White Castle Management Co. v. Thomas Armes / TJA Holdings
Claim Number: FA1411001591657
Complainant is White Castle Management Co. (“Complainant”), represented by Robert J. Morgan of Porter, Wright, Morris & Arthur LLP, Ohio, USA. Respondent is Thomas Armes / TJA Holdings (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <whitecastle.restaurant>, registered with Godaddy 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 24, 2014; the National Arbitration Forum received payment on November 24, 2014.
On November 24, 2014, Godaddy LLC confirmed by e-mail to the National Arbitration Forum that the <whitecastle.restaurant> domain name is registered with Godaddy LLC and that Respondent is the current registrant of the name. Godaddy LLC has verified that Respondent is bound by the Godaddy 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 November 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 15, 2014 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@whitecastle.restaurant. Also on November 25, 2014, 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 December 23, 2014, 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.
Complainant
Complainant uses the WHITE CASTLE mark to identify its business of selling prepared hamburger sandwiches. The mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 501,821, registered Aug. 24, 1948). The <whitecastle.restaurant> domain name is identical and confusingly similar to the mark because it adds the TLD “.restaurant,” which references the business wherein WHITE CASTLE goods are procured—Complainant’s large chain of WHITE CASTLE restaurants.
Respondent has no rights or legitimate interests in the <whitecastle.restaurant> domain name. Respondent is not commonly known by the <whitecastle.restaurant> domain name, nor is it licensed to use WHITE CASTLE in trade. The <whitecastle.restaurant> domain name is being used to host GoDaddy.com, LLC-backed advertising.
Respondent has registered and is using the <whitecastle.restaurant> domain name in bad faith. Respondent seeks to confuse and misdirect Internet users through a likelihood of confusion. Further, the nature of the domain name suggests that Respondent had actual knowledge of Complainant’s rights prior to registering the domain name.
Respondent
Respondent failed to submit a Response in this proceeding.
For the 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 claims that it uses the WHITE CASTLE mark to identify its business of selling prepared hamburger sandwiches. Complainant claims that the mark has been registered with the USPTO (e.g., Reg. No. 501,821, registered Aug. 24, 1948). The Panel agrees this long-standing USPTO registration is sufficient to establish Policy ¶ 4(a)(i) rights in the mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant argues that the <whitecastle.restaurant> domain name is identical or confusingly similar to the WHITE CASTLE mark because it adds the TLD “.restaurant,” which is related to Complainant’s business—Complainant’s large chain of WHITE CASTLE restaurants. The Panel agrees that Respondent’s domain name falls within the identical/confusingly similar requirement of Policy ¶ 4(a)(i). See, e.g., See DD IP Holder LLC v. Manpreet Badhwar, FA 1562029 (Nat. Arb. Forum July 14, 2014) (“the combination of the “dunkin” element with the ”.menu” gTLD extension adds further to the confusing character of the domain in issue in the present case.”).
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 argues that Respondent is not commonly known by the <whitecastle.restaurant> domain name, nor is it licensed to use the WHITE CASTLE mark in trade. The WHOIS record lists “Thomas Armes” as the registrant of record for the domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii), as there is no evidence on the record to indicate 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).
Complainant claims that the <whitecastle.restaurant> domain name is being used to host GoDaddy.com, LLC-backed advertising. The domain name website contains various offers, including “Burger Menu,” and “Pizza Hut Restaurant.” The Panel agrees that such competing links are neither Policy ¶ 4(c)(i) bona fide offerings, nor Policy ¶ 4(c)(iii) legitimate noncommercial or fair uses. See, e.g., Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant has proven this element.
Complainant argues that Respondent seeks to confuse and misdirect Internet users through a likelihood of confusion. The resolving website features links to related and possibly competing advertisements. In Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006), the panel found such hyperlink advertising to be the type of use through which a party could capitalize (by way of advertising revenue) on an Internet user’s likelihood of confusion. The Panel finds Respondent’s hyperlink advertising is evidence of Policy ¶ 4(b)(iv) bad faith.
Complainant argues that the similar nature of the domain name suggests that Respondent had actual knowledge of Complainant’s rights prior to registering the domain name. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration").
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 <whitecastle.restaurant> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: December 29, 2014
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