Golden Corral Corporation v. Dermo
Claim Number: FA0702000912334
Complainant is Golden Corral Corporation (“Complainant”), represented by Maury
M. Tepper, of Womble Carlyle Sandridge & Rice, PLLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <goldencoral.com>, registered with Wild West Domains, Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 7, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 8, 2007.
On February 8, 2007, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <goldencoral.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. 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 February 9, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 1, 2007 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@goldencoral.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 8, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <goldencoral.com> domain name is confusingly similar to Complainant’s GOLDEN CORRAL mark.
2. Respondent does not have any rights or legitimate interests in the <goldencoral.com> domain name.
3. Respondent registered and used the <goldencoral.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Golden Corral Corporation, has been operating family-style restaurants under the GOLDEN CORRAL mark for over thirty years. Complainant utilizes the <goldencorral.com> and <goldencorral.net> domain names to promote its restaurants and provide information about the company, restaurant locations, and franchise opportunities.
Complainant has registered the GOLDEN CORRAL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,059,338 issued May 6, 1997).
Respondent registered the <goldencoral.com> domain name on December 4, 2000. Respondent maintains a commercial web directory at the disputed domain name that displays various hyperlinks to third-party websites, some of which are offering restaurant franchises for sale. Respondent’s website also states that the <goldencoral.com> domain name is for sale for $8,500 and contains a “Domain Value Assessment” explaining why the contested domain name is so valuable. The website contains the text, “The restaurant chain ‘Golden Corral’ must realize that they are missing millions of hits each year because of this popular misspelling of their name and may want to acquire the name to stop this leak.”
In additional correspondence with the National Arbitration Forum, Respondent stated that it was willing to transfer the <goldencoral.com> domain name to Complainant provided Respondent be reimbursed for its costs associated with the domain name, which Respondent has calculated as $700.
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’s valid trademark registration for the GOLDEN CORRAL mark adequately demonstrates its rights in the mark pursuant to Policy ¶ 4(a)(i). See Thermo Electron Corp et al. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (holding that the complainants established rights in marks because the marks were registered with a trademark authority); see also ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (concluding that the complainant demonstrated its rights in the SPORTSCENTER mark through its valid trademark registrations with the USPTO and similar offices around the world).
Respondent’s <goldencoral.com>
domain name differs from Complainant’s registered GOLDEN CORRAL mark by just
one letter. In Pfizer Inc. v.
BargainName.com, D2005-0299 (WIPO Apr. 28, 2005), the panel held that the <pfzer.com>
domain name was confusingly similar to the complainant’s PFIZER mark, as the
respondent simply omitted the letter “i.”
The panel in CEC Entertainment, Inc. v. Peppler, FA 104208 (Nat. Arb.
Forum Mar. 21, 2002) likewise found that the <chuckcheese.com> domain
name was confusingly similar to the complainant’s CHUCK E. CHEESE mark because
the domain name only differed from the mark by one letter. In this case, then, Respondent has failed to
differentiate the <goldencoral.com>
domain name from the GOLDEN CORRAL mark by merely omitting one letter and
adding the generic top-level domain “.com.”
As a result, the Panel finds the contested domain name to be confusingly
similar to the mark pursuant to Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the
complainant’s mark because the generic top-level domain ("gTLD")
“.com” after the name POMELLATO is not relevant).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and
legitimate interests in the <goldencoral.com>
domain name. Complainant must first make
a prima facie case in support of its allegations, once it does so, the
burden shifts to Respondent to show it does have rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). See 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.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007)
(finding that once a prima facie case has been established by the
complainant under Policy ¶ 4(c), the burden then shifts to the respondent to
demonstrate its rights or legitimate interests in the disputed domain name).
As Respondent has failed to answer the Complainant, the
Panel presumes that Respondent has no rights or legitimate interests in the
<goldencoral.com> domain
name. See 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); see also Geocities v.
Geocities.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent
has no rights or legitimate interests in the domain name because the respondent
never submitted a response or provided the panel with evidence to suggest
otherwise). However,
the Panel will now examine the record to determine if Respondent has rights or
legitimate interests under Policy ¶ 4(c).
