American Dairy Queen Corporation v. Danny Le
Claim Number: FA1509001638113
Complainant is American Dairy Queen Corporation (“Complainant”), represented by Ashley Bennett Ewald of GRAY, PLANT, MOOTY, MOOTY & BENNETT, P.A., Minnesota, USA. Respondent is Danny Le (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dairyqueen.restaurant>, registered with united-domains AG.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 16, 2015; the Forum received payment on September 16, 2015.
On September 18, 2015, united-domains AG confirmed by e-mail to the Forum that the <dairyqueen.restaurant> domain name is registered with united-domains AG and that Respondent is the current registrant of the name. united-domains AG has verified that Respondent is bound by the united-domains AG 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 18, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 8, 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@dairyqueen.restaurant. Also on September 18, 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 15, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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
Complainant states that it is an internationally renowned manufacturer, producer, developer, server and franchisor of a variety of food products including dairy desserts, food, and beverages. It first began serving customers in the United States in 1940 and today has more than 6,500 restaurants worldwide. It has registered the DAIRY QUEEN trademark in numerous countries around the world, including Vietnam, with rights dating back to 1966. The mark is famous around the world.
According to Complainant, the disputed domain name is confusingly similar to the DAIRY QUEEN trademark because the domain name contains the entire mark and differs only by the addition of the generic top-level domain (“gTLD”) “.restaurant.” Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor is Respondent a licensee of Complainant or otherwise authorized to use its marks. Further, the disputed domain name resolves to a parked webpage, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Further, Respondent has openly admitted to purchasing the domain with the intent to resell it for an exorbitant price. This, too, is indicative of Respondent’s lack of legitimate rights or interest in the domain. Complainant cites UDRP precedents to support its position.
Complainant states that Respondent sent Complainant two emails dated March 17, 2015 and March 19, 2015, requesting that his contact information be passed to the Chief Marketing Manager or Global Management so that he could “discuss in detail” his “terms and conditions” to transfer the disputed domain name. Respondent then proceeded to engage in a series of correspondence with counsel for Complainant in which he offered to sell the disputed domain name to Complainant for a “bonus” ranging between “100.000-150.000 USD” and, on another occasion, “68,000.00 USD to 80,000.00 USD.” It is clear that Respondent is attempting to sell the domain name, which is evidence of bad faith under Policy ¶ 4(b)(i). Also, Respondent registered the disputed domain name with actual knowledge of Complainant’s trademark rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has registered trademarks for the name DAIRY QUEEN, dating back to 1966. Its marks are famous around the world.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name was registered in 2015.
Respondent wrote to Complainant offering to sell the disputed domain name for $100,000, failing which he would sell it at auction.
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 has registered the DAIRY QUEEN trademark. The disputed domain name contains the entire mark and differs only by the addition of the gTLD “.restaurant.” Prior panels have found that the addition of “.restaurant” to a domain name that contains the entire mark at issue results in a confusing similarity. See White Castle Management Co. v. Thomas Armes / TJA Holdings, FA 1591657 (Nat. Arb. Forum Dec. 29, 2014) (holding that the <whitecastle.restaurant> domain name was confusingly similar to the WHITE CASTLE mark). Further, prior panels have found that the addition of a top-level domain is irrelevant to the analysis of Policy ¶ 4(a)(i), and in the case of new top-level domains, their presence sometimes serves to enhance confusing similarity. See DD IP Holder LLC v. Manpreet Badhwar, FA 1562029 (Nat. Arb. Forum July 14, 2014) (“because there is a reference to food and restaurants inherent in the new gTLD ‘.menu’, 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.”). The Panel concludes that the presence of the “.restaurant” top-level domain extension increases the possibility of consumer confusion and it finds that that the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent is not commonly known as the disputed domain name, nor is Respondent in possession of licensing rights or other authorization that would allow him to use Complainant’s mark in domain names. The Panel notes that “Danny Le” is listed as the registrant of record for the disputed domain name. The Panel also notes that the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). 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).
Further, Respondent’s actual use of the disputed domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed domain name resolves to a parked webpage. Prior panels have established that a respondent is always responsible for the content of a parked webpage. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent.”). In addition, prior panels have found that use of a domain name (containing the entire mark at issue) to redirect Internet users to a generically parked webpage does not consist of a bona fide offering or a legitimate non-commercial or fair use. See Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)).
Respondent has openly admitted to purchasing the domain with the intent to resell it for a price well above out of pocket costs. This, too, is indicative of Respondent’s lack of legitimate rights or interest in the domain. See Sonic USA, Inc. v. Remi Bukin, FA304535 (Nat. Arb. Forum Sep. 10, 2004) (“Indeed, there is precedent to support a finding that, if a domain name is registered with the intent to merely sell the domain name registration to the owner of a trademark or service mark, it may be concluded that the domain name registrant lacks rights and legitimate interests in the domain name”); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003); Kinko’s Inc. v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27, 2000); Am. Int’l Group, Inc. v. Dobson, FA 146568 (Nat. Arb. Forum Apr. 8, 2003)).
Further, where a respondent has registered and used a domain name in bad faith (see the discussion below), that respondent cannot be found to have made a bona fide offering of goods and services, see The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan, D2002 0701 (WIPO, Sept. 6, 2002); see also AltaVista Company v. Saeid Yomtobian, D2000 0937 (WIPO, Oct. 13, 2000).
Thus, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, Respondent has displayed bad faith under Policy ¶ 4(b)(i) by offering to sell the disputed domain name for an amount well above out of pocket costs, arguing that the disputed domain name was of value because it incorporated Complainant’s mark and it was under the gTLD “.restaurant”. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith). See also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"). See also Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Nat. Arb. Forum July 17, 2015) (citing World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dairyqueen.restaurant> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: October 17, 2015
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