Landry's Restaurants, Inc., Landry's
Trademark, Inc. and Rainforest Cafe, Inc. v. Landrys Restaurants Inc.
Claim
Number: FA0506000506524
Complainant’s
are Landry's Restaurants, Inc., Landry's
Trademark, Inc., and Rainforest Cafe, Inc.
(collectively “Complainant”), represented by Sherri L. Eastley, of Wong Cabello, LLP, P.O. Box 685108, Austin, TX
78768-5108. Respondent is Landrys Restaurants Inc.
(“Respondent”) 1510 W. Loop S., Houston, TX 77027.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <joescrabschack.com>, <joescrabshake.com>,
<joescrabshck.com>, <joescrabsack.com>, <rainforestresturant.com>,
<rainforestcaffe.com>, <landryrestaurant.com>, <landrysrestaraunts.com>,
<landrysresturant.com>, <landrysrestraunts.com>, <landrysrestuarant.com>,
<landrysseafoods.com>, <landrysseafoodrestaurants.com>,
and <landreys.com>, registered with Compana, Llc.
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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
29, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 1, 2005.
On
July 1, 2005, Compana, Llc confirmed by e-mail to the National Arbitration
Forum that the domain names <joescrabschack.com>, <joescrabshake.com>,
<joescrabshck.com>, <joescrabsack.com>, <rainforestresturant.com>,
<rainforestcaffe.com>, <landryrestaurant.com>, <landrysrestaraunts.com>,
<landrysresturant.com>, <landrysrestraunts.com>, <landrysrestuarant.com>,
<landrysseafoods.com>, <landrysseafoodrestaurants.com>,
and <landreys.com> are registered with Compana, Llc and that
Respondent is the current registrant of the names. Compana, Llc has verified that Respondent is bound by the Compana,
Llc 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
July 8, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 28, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@joescrabschack.com, postmaster@joescrabshake.com,
postmaster@joescrabshck.com, postmaster@joescrabsack.com,
postmaster@rainforestresturant.com, postmaster@rainforestcaffe.com,
postmaster@landryrestaurant.com, postmaster@landrysrestaraunts.com, postmaster@landrysresturant.com,
postmaster@landrysrestraunts.com, postmaster@landrysrestuarant.com,
postmaster@landrysseafoods.com, postmaster@landrysseafoodrestaurants.com, and
postmaster@landreys.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
August 4, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Sandra
Franklin 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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <joescrabschack.com>,
<joescrabshake.com>, <joescrabshck.com>, <joescrabsack.com>,
<rainforestresturant.com>, <rainforestcaffe.com>, <landryrestaurant.com>,
<landrysrestaraunts.com>, <landrysresturant.com>, <landrysrestraunts.com>,
<landrysrestuarant.com>, <landrysseafoods.com>, <landrysseafoodrestaurants.com>,
and <landreys.com> domain names are confusingly similar to
Complainant’s LANDRY’S, JOE’S CRAB SHACK, and RAINFOREST CAFÉ marks.
2. Respondent does not have any rights or
legitimate interests in the <joescrabschack.com>, <joescrabshake.com>,
<joescrabshck.com>, <joescrabsack.com>, <rainforestresturant.com>,
<rainforestcaffe.com>, <landryrestaurant.com>, <landrysrestaraunts.com>,
<landrysresturant.com>, <landrysrestraunts.com>, <landrysrestuarant.com>,
<landrysseafoods.com>, <landrysseafoodrestaurants.com>,
and <landreys.com> domain names.
3. Respondent registered and used the <joescrabschack.com>,
<joescrabshake.com>, <joescrabshck.com>, <joescrabsack.com>,
<rainforestresturant.com>, <rainforestcaffe.com>, <landryrestaurant.com>,
<landrysrestaraunts.com>, <landrysresturant.com>, <landrysrestraunts.com>,
<landrysrestuarant.com>, <landrysseafoods.com>, <landrysseafoodrestaurants.com>,
and <landreys.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant owns
and operates over 300 restaurants in the United States under three well-known
national chains, Landry’s Seafood Restaurant, Joe’s Crab Shack, and Rainforest
Café. Through each chain of
restaurants, Complainant offers food and dining services as well as tee shirts,
hats, and other related paraphernalia.
Complainant has
registered numerous service marks with the United States Patent and Trademark
Office (“USPTO”), including LANDRY’S (Reg. No. 1,588,264 issued March 20,
1990), JOE’S CRAB SHACK (Reg. No. 1,972,218 issued May 7, 1996), and RAINFOREST
CAFÉ (Reg. No. 2,256,706 issued June 29, 1999).
