Taco Bell Corp. v.
Claim Number: FA0911001296224
Complainant is Taco Bell Corp. (“Complainant”), represented by Philip
Davison, of YUM! Brands, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <drivethroughdiet.com>, registered with Godaddy.com, 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.
Hector A. Manoff as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 25, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 30, 2009.
On November 25, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <drivethroughdiet.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 December 4, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 24, 2009 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 firstname.lastname@example.org by e-mail.
A Response was received on December 24, 2009 and determined to be deficient pursuant to ICANN Rule #5 because it was not received in electronic copy prior to the response deadline.
On December 31, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hector A. Manoff as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
2. Respondent registered the domain name <drivethroughdiet.com> on February 15, 2007, long after Complainant first used the DRIVE-THRU DIET mark.
3. The <drivethroughdiet.com> domain name is confusingly similar to the DRIVE-THRU DIET mark.
4. Respondent has no rights or legitimate interests in the <drivethroughdiet.com> domain name, since it is not commonly known by the DRIVE-THRU DIET mark or the infringing domain name, nor has Taco Bell licensed or otherwise permitted Respondent to use the DRIVE-THRU DIET mark or to apply for or use any domain name incorporating the DRIVE-THRU DIET mark, or any confusingly similar name/mark.
5. Respondent registered and is using the <drivethroughdiet.com> domain name in bad faith, since it registered the <drivethroughdiet.com> domain name long after Taco Bell’s adoption, use and registration of its DRIVE-THRU DIET mark.
6. Respondent had constructive notice as a matter of law of Taco Bell’s trademark rights in the DRIVE-THRU DIET mark.
7. Respondent’s bad faith is evidenced by the fact that the <drivethroughdiet.com> domain name resolves to a website displaying only links to a variety of products and services as well as a generic search engine likely resulting in the Respondent receiving commissions for diverting Internet users to third-party websites via such search engine and links.
8. Respondent’s bad faith use of the <drivethroughdiet.com> domain name is further evidenced by the fact that its use is likely to cause initial interest confusion as to source or affiliation
1. The <drivethroughdiet.com> domain name is not identical or confusingly similar to the trademark to which the Complainant has rights because “drivethrough” is spelled out in proper English usage of the noted words, whereas Complainant uses the slang abbreviation “thru”, and because Complainant uses a hyphen in the name.
2. Respondent has rights and a legitimate business interest in the domain name because of his medical practice with emphasis on weigh loss methods.
3. Respondent’s use of the term in dispute applies only to the category of goods and services associated with the medical practice and weigh-loss programs, while Complainant’s registration of the term is limited to Class 43, restaurant services and carry-out restaurant services.
4. Complainant has not demonstrated that its mark is in actual use or has been placed in actual use since its registration in 2006 and alleged first use in commerce in 2004.
5. Respondent’s use of the disputed domain name has neither been used nor registered in bad faith.
6. Respondent has never intended nor actually engaged in any conduct by which it seeks remuneration or compensation for the use, sale or other transfer of its registered domain name to any other person, firm or entity, including Complainant.
Complainant is in the business of restaurants services. Respondent is a family practice physician, whose practice includes emphasis on weight loss methods.
Complainant owns the registered mark "DRIVE-THRU DIET", which was registered with the United States Patent and Trademark Office before Respondent obtained the domain name at issue. This Panel finds that the domain name at issue is similar to Complainant’s mark.
However, this mark was assigned to Complainant as from October 16, 2008 and Complainant did not provide any evidence of its alleged use of the mark "DRIVE-THRU DIET". This fact will be taken into consideration by this Panel.
Respondent’s Response was submitted only in hard copy prior to the Response deadline. Thus the Response is not in full compliance with ICANN Rule 5, which subjects Respondent to treatment as a defaulting party. See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (holding that a respondent’s failure to submit a hard copy of a response and its failure to include with it any evidence to support a finding in its favor placed that respondent in default of the Policy’s requirements, permitting a panel to draw all appropriate inferences stated in the initiating complaint).
However, the Panel has decided to accept and consider this Response. See J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).
Non-UDRP Legal Arguments
Complainant argues that Respondent had constructive notice as a matter of law of Taco Bell’s trademark rights in the DRIVE-THRU DIET mark and, because of that knowledge, Complainant asserts that Respondent could not have registered the Infringing Domain Name with the intention of using it legitimately. In order to support this argument, Complainant quotes 15 U.S.C. §1072.
The Panel disregards this argument, since domain name disputes proceedings are governed by the UDRP.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
The Panel finds Complainant has established rights in the DRIVE-THRU DIET
mark under Policy ¶4(a)(i) through its registration of the mark with the USPTO
(Reg. No. 3,108,838 issued June 27,
Respondent’s <drivethroughdiet.com> domain name is confusingly similar to Complainant’s DRIVE-THRU DIET mark, since the lack of a hyphen and the different spelling of the word “through” do not sufficiently distinguish the disputed domain name from Complainant’s mark. See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant’s mark). "); see also Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to the complainant’s mark satisfies ¶ 4(a)(i) of the Policy).
