Raising Cane’s USA, LLC v. Domain Admin / SiteTools, Inc.
Claim Number: FA1206001449208
Complainant is Raising Cane’s USA, LLC (“Complainant”), represented by Bassam N. Ibrahim of Buchanan Ingersoll & Rooney PC, Virginia, USA. Respondent is Domain Admin / SiteTools, Inc. (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <onelove.com>, registered with Moniker Online Services, Inc.
The undersigned certify that they have acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sir Ian Barker, Judge Carolyn Marks Johnson and Ms Diane Cabell as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 18, 2012; the National Arbitration Forum received payment on June 18, 2012.
On Jun 19, 2012, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <onelove.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 June 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 2012 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@onelove.com. Also on June 22, 2012, 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.
A timely Response was received and determined to be complete on July 13, 2012.
Complainant submitted a timely Additional Submission on July 16, 2012 that was deemed compliant with Supplemental Rule 7.
Respondent submitted a timely Additional Submission on July 20, 2012 that was deemed compliant with Supplemental Rule 7.
On July 27, 2012, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Sir Ian Barker, Judge Carolyn Marks Johnson and Ms Diane Cabell as Panelists.
The Complainant (on July 23, 2012) and the Respondent (on July 24, 2012) both purported to file a further Additional Submission. The Panel has decided not to receive these further Additional Submissions on the grounds that Supplemental Rule 7 provides for only one Additional Submission from each party.
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” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant owns 120 restaurant franchises in 16 states across the United States. It specialises in selling chicken tenders. It has marketed its business under the name “One Love” since 2001. It owns a United States registered trademark for the mark “ONE LOVE” for restaurant services. The Complainant’s services are extensively marketed in the media and elsewhere under this mark.
The disputed domain name is identical to the Complainant’s registered trademark.
The Respondent has no rights or legitimate interests in the disputed domain name. The website accessed through the disputed domain name displays pay-per-click advertising links for websites relating to dating, relationships, music, restaurants and other subjects. This is not a bona fide offering of goods or services because the Respondent is using the Complainant’s trademark to redirect internet traffic and is being paid a commission for so doing.
The Respondent is not commonly known by the disputed domain name which has become well-known to the consuming public. The Complainant has never authorized the Respondent to reflect its trademark in the disputed domain name.
The Respondent has registered and is using the disputed domain name in bad faith. The Complainant is thus deprived of the ability to obtain domain names corresponding to its trademark which is evidence of bad faith.
Because internet users may inadvertently land on the Respondent’s website which contains links to companies offering dating and other services, the Respondent is thereby disrupting the Complainant’s business and diverts internet users seeking the Complainant’s goods and services.
B. Respondent
The disputed domain name involves a phrase made famous by the reggae song ‘One Love’ as popularized by Bob Marley and the Wailers.
The term ‘One Love’ is universally popular because of the Bob Marley song. The Complainant does not have a monopoly on it except for restaurant services. The term is not inherently distinctive. There are 45 other United States federal trademarks comprising or consisting of the words ‘One Love’ which cover a variety of goods and services, including, for example, perfume, skateboards, jewelry, exercise machines, computers, wedding photography and chocolate. Some of these were registered prior to the Complainant’s trademark registration. The Complainant’s use of ‘One Love’ for restaurant services is and was no bar to use of the term for other services.
A Google search of ‘One Love’ produces 562 million results in which the Respondent is proportionately non-existent. The majority of results have to do with the Bob Marley song.
The Respondent’s use of the disputed domain name is legitimate. The popularity of the Bob Marley song is huge. The Jamaican Tourist Board uses it to promote tourism to that country.
The Respondent acquired the disputed domain name in 2010 from a previous registrant who registered it first in 1995. The Respondent has consistently used its website in connection with dating, music and other links unrelated to the Complainant’s restaurant business. The Respondent is entitled to use the term ‘One Love’ for such services and does not use it for any purpose relating to restaurants or chicken tenders. Contrary to the Complainant’s submission, there is no reference in the Respondent’s website to restaurants. Previous use of the website shows references to the song, Bob Marley, wedding rings and hearts.
The disputed domain name is a non-exclusive phrase with primary meaning in relation to romance and music. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions (2nd ed) (“WIPO Overview”) at para. 2.6 supports the Respondent’s operation, as does Multica Media Networks LLC v MDNH Inc (NAF FA0503000434268).
The Respondent neither registered the disputed domain name nor used it in bad faith. The Complainant does not explain why it is “going after” a domain name first registered in 1995 on the basis of its trademark which was registered in 2001.
The Respondent is a website developer working on a social network engine. It has accumulated a variety of domain names for targeted social network sites. It believes the disputed domain name to be apt for a dating site which is being developed. The disputed domain name has been parked in connection with music and dating.
The Respondent had never heard of the Complainant prior to this dispute. The Respondent is based in California where the Respondent has no outlets.
The Respondent adopted the name ‘One Love’ in 2001 at a time when the eponymous domain name was already registered.