All of the
disputed domain names have been registered within the last year by Manila
Industries, Inc. Specifically, <joescrabschack.com>
was registered November 30, 2004; <joescrabshake.com> and <joescrabshck.com>
were both registered January 30, 2005; <joescrabsack.com> was
registered March 19, 2005; <rainforestresturant.com> was
registered May 12, 2005; <rainforestcaffe.com> was registered June
3, 2005; <landryrestaurant.com> was registered January 30, 2005; <landrysrestaraunts.com>
was registered April 9, 2005; <landrysresturant.com> and <landrysrestraunts.com>
were both registered February 4, 2005; <landrysrestuarant.com> was
registered January 17, 2005; and the <landrysseafoods.com>, <landrysseafoodrestaurants.com>,
and <landreys.com> domain names were registered February 4,
2005. All of the disputed domain names
resolve to parking pages that feature links to related and competing businesses
as well as to non-related commercial businesses.
After
commencement, Manila Industries, Inc. modified the WHOIS information to reflect
that of Complainant while maintaining overall control of the domain names and
resulting websites. Therefore, it
appears that Complainant and Respondent are the same party; however, Respondent
remains a separate and unique entity.
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.
Complainant has
provided evidence of rights in the LANDRY’S, JOE’S CRAB SHACK, and RAINFOREST
CAFÉ marks through registrations with the USPTO. Evidence of trademark registration establishes a prima facie
case for the Complainant, shifting the burden onto Respondent to rebut such an
assumption. Because Respondent has
failed to set forth evidence suggesting otherwise, Complainant has established
rights in the LANDRY’S, JOE’S CRAB SHACK, and RAINFOREST CAFÉ marks pursuant to
Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption."); see also Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”).
Complainant
argues that Respondent’s <joescrabschack.com>, <joescrabshake.com>, <joescrabshck.com>,
<joescrabsack.com>, <rainforestresturant.com>, <rainforestcaffe.com>,
<landryrestaurant.com>, <landrysrestaraunts.com>, <landrysresturant.com>,
<landrysrestraunts.com>, <landrysrestuarant.com>, <landrysseafoods.com>,
<landrysseafoodrestaurants.com>, and <landreys.com> domain
names are confusingly similar to Complainant’s LANDRY’S, JOE’S CRAB SHACK, and
RAINFOREST CAFÉ marks. The <joescrabschack.com>,
<joescrabshake.com>, <joescrabshck.com>, and <joescrabsack.com>
domain names are all typosquated versions of Complainant’s JOE’S CRAB SHACK
mark. In addition, the <rainforestcaffe.com>
domain name and the <landreys.com> domain name are also
typosquatted versions of Complainant’s RAINFOREST CAFÉ and LANDRY’S marks
respectively. Panels have held that a
simple misspelling of a trademark fails to sufficiently distinguish domain
names from a service mark pursuant to Policy ¶ 4(a)(i). See Guinness
UDV N. Am., Inc. v. Dallas Internet Servs.,
D2001-1055 (WIPO Dec. 12, 2001) (finding the <smirnof.com> domain name
confusingly similar to the complainant’s SMIRNOFF mark because merely removing
the letter “f” from the mark was insignificant); see also Neiman Marcus
Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002)
(finding that the <neimanmacus.com>
domain name was a simple misspelling of the complainant’s NEIMAN MARCUS mark and was a classic example of typosquatting, which was
evidence that the domain name was confusingly similar to the mark).
Furthermore,
Respondent’s <landryrestaurant.com>, <landrysrestaraunts.com>,
<landrysresturant.com>, <landrysrestraunts.com>, <landrysrestuarant.com>,
<landrysseafoods.com>, <landrysseafoodrestaurants.com>
domain names feature Complainant’s entire LANDRY’s mark and adds the generic
terms “restaurant,” or some misspelled version thereof, and/or the generic term
“seafood” both of which are terms that directly relate to Complainant’s area of
business. Such additions of generic
terms fails to properly distinguish the disputed domain names from
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Space
Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000)
(finding confusing similarity where the respondent’s domain name combines the
complainant’s mark with a generic term that has an obvious relationship to the
complainant’s business); see also Marriott Int’l, Inc. v. Café au lait,
FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain
name <marriott-hotel.com> is confusingly similar to the complainant’s
MARRIOTT mark).
Finally, the <rainforestresturant.com>
domain name drops the word “café” from Complainant’s RAINFOREST CAFÉ mark while
adding a misspelled version of the generic term “restaurant.” This distinction fails to distinguish
Respondent’s domain name from Complainant’s RAINFOREST CAFÉ service mark
pursuant to Policy ¶ 4(a)(i). See Christie’s
Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001)
(finding that the domain name
<christiesauction.com> is confusingly similar to the complainant's
mark since it merely adds the word “auction” used in its generic sense); see
also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3,
2000) (finding that four domain names that added the descriptive words
"fashion" or "cosmetics" after the trademark were
confusingly similar to the trademark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent lacks rights and legitimate interest in the disputed
domain names. Complainant’s assertion
creates a prima facie case under Policy ¶ 4(a)(ii) and, thus, shifts the
burden of proof onto Respondent. See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent. Respondent’s failure to respond means that Respondent has
not presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the
respondent has no rights or legitimate interests with respect to the domain,
the burden shifts to the respondent to provide “concrete evidence that it has
rights to or legitimate interests in the domain name at issue”). Because Respondent failed to Respond, the
Panel infers that no rights or legitimate interests exist pursuant to Policy ¶
4(a)(ii). See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) f(inding that, by not submitting a response, the
respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure
to respond can be construed as an admission that they have no legitimate
interest in the domain names).