Therefore, the Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks all rights and legitimate interests in the disputed domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii).
contends Respondent is not commonly known by the disputed domain name. Complainant
notes the WHOIS information lists the registrant as “
Respondent contends it operates a medical practice and is in the business of offering dieting information and services to its patients. In this regard, it has treated over 15,000 obese patients in the past fifteen years. Respondent alleges it registered the disputed domain name on February 7, 2007 for use in its medical practice to provide dietary advice and training.
Moreover, Respondent alleges that its use of the term in dispute applies only to the category of goods and services associated with the medical practice and weigh-loss programs, while Complainant’s registration of the term is limited to Class 43, restaurant services and carry-out restaurant services.
Respondent also questions that Complainant had been already known by the DRIVE-THRU mark by the time the disputed domain name was registered, because it affirms that Complainant has not demonstrated that its mark has been placed in actual use since its registration in 2006 nor since its alleged first use in commerce in 2004. To support this argument, Respondent refers to Exhibit B of its Response, which includes search results from Google of the term DRIVE-THRU DIET, which do not result in a hit of Complainant’s website drivethrudiet.com for the first 100 hits of approximately 360,000 total possible. Moreover, Respondent submitted a printout of Complainant’s website drivethrudiet.com, which depicted a “coming soon” sign. This evidence was printed on 12/21/2009. On the other hand, Complainant has not provided a single evidence of the use of its mark.
This Panel has found that the website to which the disputed domain name resolves does not include links to competitors of Complainant nor to companies or individuals that provide similar services. In view of this, the Panel finds Respondent would be making a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name); see also Martello v. Cockerell & Assocs., FA 346319 (Nat. Arb. Forum Dec. 13, 2004) (finding that the respondent’s use of the <skindeep.com> domain name to provide information on its demapathology services was a bona fide offering of goods or services under Policy ¶ 4(c)(i) despite the complainant’s registration of the SKIN DEEP mark with the USPTO and use of the mark in connection with similar services).
Thus, the Panel finds that Respondent also has rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that the respondent could maintain rights in a similar mark as the complainant because the complainant and the respondent were not in the same field of business, and therefore not competitors); see also Asphalt Research Tech., Inc. v. Anything.com, D2000-0967 (WIPO Oct. 2, 2000) (“Respondent has a legitimate interest to use a trademark or domain name in which many persons hold an exclusive right in relation to different goods and services providing the goods or services are sufficiently far apart from the goods and services of others so as to distinguish the goods or services of Respondent.”); see also Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (finding that the respondent does have a legitimate interest in the domain name where the respondent registered the disputed domain name for a legitimate business purpose prior to complainant’s application for registration of the mark and the complainant has not proven any earlier use of the mark).
The Uniform Domain Name Dispute Resolution Policy (Section 4. B.) sets forth certain circumstances which, if found to be shown, will be evidence of the registration and use of a domain name in bad faith.
The first is that domain name was obtained for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or a competitor for a valuable consideration. This has not even been alleged.
The second is that the domain name was registered by the Respondent to prevent the Complainant from reflecting the mark in a corresponding domain name, provided Respondent have engaged in a pattern of such conduct. This has neither been alleged.
The third is that the domain name was registered by the Respondent primarily for the purpose of disrupting the business of a competitor. There has been no allegation of this.
Finally, the fourth circumstance is that by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.
As to this last circumstance, Complainant contends Respondent is attempting to profit from its use of the confusingly similar disputed domain name by collecting click-through fees for its display of unrelated third-party links on the resolving website. It further alleges that Respondent, by essentially using the DRIVE-THRU DIET mark in the domain name, is creating a likelihood of confusion and attempting to attract Internet users to Respondent’s website for Respondent’s commercial gain.
The necessary requirement for diverting consumers by including a third party mark in a domain name is that such mark has been used and is known —by the time Respondent registered the disputed domain name— so that it is useful to attract Internet users for commercial gain. In this regard, Complainant has not provided evidence of the alleged use of its mark that could support the likelihood of consumer’s confusion as to the source, affiliation, etc.
Moreover, Respondent submitted evidence that suggests that Complainant has not used the mark, at least, until 21 December 2009. Apart from its website showing a “coming soon” sign (Exhibit C of Respondent’s Response), Respondent provided further evidence on its Exhibit D, which consists of a printout of a news article from Nation’s Restaurant News, dated August 12, 2009, which informs about a marketing strategy of Taco Bell. According to this source, the strategy includes the “Drive-Thru Diet” marketing campaign, which “is expected to debut in January….”.
Taking this into account and: 1) the fact that Complainant website <drivethrudiet.com> was under construction by, at least, December 21, 2009; 2) Complainant did not provide any evidence of use of their mark; 3) The mark DRIVE-THRU DIET was assigned to Taco Bell on October 16, 2008; this Panel concludes that Complainant could not prove that Respondent registered and use the disputed domain name in bad faith.
Although Section 4B does not limit the circumstances to show bad faith to the ones explained above and, thus, there could be other circumstances to show bad faith, none have been shown to exist.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <drivethroughdiet.com> domain name be RETAINED by Respondent..
Hector A. Manoff, Panelist
Dated: January 14, 2010
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