Respondent has registered the <goldencoral.com> domain name under the name “Dermo,” and there is no other evidence in the
record suggesting that Respondent is commonly known by the contested domain
name. Thus, Respondent has not
established rights or legitimate interests in the contested domain name
pursuant to Policy ¶ 4(c)(ii). See The Braun
Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that
the respondent was not commonly known by the disputed domain names where the
WHOIS information, as well as all other information in the record, gave no
indication that the respondent was commonly known by the disputed domain names,
and the complainant had not authorized the respondent to register a domain name
containing its registered mark); see also Coppertown Drive-Thru Systems, LLC v. Snowden, FA 715089 (Nat. Arb. Forum Jul. 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).
Respondent’s website at the <goldencoral.com> domain name contains links to third-party websites offering products and services for sale, including restaurant franchises. Respondent likely generates referral fees for diverting Internet users to these websites. As a result, Respondent is not using the confusingly similar domain name in connection with 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 Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. 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)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
On its website, Respondent is offering to sell the <goldencoral.com> domain name
registration for $8,500 and even states that it would be highly valuable to
Complainant. Respondent has also
provided additional correspondence indicating that it would sell the disputed
domain name to Complainant for $700, which it claims represents its
out-of-pocket costs. The Panel presumes,
however, that both amounts are in excess of Respondent’s actual out-of-pocket
costs associating with the domain name registration. Therefore, Respondent has failed to show it
has rights or legitimate interests in the <goldencoral.com> domain name pursuant to Policy ¶ 4(a)(ii). See Mothers
Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum
May 27, 2003) (holding that under the circumstances, the respondent’s apparent
willingness to dispose of its rights in the disputed domain name
suggested that it lacked rights or legitimate interests in the domain name); see also Hewlett-Packard Co. v. High
Performance Networks, Inc., FA 95083 (Nat. Arb. Forum
July 31, 2000) (finding no rights or legitimate interests where the respondent
registered the domain name with the intention of selling its rights).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has offered Complainant $700 in exchange for
transferring the disputed domain name registration and is asking for $8,500 on
its website. The website also contains
the text, “The restaurant chain ‘Golden Corral’ must realize that they are
missing millions of hits each year because of this popular misspelling of their
name and may want to acquire the name to stop this leak,” which shows that
Respondent registered the disputed domain name with Complainant in mind. In Diners Club Int’l Ltd. v. Domain
Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23,
2003), the panel found that when the domain name itself indicates that the
domain name is for sale and the sole value of the domain name is “dictated by
its relation” to the complainant’s registered mark, it can be inferred that the
respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(i). In
this case, the Panel infers that both amounts are far in excess of Respondent’s
out-of-pocket costs. As a result of
Respondent’s conduct, the Panel finds that it has registered and is using the
<goldencoral.com> domain name
in bad faith pursuant to Policy ¶ 4(b)(i). 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 Dollar Rent A Car Sys., Inc. v. Jongho,
FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that the respondent
demonstrated bad faith by registering the domain name with the intent to
transfer it to the complainant for $3,000, an amount in excess of its out of pocket costs).
Moreover, Respondent’s use of the <goldencoral.com> domain name to display hyperlinks to various
third-party websites unrelated to Complainant provides evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). Respondent likely receives referral fees for
each consumer it diverts to third-party websites and is therefore taking
advantage of the confusing similarity between the disputed domain name and the
mark in order to profit from the goodwill associated with the mark. See AOL LLC v. iTech Ent,
LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the
respondent took advantage of the confusing similarity between the <theotheraol.com>
and <theotheraol.net> domain names and the complainant’s AOL mark, which
indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May
19, 2006) (holding that the respondent registered and used the
<myspacebot.com> domain name in bad faith by diverting Internet users
seeking the complainant’s website to its own website for commercial gain
because the respondent likely profited from this diversion scheme).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <goldencoral.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: March 13, 2007
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