Respondent is
using the confusingly similar domain names to operate websites that feature
links to websites offering competing products and services as well as links to
various non-competing commercial websites through which Respondent presumably
receives referral fees. Such
diversionary use does not represent a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use under
Policy ¶ 4(c)(iii). See Gardens Alive,
Inc. v. D&S Linx, FA 203126
(Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name
for commercial benefit by diverting Internet users to a website that sold goods
and services similar to those offered by the complainant and thus, was not
using the name in connection with a bona fide offering of goods or
services or a legitimate noncommercial or fair use); see also 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 or 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).
Finally,
although Respondent appears to be commonly known by the registered domain names
based on the relevant WHOIS information, no affirmative evidence has been set
forth showing that Respondent was commonly known by these domain names prior to
their registration. Furthermore, it
appears that Respondent merely changed the relevant WHOIS information upon
notification of this proceeding to reflect that of Complainant. Therefore, Respondent has failed to show
evidence of rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was
not “commonly known by” the <shantiyogaworks.com> domain name
despite listing its name as “Shanti Yoga Works” in its WHOIS contact
information because there was “no
affirmative evidence before the Panel that the respondent was ever ‘commonly
known by’ the disputed domain name prior to its registration of the disputed
domain name”); see also Nature’s Path Foods Inc. v. Natures
Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact
information, Respondent lists its name and its administrative contact as
‘Natures Path, Inc.’ However . . . there has not been any affirmative evidence
provided to the Panel showing that Respondent was commonly known by the
disputed domain name prior to its registration . . . ”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses
the <joescrabschack.com>, <joescrabshake.com>, <joescrabshck.com>,
<joescrabsack.com>, <rainforestresturant.com>, <rainforestcaffe.com>,
<landryrestaurant.com>, <landrysrestaraunts.com>, <landrysresturant.com>,
<landrysrestraunts.com>, <landrysrestuarant.com>, <landrysseafoods.com>,
<landrysseafoodrestaurants.com>, and <landreys.com>
domain names to divert Internet users to various commercial websites using a
series of hyperlinks from which Respondent presumably receives referral
fees. Because Respondent’s domain names
are confusingly similar to Complainant’s LANDRY’S, JOE’S CRAB SHACK, and
RAINFOREST CAFÉ marks, Internet users may become confused as to Complainant’s
sponsorship or affiliation with the resulting websites. The Panel finds that such conduct
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent
has attempted to commercially benefit from the misleading
<qwestwirless.com> domain name by linking the domain name to adult
oriented websites, gambling websites, and websites in competition with Complainant. Respondent’s attempt to commercially benefit
from the misleading domain name is evidence of bad faith pursuant to Policy ¶
4(b)(iv).”); see also G.D. Searle & Co. v. Celebrex Drugstore, FA
123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered
and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the
respondent was using the confusingly similar domain name to attract Internet
users to its commercial website).
Finally,
Respondent registered the disputed domain names with constructive or actual
knowledge of Complainant’s rights in the LANDRY’S, JOE’S CRAB SHACK, and
RAINFOREST CAFÉ marks. Due to
Complainant’s registration of the marks with the USPTO, constructive knowledge
is conferred onto Respondent. See
Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar
variation thereof.”); see also Victoria’s Cyber
Secret Ltd. v. V Secret Catalogue, Inc.,
161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register
registration [of a trademark or service mark] is constructive notice of a claim
of ownership so as to eliminate any defense of good faith adoption” pursuant to
15 U.S.C. § 1072). Moreover, because of
the similarity between the content of Respondent’s websites and the business in
which Complainant engages, the Panel infers that Respondent has actual
knowledge of Complainant’s rights in the marks. Registration of confusingly similar domain names despite
constructive or actual knowledge is bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). See Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that
“there is a legal presumption of bad faith, when Respondent reasonably should
have been aware of Complainant’s trademarks, actually or constructively”); see
also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <joescrabschack.com>, <joescrabshake.com>,
<joescrabshck.com>, <joescrabsack.com>, <rainforestresturant.com>,
<rainforestcaffe.com>, <landryrestaurant.com>, <landrysrestaraunts.com>,
<landrysresturant.com>, <landrysrestraunts.com>, <landrysrestuarant.com>,
<landrysseafoods.com>, <landrysseafoodrestaurants.com>,
and <landreys.com> domain names be TRANSFERRED from Respondent
to Complainant.
Sandra Franklin, Panelist
Dated:
August 11, 2005
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