The Respondent has not sought to take advantage of the Complainant’s reputation as embodied in the trademark, for the Respondent’s commercial benefit. See CNR Music BV v. High Performance Networks Inc., D2003-1116 (WIPO).
There is no evidence that the Respondent intended to confuse consumers seeking the Complainant. There is no arbitrary or coined term as a trademark – rather a common English expression. The Respondent’s use cannot indicate bad faith. See Drew Bernstein v. Action Advertising Inc., D2000-0706 (WIPO).
C. Complainant’s Additional Submissions
The Complainant is not required to establish a monopoly in its trademark in order to prevail in this Complaint. Its federal trademark registration is uncontestable and the Respondent is therefore precluded from challenging its secondary meaning.
One of the links from the Complainant’s ‘pay-per-click’ website is to KFC and Wendy’s which are competitors of the Complainant.
The disputed domain name is shown ‘for sale’ by virtue of a link which leads to a website soliciting bids. Use of a domain name to redirect users to unrelated sites is not a bona fide use.
The Respondent’s emphasis on the association of the disputed domain name with the Bob Marley song is misplaced because that association is not exclusive.
The Respondent owns 2,080 domain names. It uses the disputed domain name for pay-per-click advertising services. A screenshot from the Respondent’s website taken on July 12, 2012 reveals a link to Wendy’s Restaurants and chicken products.
The Respondent’s pejorative accusations against the Complainant are reprehensible and should be denounced.
As to bad faith, the specific content to confuse the Complainant’s customers can be inferred from the Respondent’s willful blindness to trademark rights reflected in its conduct. The Respondent is in the domain name business, not in the dating or music businesses. The Respondent is a sophisticated domainer in no position to plead good faith. Such a domainer cannot be willfully blind as to whether a particular domain name may violate trademark rights. See Muisible Technologies Inc. v. Navigation Catalyst Systems Inc , D2007-1141 (WIPO).
The omission to object to the disputed domain name when owned by the previous registrant who had registered in 1995 is irrelevant. The Respondent’s registration in 2010 is the date at which bad faith is to be assessed.
D. Respondent’s Additional Submissions
The Complainant does not dispute that other parties can use the term ‘One Love’ for a variety of non-infringing uses. The printout presented by the Complainant was of “sponsored results for: Chicken.” There is no search link on the Respondent’s website corresponding to ‘Chicken.’ This is manipulation of search results in order to claim infringement. This is of limited or no evidential value – see A.D. Banker & Co. v. Domain Invest., D2010-1044 (WIPO). The Complainant’s submission in this regard can be characterized as “fictitious.”
The claim of willful blindness against the Respondent would also apply to other users of the words ‘One Love.’ It must mean that they are all engaging in bad faith.
The Respondent does not claim priority and accepts that the enquiry as to good faith applies to it and not to the original registrant of the disputed domain name. The point of referring to the initial registration of the disputed domain name in 1995 is that the disputed domain name had already been registered at the time when the Complainant began business.
The Respondent dismissed as irrelevant the Complainant’s reference to cases in which its present counsel had been involved.
1. The disputed domain name is identical to a United States registered trademark in which the Complainant has rights.
2. The disputed domain name was not registered or being used by the Respondent in bad faith.
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.
At the start, the Panel wishes to make it clear that it neither considers nor comments upon various allegations of lack of probity and pejorative comments made by both parties against counsel for the other side. The Panel’s task is not to monitor professional conduct but merely to decide the case in terms of the Policy. The Panel deprecates sarcastic and pejorative references against any party or counsel by the other. It does not dignify exchanges in this case by recording them in this decision because they are irrelevant to the Panel’s task. The Panel is, moreover, not equipped to rule on such allegations in this administrative process which is decided without an oral hearing.
The disputed domain name is identical to a registered trademark in which the Complainant has rights.
The onus of proving bad faith rests on the Complainant. Mere allegations are not enough. Bad faith registration and bad faith use have to be proved separately.
In the presence case, the Panel is unable to infer bad faith registration by the Respondent in 2010. The expression ‘One Love’ is heavily associated with the Bob Marley song. What is more striking for present purposes is that there are many registered trademarks in the United States alone, incorporating the words in whole or in part for a whole variety of applications in a whole variety of fields of endeavor – including, for example, dating services, which seem a more natural fit for ‘One Love’ than fried chicken.
A parking site per se does not establish bad faith or illegitimacy – see the WIPO Overview extract referred to earlier which reads as below. Such considerations have resonance for the bad faith enquiry in this case.
As to the Complainant’s contention that the Respondent facilitates links to KFC and Wendy’s, the following quotation from the A.D. Banker decision, supra, is apposite:
The landing page here gives no link to chicken or restaurants.
The Panel does not consider that Paragraph 4(a)(iii) of the Policy has been established.
Because of the view of the Panel on bad faith favourable to the Respondent, it is unnecessary to assess this aspect.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <onelove.com> domain name REMAIN WITH Respondent.
Sir Ian Barker, Presiding Panelist
Dated: August 2, 2012
Judge Carolyn Marks Johnson Ms Diane Cabell
Panelist Panelist
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