users to divulge personal information, including cell phone account information. The Panel finds that conducting such a phishing scheme is additional evidence of bad faith under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tellredrobbin.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: August 26, 2011
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