TGI Friday’s of Minnesota, Inc. v. Tulip Company / Tulip Trading Company
Claim Number: FA1608001691369
Complainant is TGI Friday’s of Minnesota, Inc. (“Complainant”), represented by Megan R. Myers of Pirkey Barber PLLC, Texas, United States. Respondent is Tulip Company / Tulip Trading Company (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fridaysrewards.com>, registered with Key-Systems GmbH.
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 August 26, 2016; the Forum received payment on August 26, 2016.
On August 30, 2016, Key-Systems GmbH confirmed by e-mail to the Forum that the <fridaysrewards.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 31, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 2016 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@fridaysrewards.com. Also on August 31, 2016, 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 September 26, 2016, 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
Since at least 1965, Complainant and its licensees and franchisees have been offering restaurant and bar services, along with related goods and services, including a popular rewards program, under the FRIDAYS mark. Complainant has registered the FRIDAYS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,681,669, registered Feb. 3, 2015), which demonstrates Complainant’s rights in its mark. The <fridaysrewards.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the generic term “rewards” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the domain name and is not licensed or otherwise permitted by Complainant to use the FRIDAYS mark. Further, Respondent is not using the domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name for a parking page displaying various links that consumers are likely to associate with Complainant, but that simply redirect to additional advertisements and links that divert traffic to third-party websites not affiliated with Complainant.
Respondent registered and is using the domain name in bad faith. Respondent presumably is paid a fee or commission when Internet users visit Respondent’s website at the disputed domain name, click on the various links likely to be associated with Complainant, and are diverted to third-party websites; therefore, Respondent is engaged in conduct proscribed by Policy ¶ 4(b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is TGI Friday’s of Minnesota, Inc., of Dallas, TX, USA. Complainant is the owner of the domestic registration for the mark FRIDAYS and numerous variations thereon consisting of the family of FRIDAYS marks. Complainant has used its marks continuously since at least as early as 1965 in connection with its provision of restaurant and bar services, food and beverage products and other related goods.
Respondent is Tulip Company / Tulip Trading Company, of Charlestown, Nevis, St. Kitts and Nevis. Respondent’s registrar’s address is listed as St. Ingbert, Germany. The Panel notes that Respondent registered the domain name on or about December 4, 2015.
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(f), 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 (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.”).
Since at least 1965, Complainant and its licensees and franchisees have been offering restaurant and bar services, along with related goods and services, including a popular rewards program, under the FRIDAYS mark. Complainant registered the FRIDAYS mark with the USPTO (Reg. No. 4,681,669, registered Feb. 3, 2015), which Complainant alleges demonstrates its rights in the mark. Past panels have held that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i), with respect to the geographic disparity of the parties. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (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.”). The Panel here finds that Complainant has demonstrated its rights in its mark under Policy ¶ 4(a)(i).
Complainant argues that the <fridaysrewards.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the generic term “rewards” and the gTLD “.com.” Prior panels have agreed that these changes do not serve to adequately distinguish a respondent’s domain from a complainant’s mark pursuant to Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel here finds that Respondent’s domain name is confusingly similar to Complainant’s FRIDAYS mark under 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 (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 maintains that Respondent has no rights or legitimate interests in the domain name. According to Complainant, Respondent is not commonly known by the domain name and is not licensed or otherwise permitted by Complainant to use the FRIDAYS mark. The Panel notes that the WHOIS information merely lists “Tulip Company / Tulip Trading Company” as registrant name/registrant organization and that Respondent has failed to provide any evidence for the Panel’s consideration. As such, the Panel finds no basis in the available record to hold that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent is not using the domain in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, Complainant claims that Respondent uses the domain for a parking page displaying various links that consumers are likely to associate with Complainant, but that simply redirect to additional advertisements and links that divert traffic to third-party websites not affiliated with Complainant. Previous panels have determined that neither a respondent’s use of a domain name to host competing hyperlinks, nor a respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant, constitutes 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). See Microsoft Corp. v. BARUBIN, FA 1174478 (Forum May 6, 2008) (“Respondent maintains a website at <msnmessenger2008.com> which appears to sell Complainant’s products and services and contains links to other third-party websites. Such use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Bank of Am. Fork v. Shen, FA 699645 (Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)). The Panel here finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under 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 name.
The Complainant has proven this element.
Complainant contends that Respondent presumably is paid a fee or commission when Internet users visit Respondent’s website at the disputed domain name, click on the various links likely to be associated with Complainant, and are diverted to third-party websites; therefore, according to Complainant, Respondent is engaged in conduct proscribed by Policy ¶ 4(b)(iv). Past panels have agreed that a respondent’s use of a domain name to host links to products and/or services that are in direct competition with a complainant’s business constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). Panels have also agreed that a respondent’s use of a domain name to direct Internet users to websites unrelated to a complainant is evidence of bad faith registration and use. See Bank of Am. Fork v. Shen, FA 699645 (Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites). The Panel here finds, in light of Complainant’s undisputed assertions, that Respondent registered and is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
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 <fridaysrewards.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 10, 2016
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